Are patent applicants under an obligation to bring others into the proceeding when removing an inventor? Not according to the Federal Court of Canada in Bing Baksh v. Probiohealth, LLC, 2012 FC 1388. In this case, the Federal Court found that in inventorship disputes in front of the Patent Office, the Commissioner of Patents (the "Commissioner") is required to deal only with inventors and their legal representatives or authorized correspondents.
Probiohealth, LLC ("Probiohealth") had applied to patent in Canada a probiotic nutritional supplement. The application named Dr. Naidu and Mr. Baksh as co-inventors. Naidu had assigned his rights to Probiohealth but Baksh refused. In order to proceed with the application, Probiohealth filed a voluntary amendment cancelling all claims relating to Baksh's encapsulation system; Probiohealth and Baksh then agreed Baksh could file a separate divisional application for the encapsulation system.
Probiohealth also requested that Baksh be removed as an inventor to which the Commissioner agreed. Baksh, however, challenged the decision since Probiohealth had not supported its request with affidavit evidence as required by the Patent Act (the "Act"). Baksh and the Commissioner settled the matter and, pursuant to a settlement agreement (the "Settlement Agreement"), Baksh agreed to discontinue legal proceedings and the Commissioner agreed to reverse his decision removing Baksh as a co-inventor.
In response, Probiohealth subsequently filed a second request to remove Baksh as co-inventor. This time, the request was supported by an affidavit sworn by the co-inventor, Naidu. Probiohealth reminded the Commissioner that any future correspondence relating to the case should not be copied to Baksh.
After he was again removed as a co-inventor, Baksh sought an appeal and made an application for judicial review of the Commissioner's decision to remove him as an inventor.
While decisions of the Commissioner can be appealed to the Federal Court, Justice O'Reilly found that Baksh could not appeal as he was neither a party to the proceeding nor an applicant (he had been removed as an inventor). As such, Baksh was not permitted to exercise the right of appeal set out in the Act. The Court dismissed his appeal and proceeded, instead, by judicial review.
Baksh claimed that the Settlement Agreement stopped the Commissioner from removing him as a co-inventor of the patent. The Federal Court disagreed. According to the Court, the Commissioner reversed its earlier decision to remove Baksh as an inventor because the provisions of the Act had not been complied with by Probiohealth. The Settlement Agreement did not constitute a promise to Baksh about how any future requests would be decided. The Court held that the Settlement Agreement did not stop the Commissioner from granting Probiohealth's second request to remove Baksh as a co-inventor, provided it complied with the Act.
Baksh also argued that the Settlement Agreement required the Commissioner to invite him to make submissions before the Commissioner could remove Baksh as an inventor. Baksh further submitted that the Commissioner treated him unfairly by failing to give him an opportunity to make submissions in response to Probiohealth's request to remove him as a co-inventor. Baksh claimed that the Commissioner had a duty to invite him to make representations since the Settlement Agreement created a legitimate expectation that he would remain named as an inventor.
Once again, the Court disagreed. The test under the Act according to the Federal Court was whether Probiohealth could satisfy the Commissioner, by affidavit, that Baksh should be removed as a co-inventor. Neither the Settlement Agreement nor the Act required the Commissioner to hold a hearing or receive submissions from Baksh. Therefore, Baksh could not have had a legitimate expectation that he would be able to make submissions. Under the Patent Rules, the Commissioner was permitted only to communicate and consider evidence put forward by the applicant or its authorized correspondent (e.g., a patent agent). Baksh was neither a party to the proceedings nor an inventor. As such, the Commissioner could not have communicated with or considered his submissions. The only requirement was that Probiohealth satisfy the Commissioner, by affidavit, that Naidu was the sole inventor. Having fulfilled this requirement under the Act, Probiohealth alone was entitled to prosecute the application.
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