Will the Real Inventors of Sega’s Bakugan Please Stand Up?

Published February 27th, 2013

Segatoys Co., Ltd. And Sega Corporation v. The Attorney General of Canada, 2013 FC 98 (O’Keefe)

Summary – An Applicant can correct inventorship of an issued patent by way of petition to the Federal Court under section 52 of the Patent Act.  The Applicant still has to show why inventors should be removed or joined as well as show that the error was due to inadvertence or mistake and that it was not for the purpose of delay.

Analysis – Sega filed a Japanese patent application on February 20, 2006 listing two inventors:  Sato and Masumura.  The patent at issue, Canadian Patent No. 2,547,539, was filed on May 23, 2006 by Sega’s business partners, naming the same inventors.  When preparing the PCT international patent application, it was realized that the real inventors should have been Yamada and Nobata and that neither of the listed inventors actually contributed to the invention, but rather were involved with the appearance of the finished product.

Sega filed a petition with the Federal Court under section 52 of the Patent Act for an order amending the listed inventors.  Section 52 states that the Federal Court has jurisdiction “to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.”  The Court interpreted the word “title” to include inventorship, “which is the ‘root’ of title”.  [para. 13]

Sega presented a notarized declaration from Sato that he and Masumura were incorrectly identified as the inventors as well as evidence that Masumura could not be located.  Sega further provided notarized declarations from Yamada and Nobata establishing that they are the actual inventors of the patent.  The manager of intellectual property for Sega provided a corroborating notarized declaration.

The Court concluded that the evidence submitted was sufficient to show that the listed inventors had no part in the invention and should be removed and that real inventors should be added.  The Court further concluded that the error was due to inadvertence or mistake and that it was not for the purpose of delay.  As a result, the Commissioner of Patents was ordered to update the records of the Patent Office accordingly.

The following additional points in this case are of interest:

(i)    the petition to amend was unopposed;

(ii)   although subsection 31(3) of the Patent Act specifically requires affidavits, the notarized declarations were considered to fulfill the same function and were accepted as such;

(iii)  the Court reiterated that failure to name an inventor is not a material misrepresentation under section 53 of the Patent Act; and

(iv) there was no discussion in the decision as to why this error was not corrected while the patent application was still pending, since it issued approximate two and a half years after the error was caught.

Practice Point – Subsections 31(3) and 31(4) of the Patent Act give the Commissioner authority to correct the inventors of a pending patent application, but not an issued patent.  However, upon petition to the Federal Court under section 52 the Patent Act, the inventors listed on an issued patent can be corrected provided the requirements of subsections 31(3) and 31(4) of the Patent Act are fulfilled.

 

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