2017 FC, 2017 FC 1108

Date: 20171205 Docket: T-1130-17 Citation: 2017 FC 1108 Ottawa, Ontario, December 5, 2017 PRESENT: The Honourable Mr. Justice Martineau BETWEEN:EVERLIGHT ELECTRONICS CO., LTDApplicantandATTORNEY GENERAL OF CANADARespondent JUDGMENT AND REASONS [1] The applicant, Everlight Electronics Co., Ltd [Everlight], is seeking to vary an entry in the records of the Patent Office. Theapplication – which is uncontested – is allowed by the Court. [2] Everlight is a global optoelectronics manufacturer constituted under the laws of Taiwan.

On January 23, 2002, GentexCorporation [Gentex], an American company in the automotive industry, filed an international patent application under the PatentCooperation Treaty for “radiation emitter devices and method of making the same.” The patent application made its national entry inCanada on June 5, 2003. The Canadian Patent Office issued Canadian letters of patent number CA 2,430,747 [Patent] on May 20, 2008.Following a worldwide transaction between Gentex and Everlight, ownership of several patents were transferred to the applicant. Thisinvolved, among other things, an assignment agreement: “Contract No.

A03 16070001 Everlight Legal” [Assignment]. On October 13,2016, the applicant’s patent agent inadvertently filed the complete Assignment to the Patent Office as evidence of the Patent’s transfer ofownership. Yet, Gentex and Everlight had always intended to only submit a more limited appendix (attached as Exhibit C of the affidavitof Hsien-Chia Lin) instead of the entire transaction, in order to protect their confidential information. Registration of the Assignment tothe applicant was confirmed by the Patent Office on October 17, 2016. The applicant filed the present application after noticing thiserror. [3]

Section 52 of the Patent Act, RSC 1985, c P-4 [Act] confers a broad jurisdiction to the Federal Court “to order that any entryin the records of the Patent Office relating to the title to a patent be varied or expunged,” on the application of any person interested. Thisincludes the patent’s owner and the assignee (see Micromass UK Ltd v Canada (Commissioner of Patents), 2006 FC 117 at para 14[Micromass] and Novartis AG v Canada (Attorney General), 2016 FC 229 at para 2 [Novartis]). While

section 52 of the Act is silent onthe test to be used to decide whether or not to exercise jurisdiction (see Qualcomm Incorporated v Canada (Commissioner of Patents),2016 FC 1092 at para 11), the word “title” has been broadly interpreted by this Court to include various matters relating to the root oftitle (see Micromass at para 13). [4] The Act and the Patent Rules, SOR/96-423, do not have requirements as to the assignments’ content – other than evidence ofthe assignment of rights itself.

In Love v Claveau (1989), (FC), [1990] 1 FC 64, 29 FTR 188 (FCTD), the Court heldthat its jurisdiction extended to the expungement of an assignment agreement that was improperly filed. In Gray ManufacturingCompany, Inc v Canada (Attorney General), 2016 FC 55, a patent was inadvertently filed under the wrong company name, and the Courtused its power under

section 52 of the Act to order the Commissioner of Patents to vary the entry. Factors considered were that themistake was unintentional, made in good faith and without any attempt to mislead or cause delay. In Micromass, the Court mentionedthat the change ordered would be immaterial to the public. In Novartis, the Court also considered the fact that third parties would not beaffected. [5] Based on the affidavit evidence and representations made by the applicant, I am satisfied that the Court should accept to varythe records concerning the Patent.

Filing the Assignment was truly an honest mistake on the part of the patent agent. The proposedvariation will cause no prejudice to third parties, as no outsider is claiming an interest in the Patent, there is no ongoing infringementcase, and the rest of the Assignment is immaterial to the public. In the present case, the objective of protecting confidentiality can be metby varying the current records through redaction of confidential information in the Assignment.

A copy of the Assignment to which saidconfidential information has been redacted is attached as Exhibit B of the affidavit of Hsien-Chia Lin (reproduced as Annex A of thepresent judgment). JUDGMENT in T-1130-17 UPON AN UNCONTESTED application to vary an entry in the records of the Patent Office regarding patent CA 2,430,747 [Patent]; IT IS HEREBY ADJUDGED AND ORDERED THAT: 1. The application is allowed; 3.

The assignment agreement “Contract No A03 16070001 Everlight Legal” [Assignment] is expunged from the records of thePatent Office regarding the Patent, and shall be replaced by the redacted assignment annexed to the present judgment (Annex A).

4. The Patent Office shall comply with the Court’s judgment and shall destroy any electronic copy of the Assignment from its records and return any physical copy of same to the applicant. 5. Without costs. "Luc Martineau" Judge ANNEX A

FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-1130-17 STYLE OF CAUSE: EVERLIGHT ELECTRONICS CO., LTD v THE COMMISSIONER OF PATENTS (ATTORNEY GENERAL OF CANADA) PLACE OF HEARING: Montréal, Quebec DATE OF HEARING: November 30, 2017 JUDGMENT AND REASONS: MARTINEAU J. DATED: december 5, 2017 APPEARANCES :

Me Camille Aubin For The Applicant BLANK / EN BLANC for the RESPONDENT SOLICITORS OF RECORD : ROBIC, LLP Montréal, Quebec For The Applicant Attorney General of Canada FOR THE RESPONDENT