[2017] 1 F.C.R. D-2
Patents
Application for declaration under Patent Act, R.S.C., 1985, c. P-4, s. 52 (Act) that records of Patent Office relating to title of Canadian Patent No. 2222058 (ꞌ058 Patent) be varied to list applicant as owner thereof — Applicant also seeking, inter alia, order directing Commissioner of Patents to record alleged reassignment of Patent so as to list applicant as owner in lieu of respondent — Patent at issue herein entitled “METHOD OF IMPROVED LANDFILL MINING” filed in Canada by original owner, inventor, Dr. Markels, American citizen — Dr. Markels also filing patent application in U.S. after which U.S. Patent issued — Background of present proceeding involving series of assignments pertaining to Canadian, U.S. Patents at issue to other corporations — Respondent getting involved when wanting to obtain both U.S., Canadian Patents for himself; to that end, respondent executing agreement, assignment with Dr. Markels — Respondent eventually registering ownership of ꞌ058 Patent with Patent Office — Applicant becoming involved in 2015 when Dr. Markels signing agreement therewith purporting to assign rights to ꞌ058 Patent; agreeing to take steps to have respondent’s name as registered owner removed — Resulting reassignment (2015 Reassignment) signed by Dr. Markels but never executed by respondent who objected to filing thereof with Patent Office — Patent Office refusing to record 2015 Reassignment since not executed by respondent as listed owner on file — Following refusal, applicant initiated present application — Whether Federal Court having jurisdiction to hear, determine present application; whether 2015 Reassignment should be recorded by Canadian Patent Office — Regarding Federal Court jurisdiction, starting point Federal Courts Act, R.S.C., 1985, c. F-7, s. 20 which combined with Act, s. 52 providing specific statutory grant of power to Court to vary or expunge entries in records of Patent Office relating to title of particular patent — Court having to determine primary nature of dispute, in particular, whether present application relating primarily to contract or patent law — Court having jurisdiction over case primarily concerning patent law but not to contract law — Case law examined interpreting Act, s. 52 holding that determining patent ownership first requiring interpretation of contractual documents — While order (varying records of Patent Office) applicant seeking would appear to be within Court’s jurisdiction, issuance of such order secondary to, dependent on prior interpretation of various assignment agreements which applicant submitting making it proper owner of ꞌ058 Patent at issue — Interpretation of agreements at issue clearly matter of contract rather than patent law; accordingly, Court lacking jurisdiction to determine question of whether applicant owning ꞌ058 Patent — Therefore, entirety of relief sought by applicant ancillary to prior determination of rights conferred by assignment agreements relating to ꞌ058 Patent — Primary issue in present case relating to contract law (ownership of ꞌ058 Patent in view of such agreements), not to patent law; thus until issues associated with such ownership resolved, case falling outside Court’s jurisdiction — Given conclusion that Court not having statutory jurisdiction over principal subject matter of dispute, secondary issue of Court’s personal, subject matter jurisdiction pursuant to conflict of laws principles moot — Nevertheless, some comments made thereabout — Choice of law for assignments relevant to matter not affecting any statutory rights in ꞌ058 Patent itself — Statutory rights in patent governed by law of jurisdiction in which patent existing; no assignment or transfer can take place except in accordance with law of jurisdiction in question — Therefore, nothing in assignment agreements could have effect of exempting them from operation of Act, s. 51, which renders unregistered assignment void against subsequent assignees — Registration of 2015 Reassignment first requiring that parties’ rights to ownership of Canadian Patent be determined pursuant to relevant assignment agreements — Since Court lacking jurisdiction to make such determination, registration of 2015 Reassignment not ordered — Application dismissed.
Salt Canada Inc. v. Baker (T-1620-15, 2016 FC 830, Boswell J., judgment dated July 20, 2016, 16 pp.)