Co-inventors Must Contribute Ingenuity To The Inventive Concept

In Drexan Energy Systems Inc v The Commissioner of Patents and Thermon Manufacturing Co, 2014 FC 887, the Federal Court (Court) addressed the issue of inventorship for an invention that combined known elements. After reviewing prior case law and the evidence, the Court dismissed the application to add co-inventors to the patent, holding that the alleged co-inventors did not make their contributions towards the inventive concept, which was the combining of the known elements. Canadian Patent No. 2,724,561 (the 561 patent) describes a heating cable with improved insulation. This patented invention was the result of collaboration between four individuals, but Wells Whitney (Whitney) and Umesh Sopory (Sopory) are the only listed inventors on the 561 Patent. The applicant, Drexan Energy Systems Inc. (Drexan), sought a declaration that Steve Makar (Makar) and Konrad Mech (Mech) are co-inventors. Following a break down in their relationship, Whitney and Sopory assigned their interest in the 561 Patent to Thermon Manufacturing Co. (Thermon), while Makar and Mech assigned whatever right they had in the 561 Patent to one of Thermon’s competitors, Drexan. Section 52 of the Patent Act allows the Court to add or remove inventors from a patent on application of a person interested. To add co-inventors, the applicant must prove that the people in question are “probably co-inventors” (para. 23). This is accomplished by showing that they are in some way responsible for the inventive concept. The Court further clarifies that “even minor contributions to the inventive concept can be sufficient to make a co-inventor, so long as his or her ingenuity is applied to the original inventive concept and not just verification.” (para. 26) In this case, the inventive concept is the combination of known elements, not the elements themselves. Consequently, the Court focused on whether the contributions of Makar and Mech were directed towards not only suggested elements, but how they could actually be combined. Makar and Mech both stated that they made suggestions for specific design configuration and that the design for the product was conceived jointly. On the other hand, Whitney and Sopory denied that contribution, arguing that the involvement of Makar and Mech was limited to marketing and reporting what attributes they would like the product to have. The case turned largely on the issue of credibility. The Court found that Makar and Mech were not co-inventors for a few reasons. First, given that their expertise was mostly in sales, the Court found that it is more likely that they would have divided up the work along the lines of their experience. Second, there was no documentary evidence showing any design work by Makar or Mech, but such evidence existed for Whitney. Lastly, given that Whitney and Sopory agreed that Mech should be credited as a co-inventor on another patent for a variation of the invention described in the 561 Patent, it can be assumed that they would have been equally willing to do the same for the 561 patent if there had been any inventive contribution by Mech. While Mech and Makar provided useful input on the design of the cable, in the Court’s view, they failed to prove that “it was anything more than suggesting desired features and communicating feedback from potential customers”. These suggestions fell short of the threshold required to be considered inventive. Summary by: Sumaiya Sharmeen