Uncontested Application to Vary Record of Assignment

Everlight Electronics Co, Ltd v Canada (Attorney General) 2017 FC 1108 Martineau J
            2,430,747

Gentex Corp originally obtained the ‘747 patent, which was then assigned to Everlight in a worldwide transaction. Evidence of the transfer of ownership was subsequently filed with the Patent Office. In order to protect confidential information, they had intended to file only a limited appendix to the assignment agreement, but Everlight’s patent agent inadvertently filed the complete  agreement. 

This application was brought pursuant to s 52 of the Act, which confers a broad jurisdiction on to the Federal Court “to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged,” to expunge the complete assignment agreement and replace it with a redacted version. Martineau J granted the application, noting that “[t]he proposed variation will cause no prejudice to third parties, as no outsider is claiming an interest in the Patent, there is no ongoing infringement case, and the rest of the Assignment is immaterial to the public” [5]. This is consistent with a series of cases indicating that the FC will be accommodating in varying records when the interests of third parties are not affected.