Wrong Inventorship Won't Necessarily Void a Canadian Patent

A Canadian patent is not void if the wrong inventor is named in the application. This was the conclusion of the Federal Court of Appeal recently in 671905 Alberta Inc v Q'Max Solutions Inc. The patent at issue was for an improvement in the formulation of drilling mud used in oil field applications. Two brothers, James and Harold Fleming, applied for the patent, which had been developed as a result of testing done through their company, Fleming Oil Field Services Ltd. In fact, the brothers were not the actual inventors of the invention. An employee of Fleming Oil Field Services, Richard Smith, was the actual inventor. Smith had been the lab manager overseeing the testing when the idea to use the particular mud formulation was developed. Smith was not listed on the patent application, nor was he named on the patent when it issued in 1995. The brothers considered themselves owners of the patent and had transferred their "rights" a number of times to different holding companies. In the name of one of these holding companies, the brothers launched an infringement action against their competitor, Q'Max Solutions Inc. At trial, the fact emerged that Smith had been the actual inventor, not the Flemings. Initially, this new fact had dire consequences for the plaintiffs. The Federal Court Trial Division held that, under section 53 of the Patent Act, the patent itself was "void" (non-existent), since it had been filed on the basis of a "material misstatement" as to the rightful inventors. However, the Federal Court of Appeal reversed the decision to void the patent. Mr. Justice Stone called the provision in section 53 a "draconian remedy", suitable only for cases of "wilful" misleading. He concluded that the Flemings had not wilfully omitted Smith from the patent application, but simply (erroneously) considered themselves to be the inventors. The judgment adds a degree of comfort that accidental mistakes about inventorship will not destroy a patent. Inventorship is not always a clear-cut determination to make. When considering filing a patent application, especially where, as in the US, an incorrect assertion may void the patent, applicants should seek professional advice and ensure that the correct people are named. For the text of the reasons, see: http://decisions.fct-cf.gc.ca/fct/2003/2003fca241.html. For a more detailed treatment of the Canadian law of inventorship, ownership and authorship, see the paper by Jennifer Jannuska at: http://dww.local/articles/inventorship.htm. Summary by: Jennifer Jannuska