Canada: Jurisprudence récente sur la question de la désignation des inventeurs pour une demande de brevet

Weatherford Canada Ltd. v. Corlac Inc., 2010 FC 602, (June 3, 2010)

Extrait sur “inventorship”:


[235]      Issue 9 under this heading concerns whether one or more of Ed Grenke, Art Britton, Walter Torfs, Michael Engelen and/or Andreas Reincke are inventors of the subject matter described and claimed in the ‘937 patent. There appears to be no shortage of people who had some involvement with the ‘937 Patent and who now seek the credit and more tangible benefits of being “the” or “an” inventor of this patent.


[236]      The key precedent on the issue of determining who is an inventor is Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153 which requires a court to determine “who was responsible for the inventive concept”.

97   Section 34(1) requires that at least at the time the patent application is filed, the specification “correctly and fully describe the invention … to enable any person skilled in the art or science to which it appertains … to … use it”. It is therefore not enough to have a good idea (or, as was said in Christiani, supra, at p. 454, “for a man to say that an idea floated through his brain”); the ingenious idea must be “reduced … to a definite and practical shape” (ibid.). Of course, in the steps leading from conception to patentability, the inventor(s) may utilize the services of others, who may be highly skilled, but those others will not be co-inventors unless they participated in the conception as opposed to its verification. As Jenkins J. notes in May & Baker Ltd. v. Ciba Ltd. (1948), 65 R.P.C. 255 (Ch. D.), at p. 281, the requisite “useful qualities” of an invention, “must be the inventor’s own discovery as opposed to mere verification by him of previous predictions”.


98   More recently, in Henry Brothers (Magherafelt) Ltd. v. Ministry of Defence and the Northern Ireland Office, [1997] R.P.C. 693 (Pat. Ct.), in response to a submission that an invention could be divided into contributed elements and patents awarded accordingly, Jacob J. stated, at p. 706:


I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination? [Emphasis added.]


[237]      Germane to this issue is the Supreme Court’s conclusion that a person who contributes to the inventive concept may be a co-inventor while those who help the invention to completion, but whose ingenuity is directed to verification rather than original inventive concept, are not co-inventors.


[238]      The burden of proof of co-inventorship rests on the party asserting the claim to sharing in the inventorship. In the present circumstances the Defendants had the burden of proof that on a balance of probabilities, one or more of Britton, Torfs, Engelen and/or Reincke were “an” or “the” inventor of the ‘937 Patent. The Defendants must undercut Grenke’s claim to inventorship (as opposed to ownership – the two are not synonymous).


[239]      It is important on this issue, as explained in Apotex, above, at paragraph 85, that the “inventor” is not just a person who comes up with a general idea or thesis. The inventor must have reduced the idea or thesis to a definite and practical shape by building it as described or by fully describing how it will be practised – showing that there is utility in the claimed invention.


[240]      While the same analytical issue arises whether the invention is a combination patent or not, it is the combination itself which is the novelty not the elements of it. As held in Lovell Manufacturing Co. v. Beatty Brothers Ltd. (1962), 41 C.P.R. 18, even where certain elements have been contributed by persons other than the inventor named, this would not make them joint inventors of the combination.


[241]      The Defendants have taken the approach of breaking down the ‘937 Patent into various elements, the rotating sleeve, the U ring seals, various arrangements and then attributing contribution by various persons to each of these elements. This is an approach which runs contrary to that laid out in Apotex, above.


[242]      The ascribed contributions are based on witnesses’ recollection of what was said, or not said, on dates certain or approximated – in few instances is there documentary or other corroboration. The Defendants try to put Grenke in the role of nothing more than an “assembler” of others’ contributions.


[243]      The better approach is to examine the evidence as a whole taking account of the “selective” memories, the dimness of recollection and the general absence of documents.



One Response to “Canada: Jurisprudence récente sur la question de la désignation des inventeurs pour une demande de brevet”

  1. lucrari de licenta Says:

    lucrari de licenta…

    […]Canada: Jurisprudence récente sur la question de la désignation des inventeurs pour une demande de brevet « "C'est é-p@tent!"[…]…

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