MOPOP - Chapter 6


Ownership, registration and joint inventors

Table of Contents

6.01
Ownership – June 2015

A patent for an invention confers a property right on the inventor or in some cases on an employer of an inventor where the invention was made in the normal course of employment. Pursuant to sections 49 and 50 of the Patent Act, this right includes the entitlement to apply for a patent and such right may be transferred to another person at any time with proper documentation and payment of the fee set out in item 21 of Schedule II of the Patent Rules. As defined in section 2 of the Patent Rules a “transfer” means a change in ownership of a patent, of an application or of an interest in an invention and includes an assignment. Such a transfer may be effected at any time beginning at the date of invention and during the term of any patent which may issue in respect of that invention.

The history of transferring or passing on the right to a patent or an application is called the chain of title. The chain of title reflects any document that transfers ownership from the original applicant or any subsequent changes of owner. Such documents are, for example, assignments, mergers, change of name documents or wills.

By virtue of subsection 50(1) of the Patent Act, the owner of a patent may assign his right, either wholly or partially, either generally or subject to territorial limitations, and either for the whole term of the patent or for any part thereof. A patent right may be regarded as divisible as to content, territory, or time, and in each case the assignee is to be regarded as the owner of the part assigned, and the assignor as the owner of the part not assigned. Thus there may be more than one owner of the rights in a patent at one time.

6.02
Establishing entitlement at filing – June 2015

If the applicant is the inventor, pursuant to subsection 37(1) of the Patent Rules, in respect of both regularly filed patent applications and PCT national phase applications, the application must contain a statement to that effect.

Where the applicant is not the inventor, see 6.02.01 for regularly filed applications and 6.02.02 for PCT national phase applications.

6.02.01
Regularly filed patent applications

Pursuant to subsection 37(2) of the Patent Rules, in respect of an application other than a PCT filed application where the applicant is not the inventor, the application must contain a statement indicating the name and address of the inventor and a declaration that the applicant is the legal representative of the inventor. Pursuant to subsection 37(3) of the Patent Rules, the required statement or declaration shall be included in the petition or be submitted in a separate document. An assignment confirming entitlement can also be registered on a voluntary basis.

Pursuant to subsection 37(4) of the Patent Rules, if an application does not comply with the above requirements, the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements before the later of the expiry of the 3-month period after the date of the notice and the expiry of the 12-month period after the filing date of the application. If the applicant does not reply in good faith to this requisition, then pursuant to section 97 of the Patent Rules, the application will be deemed abandoned, and subject to the reinstatement provisions of the Patent Act and Rules.

Registration of an assignment is not required to establish entitlement at filing.

6.02.02
PCT national phase applications

Pursuant to subsection 58(5) of the Patent Rules, in respect of PCT national phase applications, where the applicant is not the applicant originally identified in the international application, the Commissioner shall requisition evidence that the applicant is the legal representative of the originally identified applicant where the documents already in the Patent Office do not provide such evidence.

Pursuant to subsection 58(5.1) of the Patent Rules, where the applicant does not comply with a requisition made by the Commissioner pursuant to subsection 58(5) within three months after the requisition is made, that applicant shall be deemed never to have complied with the requirements for their international application to enter national phase in Canada.

While not a requirement to enter national phase in Canada, pursuant to subsection 37(2) of the Patent Rules, the application must contain a declaration that the applicant is the legal representative of the inventor, or a declaration as to the applicant's entitlement, as at the filing date, to apply for and be granted a patent, in accordance with Rule 4.17 of the Regulations under the PCT.

As noted above, pursuant to subsection 37(4) of the Patent Rules, if an application does not comply subsection 37(2) of the Patent Rules, the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements before the later of the expiry of the 3-month period after the date of the notice and the expiry of the 12-month period after the filing date of the application. If the applicant does not reply in good faith to this requisition, then pursuant to section 97 of the Patent Rules, the application will be deemed abandoned, and subject to the reinstatement provisions of the Patent Act and Rules.

