Once a patent is issued, corrections involving changes to the records of the Patent Office relating to inventorship and ownership must be made by way of an application at the Federal Court (FC) pursuant to section 52 of Canada’s Patent Act (the Act).  In Qualcomm Incorporated v Canada (Commissioner of Patents), the FC held that the recordal of replacement documents is beyond the scope of section 52 (2016 FC 1092).

Qualcomm Incorporated (Qualcomm) requested that the records of the Patent Office be amended to correct the names of the inventors by adding an inventor and deleting two inventors.  Qualcomm also requested the recordal of an assignment and replacement PCT Request reflecting the amended list of inventors (the Replacement Documents).  The FC granted Qualcomm’s request to correct the names of the inventors but refused its request to record the Replacement Documents in view of the FC’s lack of jurisdiction to order this remedy under section 52 of the Act and Qualcomm’s admission that it had alternative means to file the Replacement Documents.

Summary By: Lauren Lodenquai

E-TIPS® ISSUE

16 10 19

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