August 11, 2020
In Alfasigma S.P.A. v. Canada (Attorney General), 2020 FC 561, the Federal Court (the “Court”) granted an application made by Alfasigma S.P.A. (“Alfasigma”) under section 52 of the Patent Act requesting that the Court add the name of Mr. Denis Severini to the list of inventors of Canadian Patent No. 2,538,546. Mr. Severini was part of the team of researchers who discovered the invention.
While section 52 does not provide any criteria for granting such an application, the Court held that the criteria found in subsection 31(4) of the Patent Act are relevant to consider.
Applying these principles, the Court was satisfied that the omission resulted from a mistake and that there was no improper purpose. In its reasoning, the Court also considered the lack of pending litigation surrounding the patent at issue and noted that a similar application made by Alfasigma for a corresponding American patent was granted by the United States Patent and Trademark Office. For these reasons, the Court granted the application to add Mr. Severini as an inventor.
Authors: Jaclyn Tilak and Eran Rubman