Written By Martin P.J. Kratz, QC
That question was answered by the Federal Court in Drexan Energy Systems Inc v Canada (Commissioner of Patents), 2014 FC 887, a case where four people worked together on the problem of pipes freezing without heat tracing products and produced a new type of heating cable they believed improved over existing products.
As is not uncommon with many early stage ventures, the relationship among the initial group did not last. Only two of the four were listed as inventors on the patent application. The other two petitioned the Commissioner of Patents to be added as co-inventors. While the Commissioner first agreed and then reversed that decision, the patent was issued with only the first two listed as inventors. Those two assigned their rights ultimately to Thermon Manufacturing Co. The other two persons assigned their rights to Drexan Energy Systems, a competitor of Thermon.
Drexan applied to the Federal Court for a declaration that the latter two persons were co-inventors of the heating cable described in CA 2,734,561 and to vary the records of the Patent Office to show that result. Thermon opposed the application.The Court began by recognizing that under Section 52 of the Patent Act it has the power to order inventors added or removed from a patent. The Court noted that an agreement between the parties does not resolve the issue of inventorship. The issue was for the applicant to prove that the two individuals were probably co-inventors. The Court said to do so the applicant needed to show those individuals were in some way responsible for the inventive concept, but they need not be wholly responsible for it. The test applied by the Court was to assess if the individuals discussed concepts that became incorporated into embodiments disclosed. The Court noted that "even minor contributions to the inventive concept can be sufficient to make someone a co-inventor, so long as his or her ingenuity is applied to the original inventive concept and not just verification".
In looking at the inventive concept in the present case the Court noted that what was inventive were not the individual elements of the invention but the combination of those elements. As a result, the Court looked to see if the individuals in question had not only suggested features but how those features may be combined.
It was clear that there was widespread brainstorming that all parties engaged in. Ultimately the Court sought to identify if there had been an inventive contribution by the applicants. As with so much litigation, this case involved conflicting testimony and therefore was decided based on an assessment of the relative credibility of the witnesses.
The court considered that the two named inventors both had decades of experience in the design and manufacture of heat tracing cables, while one of the applicants was a career salesman and the other was a mechanical engineer who had never designed a heat tracing cable.
The court noted that a separate patent application, for a variant, was made in the name of one of the individuals (who was not named on the patent in question) and so the court expected that he must have noticed the process was different than when, earlier, a draft of the subject application was circulated among the four individuals naming only the two respondents as inventors.
Ultimately, weighting the conflicting evidence, the Court noted that the two individuals (not named as inventors) expertise was mostly in sales while the two named inventors had experience mostly in research, development and manufacturing. Unfortunately there was no written evidence of the unnamed individual's contributions to the design memoranda.
The Court found that, on the evidence, the contribution of two individuals (not named as inventors) was useful input into the design but it was not proven that they had done "anything more than suggesting desired features and communicating feedback from potential customers". Merely being helpful does not make for an inventive contribution.
There are a number of lessons from this case. Firstly, the importance of keeping good written records of the design and development process is of vital importance. Secondly, for a non-technical contributor of an inventive concept it is noteworthy that the court declined to find inventorship “ so such individuals should make special efforts to record their inventive contributions in writing. Thirdly, if a party has a disagreement about what is going on with a patent application process then it is important to raise it early on in the process and seek resolution. Fourthly, had the four individuals addressed ownership of their joint development work early on and recorded their agreement then the case may never have arisen. Finally, it is important to note that while financial backing or marketing insights may be essential for the success of a business venture, those do not, by themselves, lead one to be an inventor. RSC 1985, c P-4.  Weatherford Canada Ltd v Corlac Inc, 2010 FC 602, aff'd 2011 FCA 228 at para 104.  Weatherford Canada Ltd v Corlac Inc, 2010 FC 602 at para 238, aff'd 2011 FCA 228 at para 99, 95 CPR (4th) 101 (var'd on other grounds)  Per Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at para 96, an individual who contributes to the inventive concept may be a co-inventor without being the prime originator.  Plasti-Fab Ltd v Canada (Attorney General), 2010 FC 172 at para 15.  Gerrard Wire Tying Machines Co v Cary Manufacturing Co, 1926 CarswellNat 22 at paragraph 32.  Para 56.