In the latest decision in a longstanding patent dispute involving Canadian Energy Services and Energy (Drilling Services) Inc., (Canadian Energy Services v. Commissioner of Patents, 2024 FC 742) the Federal Court has confirmed that the Commissioner of Patents can correct the patent register based on a declaration from the Court—regardless of whether an express direction was made.
CES alleged infringement of Canadian Patent 2,624,834 in the Federal Court (T-209-18). Secure believed it owned the '834 patent because: 1) the true inventor made the invention while working at a company whose assets were purchased by Secure; or 2) the named inventor (who also worked at the predecessor company) misappropriated confidential information in making the invention.
Concerned about the Federal Court's jurisdiction, the parties moved to the Alberta Courts to determine the ownership dispute (ACKB File no. 41801-09532). The Alberta Courts dismissed Secure's ownership allegations based upon misappropriation of confidential information but permitted the parties to return to the Federal Court to determine ownership based upon wrong inventorship pursuant to s. 52 of the Patent Act (Secure Energy Services v. Canadian Energy Services, 2022 ABCA 200).
In a s. 52 application, Justice Zinn found for Secure and issued a declaration that the true inventor is Simon Levey and the owner of the '834 patent is Secure (Secure Energy (Drilling Services) Inc. v. Canadian Energy Services L.P., 2023 FC 906). The Commissioner of Patents gave effect to Justice Zinn's decision by correcting the inventor's name and the owner in the Patent Office records.
CES has appealed Justice Zinn's decision (A-203-23 scheduled to be heard June 13, 2024 in Calgary).
Concurrently, CES commenced a judicial review alleging that the Commissioner of Patents erred by giving effect to Justice Zinn's declarations of inventorship and ownership.
CES argued that because Justice Zinn issued declarations as to inventorship and ownership but failed to issue an order under s.52 of the Patent Act specifically directing the Commissioner to amend the Patent Office records, the Commissioner had no discretion to correct inventorship and ownership.
Justice Manson rejected this argument.
Manson J. instead found that the Commissioner of Patents has an overriding duty to accurately maintain the Patent Office Records and as such was obligated to give effect to Justice Zinn's declarations. Hence, the Judicial Review application was dismissed with costs to Secure.
Secure was represented by Patrick Smith of Seastone IP.
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