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Digest of the Week – Court has no jurisdiction to entertain dispute which is solely a matter of contract

Digest of the Week – Court has no jurisdiction to entertain dispute which is solely a matter of contract

The Court has no jurisdiction to entertain a dispute which is solely a matter of contract.



Salt Canada Inc. v. Baker
2016 CarswellNat 3229
Federal Court


Intellectual property --- Patents — Transfer of interest — Assignment

Patent was filed in Canada on May 24, 1996 and issued on April 12, 2005 — American citizen, M, was listed as original owner and inventor of patent — Canadian and US patents were purportedly assigned to American corporation E Inc. in 1997 and then to company TI in 2005, possibly in breach of agreement between M and E Inc. — Patents were reassigned by E Inc. to M in 2007, although Canadian patent remained in name of TI — Respondent B entered into agreement with TI in 2008 to obtain Canadian patent — In 2015, M signed agreement with applicant S Inc. purporting to assign rights to Canadian patent — As part of agreement, M agreed to take steps to remove B as registered owner of Canadian patent — Patent Office refused to record reassignment from B to M because it was not executed by B, who was listed owner on file — S Inc. brought application for declaration that records of Patent Office be varied to list S Inc. as owner of patent and directing Patent Office to record reassignment of patent from B to M — Application dismissed — Federal Court had jurisdiction to order that any entry in records of Patent Office relating to title to patent be varied or expunged — Court had no jurisdiction to entertain dispute which was solely matter of contract — Issuance of order that Patent Office vary records was secondary to and dependent upon prior interpretation of various assignment agreements which, according to S Inc., made it owner of Canadian patent — Interpretation of those agreements was clearly matter of contract and thus, Federal Court did not have jurisdiction to grant requested relief.
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