GENERAL TRANSPORT EQUIPMENT PTY. LTD. Applicant v. THE ATTORNEY GENERAL OF CANADA AND TYTEC LOGISTICS PTY. LTD., 2019 FC 309

Date: 20190313 Docket: T-2179-18 Citation: 2019 FC 309 Toronto, Ontario, March 13, 2019 PRESENT: The Honourable Madam Justice McDonald BETWEEN: GENERAL TRANSPORT EQUIPMENT PTY. LTD. Applicant and THE ATTORNEY GENERAL OF CANADA AND TYTEC LOGISTICS PTY. LTD. Respondents JUDGMENT AND REASONS [ 1 ] General Transport Equipment Pty. Ltd. brings this application pursuant to

Section 52 of the Patent Act , RSC 1985, c P-4 to correct the inventors of record of Patent No. 2,639,371 (371 Patent) to include Robert Diss, their employee, as a co-inventor. [ 2 ] The issue of Mr. Diss as a co-inventor was addressed by the Australian Patent Office who determined that Brett Fennell and Robert Diss are co-inventors of the equivalent Australian Patent. [ 3 ] The Respondent, Tytec Logistics Pty. Ltd., is the owner of Patent No. 2,639,371 (371 Patent) and the employer of the co-inventor Brett Fennell.

Tytec confirmed in writing that they support this application and they waived their rights to be served with the application materials. [ 4 ] The Attorney General on behalf of the Commissioner of Patents was served with this application and confirmed that it would not be filing material or participating in the application. [ 5 ] The Australian Patent Office and the United States Patent Office have considered the inventorship of corresponding Australian and United States Patents, and added Robert Diss as a co-inventor to the corresponding patents. [ 6 ] Pursuant to

section 52 of the Patent Act the court has jurisdiction to order the correction of the records of the Patent Office regarding the listing of a co-inventor ( Micromass UK Ltd v Canada (Commissioner of Patents) , 2006 FC 117 , at paras 12-13 ). [ 7 ] With respect to applicable test, sub-section 31(4) of the Act , provides that that the person should be joined as a co-inventor provided " “that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay” " . [ 8 ] I am satisfied, on the basis of the application record and the decision of the Australian Patent Office that the Australian co- inventorship principles are substantially the same as the applicable Canadian principles ( Apotex Inc.

Wellcome Foudnation Ltd ., 2002 SCC 77 at para 99 ). I am therefore satisfied that Robert Diss should be added as a co-inventor. Finally, I am satisfied that his name was omitted from the original application by inadvertence or mistake, and was not for the purpose of delay. JUDGMENT IN T-2179-18 THIS COURT’S JUDGEMENT is that: 1 . The Commissioner of Patents, pursuant to

section 52 of the Patent Act , shall vary all entries in the records of the Patent Office with respect to the inventorship of Canadian Patent No. 2,639,371 by adding Robert Diss as a co-inventor. 2 . There shall be no order as to costs. "Ann Marie McDonald" Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: t-2179-18 STYLE OF CAUSE: GENERAL TRANSPORT EQUIPMENT PTY. LTD. v THE ATTORNEY GENERAL OF CANADA AND TYTEC LOGISTICS PTY. LTD. PLACE OF HEARING: toronto, Ontario DATE OF HEARING: MARCH 13, 2019

JUDGMENT and reasons: MCDONALD J. DATED: MARCH 13, 2019 APPEARANCES : Alan Macek For The Applicant {BLANK} For The Respondent SOLICITORS OF RECORD : DLA Piper Canada (LLP) Solicitors Toronto, Ontario For The Applicant {BLANK} For The Respondent