Patents, Practice Notes

Legal Representative Declarations & Assignments

Guidance

Canadian Patent Rules state that when the inventor is the applicant, the filing document must simply contain a statement to that effect. When the applicant is not the inventor, the filing document must contain a declaration that the applicant is the “legal representative” of the inventor(s) or, in the case of PCT national phase applications, either a declaration that the applicant is the “legal representative” or a declaration in accordance with Rule 4.17 of the Regulations under the PCT.  A “legal representative” of the inventor is typically the owner of the rights to the invention, but may, as defined in section 2 of the Patent Act include “…heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions.”

The statement that the applicant is the inventor(s) or the declaration that the applicant is the “legal representative” is not required to “complete” an application.  Applicants that do not comply with the requirements at the time of filing an application, will be requisitioned by the Commissioner of Patents to do so before the later of 3 months following the date of the requisition and 12 months after the filing date of the application.

Recordal of Title Documents (assignments, name changes, etc.)

Although the Patent Rules do not require the registration of assignments for “completing” an application or evidencing an applicant’s entitlement to file the application, the Patent Act states that assignments shall be registered.  Accordingly, applicants should record at the Canadian IPO all chain of title documents from the inventor(s) to the applicant, as well as any other changes in ownership (e.g. assignments, mergers, name changes, etc.) as soon as possible and, preferably, no later than at the time of payment of the final issue fee in order to ensure that the patent grants in the proper name and to minimize any issues that may arise with regard to subsequent transfers of title and a patentee’s rights in cases of enforcement.

Background & History

Prior to June 2, 2007, an applicant was required to register evidence (usually in the form of an assignment) that the applicant was the legal representative of the inventor. Pursuant to amendments to the Patent Rules that came into force on June 2, 2007, this requirement was removed and replaced with a requirement for a declaration as to the applicant’s entitlement, as of the filing date, to apply for and be granted a patent.

Although certain amendments (in effect June 2007) were intended to simplify the application procedure, the complexity of the prescribed declaration of entitlement form caused more difficulties. The “2007 declaration of entitlement form” required identification of a specific basis of entitlement selected from a prescribed list, which included terms such as “employer”, “agreement” , “consent” and “transfer”:  none of which was defined in the Patent Act or Patent Rules. Furthermore, the form required specific dates to be attributed to most of these bases of entitlement.

As of October 1, 2010, the Patent Rules replaced the requirement for the relatively complex declaration of entitlement form with a simple statement to indicate that “the applicant is the legal representative of the inventor.”  The term “legal representatives” is defined broadly in s.2 of the Patent Act as including “…heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions.”  Unlike the previous Declaration of Entitlement practice, the legal representative statement does not require details about how or when the applicant became the legal representative of the inventor. Also, the legal representative statement is not a completion requirement.

Although neither the 2007 declaration of entitlement procedures nor the 2010 “simplified” legal representative statement procedure requires an assignment from the inventor to the original applicant to be registered in the Canadian IPO, there nevertheless remain provisions in the Patent Act relating to assignments. In particular, s.51 of the Patent Act provides that an assignment is void against a subsequent assignee, unless the assignment is registered by the Canadian IPO before the registration of the instrument under which the subsequent assignee claims. Therefore, it is possible that, if the original applicant for a Canadian patent obtained rights in an invention from the inventors by way of assignment but did not record that assignment, the inventors could fraudulently execute a subsequent assignment in favour of a third party and record that subsequent assignment at the Canadian IPO, thereby defeating the earlier (unrecorded) assignment to the original applicant.

However, under the Patent Rules the chain of title must be preserved by the Canadian IPO and should therefore refuse to register such an assignment provided that the assignee (and not the inventor) is named as the original applicant in the application (which is typical practice in Canada).  In this situation the inventor is not part of the chain of title in the Canadian patent application.  Therefore, an assignment from the inventor to a third party should not be registered by the Canadian IPO. This is provided for in s.38 of the Patent Rules, which states that:

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 current recognized owner to the new owner has been registered in the Patent Office in respect of the patent or application.

The “currently recognized owner” in s.38 of the Patent Rules would be the originally named applicant and not the inventors. This requirement to maintain the chain of title is acknowledged in section 6.09 of  the Canadian IPO’s Manual of Patent Office Practice.

Recommendation

Since the provisions of the Patent Act with respect to assignments do not appear to be entirely consistent with the provisions of the revised Patent Rules, it is possible that Canadian law or practice may develop in such a way that there would be a benefit in recording an assignment to the original applicant. In view of this possibility, the cautious course is to record any such assignment.

Therefore, Kirby IP Canada continues to recommend that an assignment should be obtained from the inventor(s), and should be registered in the Canadian IPO. In most cases, however, an assignment that has already been prepared and executed for use in another jurisdiction, such as the U.S., is generally satisfactory for registration in Canada, provided that clauses are broad enough to include rights in Canada. As a reminder, the signatures of the inventors must have been witnessed or other evidence of execution must be available, such as “frame/reel” information or a copy of a Notice of Recordation in the United States Patent and Trademark Office.

Any subsequent steps within the chain of title (e.g., from the original applicant to a subsequent assignee) shall be registered in the Canadian IPO in the usual manner if the new owner is to be recognized in the Canadian IPO records and if the potential application of s.51 of the Patent Act is to be avoided.

For PCT national phase entry in Canada...

Engage Us Today