Case information

Intellectual property — Patents — Ownership — Transfer of ownership — Whether declaration transferring ownership of asset from registered owner to third party declaratory or remedial — Whether inventor who did not file patent application has legal right that can be recognized by declaration of patent ownership.

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

When drilling for oil in formations containing heavy crude oil or bitumen-rich oil sands, the bitumen or heavy oil sticks to the drilling components, requiring frequent cleaning.

In 2002, Mr. Ewanek joined a predecessor to Secure Energy (Drilling Services) Inc. Soon after Mr. Ewanek was hired, Mr. Levey was hired to develop solutions to prevent the accretion problem. He developed a positively charged (cationic) polymer to stop the accretion of bitumen which was patented. He also tested several anionic polymers and a single non-ionic polymer, recording the test of the non-ionic polymer as “failed”.

In 2005, Mr. Ewanek and Mr. Levey resigned. Mr. Levey began working for a predecessor to Canadian Energy Services L.P. (“CES”). It filed the application for a negatively-charged (anionic) water-based and an electrically-neutral (non-ionic) polymeric drilling fluids to reduce the accretion of bitumen or heavy oil to drilling components during the drilling process. Canadian Patent 2,624,834 (“Patent ’834”) was granted for that invention.

In 2018, CES launched an action against Secure for infringement of Patent ’834 in the Alberta courts. In the federal courts, Secure sought a declaration that Mr. Levey is the true inventor or co-inventor of the subject matter of Patent ’834 and an order requiring variation of the records of the Patent Office to reflect the true ownership. Secure’s application was stayed until the Alberta action was decided. The Alberta court found Secure’s causes of action barred by either limitations or a release, and Secure’s appeal was dismissed.

The Federal Court granted the application in part, declaring Mr. Levey to be the sole true and proper inventor of the subject matter of the Patent ’834, and Secure to be the true owner of that invention. There was no need to direct the Commissioner of Patents to correct the Register. The Court of Appeal dismissed the appeal, holding that the Federal Court had erred in law with respect to chain of title, but that the error did not affect the outcome.