6.03
Registration of documents – June 2015

Pursuant to subsection 50(2) of the Patent Act, every assignment of a patent, and every grant and conveyance of any exclusive right to make and use and to grant to others the right to make and use the invention patented, within and throughout Canada or any part thereof, shall be registered in the Patent Office in the manner determined by the Commissioner.

Registration refers to the process of filing a document that is associated with a patent or an application. In accordance with section 42 of the Patent Rules, the Commissioner shall, upon request and on payment of the fee set out in item 21 of Schedule II of the Patent Rules, register in the Patent Office any document relating to a patent or an application [see 6.06].

6.04
Types of documents registered with the Patent Office – June 2015

Although any document associated with a patent or an application may be registered with the Patent Office, the types of documents registered typically fall into one of three categories:

Registration provides a third party record of any ownership change relating to a patent or an application.

6.05
Requirements for registering a document (other than an assignment) – June 2015

In accordance with section 42 of the Patent Rules, the requirements for registering a document with the Patent Office are:

6.06
Requirements for registering an assignment – June 2015

Assignments are the most common form of transfer registered by the Patent Office. References to assignments found throughout this chapter are intended to refer to transfers by contract. They are not intended to be inclusive of all types of transfer. For example, they are not intended to include transfers by inheritance, bequest or court order.

Assignments are often complex and diverse, frequently addressing matters reaching beyond intellectual property rights. The complexity of these documents may necessitate a significant effort by the Patent Office in order to ensure that the documented changes in title are accurately reflected in Office records.

Therefore, in order to assist the Office in its effort to simplify and expedite the processing of assignments while maintaining a high quality standard, the Office has developed forms for requesting the registration of assignments and strongly recommends their use.

The forms will be part of the record and will help ensure that all the required information has been submitted to the Office. The Office will use the content of the forms to assist with the registration of the assignment.

In the case where the forms are not used, the Office urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee a request should include the following information, ideally on a cover sheet:

A copy of the document effecting the transfer and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed must be submitted in accordance with sections 49 and 50 of the Patent Act. The following proofs are all considered to be satisfactory:

Any document related to a change of ownership that is submitted to the Office will be registered; if, however, the information provided in the document does not meet the requirements to effect a transfer of ownership the Office will be unable to give effect to the change of ownership purportedly made in the document.

Note that all documents submitted to the Office will be made available to the public. Parts of these documents may contain personal information and applicants are encouraged to take steps to ensure that personal or sensitive information is omitted or obscured from the document before it is sent to the Patent Office.

6.07
Registration certificates – June 2015

Upon registration of a document with the Office, a certificate of registration is produced, identified by number and sent to the person who requested registration of the document. The documents submitted for registration are scanned and entered into the corresponding application file.

6.08
Maintaining chain of title – June 2015

In accordance with section 38 of the Patent Rules, no transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the currently recognized owner to the new owner has been registered and given effect in the Patent Office in respect of that patent or application.

Submitted assignment documents, associated forms and/or cover pages must refer to the person recorded as the registered owner/patentee at the time the document is filed. If the assignment document requests the assignment of rights of the recorded owner/patentee to an assignee, the Patent Office will amend its records to reflect this change. If it is noticed that the assignment document fails to refer to the registered owner or refers to an owner that does not correspond to the owner on record, the Patent Office will send a courtesy letter to the applicant indicating that the assignment document is not recognized by the Commissioner and will identify the deficiency.

6.09
Assignment correction mechanisms – June 2015

Occasionally, an error is present in an assignment (in the document effecting the change in ownership) and/or an error is made in the entry of information in the Patent Office's records.

A variety of errors can be corrected by filing an appropriate request. Such requests may be filed, depending upon the circumstances, by one of the parties to the assignment or by the applicant, owner, or legal representative on record.

