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The Importance of Inventorship

November 04, 2022

A patent is invalid unless it lists the true inventors of the claimed invention.  Should an Applicant notice that a patent application has an incorrect or incomplete list of inventors, they should take action immediately.

In cases where a patent application is pending, the Applicant may rely on Section 106(b) of the Patent Rules which allows an Applicant to request a correction with respect to the naming of inventors in a patent application before a notice of allowance or a conditional notice of allowance is sent. 

In cases where a patent application has been allowed things get more complicated as an Applicant must rely on the Federal Court.  For example, in Genentech, Inc. v. Canada (Commissioner of Patents) 2022 FC 1447, the Applicant sought to add Dr. Hirata as an inventor to Canadian Patent No. 2,979,671.  The Applicant relied on Section 52 of the Patent Act which grants the Federal Court “jurisdiction, on the application of the Commissioner or of any person interested, to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.” 

To satisfy the requirements of the Federal Court, the Applicant was required to submit evidence proving that Dr. Hirata should have been listed as an inventor of the ‘671 patent and that Dr. Hirata was not included in the list of inventors by inadvertence or mistake and not for the purpose of delay.  The evidence included multiple affidavits and exhibits that proved Dr. Hirata’s contributions to the underlying invention.  Ultimately, the Federal Court was satisfied with the Applicant’s submissions and added Dr. Hirata to the ‘671 patent.

Although the Applicant was successful in adding an inventor to the ’671 patent, cases such as this highlight the importance of determining inventorship at the time of the filing of a patent application.