It is important to note that despite the correction of an error, all documents that are registered by the Office will remain on record subject to a court order to the contrary.

6.09.01
Error in the records of the Patent Office

If the Patent Office has made an error in transcribing information into the Patent Office's records, the Office will correct the error upon request. The request must provide details regarding the error and must refer to the registered document. No fee is required for the correction.

6.09.02
Error in assignment document

In accordance with sections 49 and 50 of the Patent Act, the Office will proceed with the registration of an assignment provided that the request for registration complies with all procedural requirements. The Office takes the position, however, that an assignment may be registered without necessarily being recognized or, in other words, without being given effect. The Office will consequently not give effect to an assignment where it is satisfied that the assignment is invalid or where the assignor identified in the assignment does not correspond to the owner currently recognized by the Office.

Therefore, where an incorrect document has been registered or where a registered document contains a mistake, Office records may be updated to reflect the correct situation following the receipt of:

To be considered acceptable, a request must always originate from one of the parties identified in the correct assignment.

The following additional requirements must also be met depending on the type of error to be corrected.

Where the error in the incorrect assignment does not relate to the name of the assignee the request must:

contain a statement signed by the requester to the effect that the previously registered assignment contains a mistake and contain information describing the mistake.

Where the assignee mistakenly identified in the incorrect assignment does not exist or is the same entity as the assignee identified in the correct assignment the request must:

Where the assignee mistakenly identified in the incorrect assignment exists and is different from the assignee identified in the correct assignment the request must:

This mechanism cannot be used after the grant of a patent to correct errors that were introduced during the application stage.

6.09.03
Clerical errors

Certain errors in assignment documents may qualify as clerical errors that arose in the mechanical process of typewriting or transcribing.

These errors may be corrected under section 8 of the Patent Act rather than via the mechanism set out above. A request for a correction under section 8 of the Patent Act should be accompanied by the required supporting information and the prescribed fee set out in item 19 of Schedule II of the Patent Rules. The supporting information required is an identification of the document of record in the Patent Office where the error occurs and a description of the clerical nature of the error.

If a request for correction under section 8 of the Patent Act has already been submitted but is not the appropriate mechanism, a new request will be necessary and will have to refer explicitly to the appropriate mechanism.

6.10
Joint inventors – June 2015

Inventions are frequently created as part of a collaborative effort. In such instances, all the inventors must join in applying for a patent.

Pursuant to subsection 31(1) of the Patent Act, if one of the inventors refuses to apply for a patent or his whereabouts cannot be ascertained after diligent inquiry, the other inventors or their legal representatives may apply for a patent, and a patent may be granted in the name of the inventors who apply for an application on satisfying the Commissioner that the joint inventor has refused to apply for a patent or that his whereabouts cannot be ascertained after diligent inquiry.

6.11
Adding and removing inventors – June 2015

An inventor may be added or removed at the written request of the authorized correspondent.

The Patent Office strongly recommends that the authorized correspondent provide an updated declaration of entitlement.

Note that the Office will not evaluate any evidence regarding ownership of the patent or patent application in the case of a disagreement between inventors and/or applicants.

6.12
Adding and removing applicants – June 2015

Pursuant to subsection 31(3) of the Patent Act, where an application is filed by joint applicants and it subsequently appears that one or more of them has had no part in the invention, the prosecution of the application may be carried on by the remaining applicant or applicants on satisfying the Commissioner by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors.

Pursuant to subsection 31(4) of the Patent Act, where an application is filed by one or more applicants and it subsequently appears that one or more further applicants should have been joined, the further applicant or applicants may be joined on satisfying the Commissioner that he or they should be so joined, and that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay.

6.13
Jurisdiction of the Federal Court – June 2015

Pursuant to section 52 of the Patent Act, the Federal Court has jurisdiction, on the application of the Commissioner or of any person interested, to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged, including the removal of a previously registered document.


Date modified: