Executive Summary: Key Legal and Evidentiary Issues

• The core dispute centered on inventorship and ownership of Canadian Patent No. 2,624,834 concerning polymeric drilling fluids.

• Secure Energy claimed Simon Levey was the sole true inventor, challenging the existing record naming John Ewanek and ownership by Canadian Energy Services (CES).

• The Federal Court accepted Levey's evidence and expert testimony over Ewanek's, finding Levey to be the true inventor.

• Issues of res judicata, limitation periods under Alberta law, and the effect of a prior release agreement were raised and rejected.

• CES argued the chain of title was not properly proven; the Federal Court of Appeal ruled Secure had validly inherited the rights via corporate succession.

• The appeal was dismissed, confirming Secure Energy as the rightful owner of the 834 Patent and upholding the Federal Court’s decision.

Facts of the case

This appeal arose from a legal dispute over the ownership and inventorship of a Canadian patent—No. 2,624,834—relating to a specialized polymeric drilling fluid designed to reduce the accumulation of heavy crude oil and bitumen on drilling components during oil extraction. Canadian Energy Services L.P. (CES) and John Ewanek were listed respectively as the patent’s owner and inventor. However, Secure Energy (Drilling Services) Inc. asserted that the true inventor was Simon Levey, an employee of Genesis International Oilfield Services Inc. (a predecessor to Secure).

Levey developed a cationic polymer solution during his employment at Genesis, which led to a separate patent. He also tested anionic and non-ionic polymers—technologies that later became central to the 834 Patent. Both Levey and Ewanek later left Genesis. Ewanek joined Mud King Drilling Fluids, which filed the patent that became the 834 Patent. CES later acquired Mud King’s assets, including the patent. Secure Energy, as the successor of Genesis, launched a Federal Court application seeking declarations that Levey was the rightful inventor and Secure the rightful owner.

Court proceedings and decisions

The Federal Court granted Secure’s application in 2023, declaring Levey the sole inventor and Secure the rightful owner. However, it declined to issue an order under section 52 of the Patent Act for record variation, stating the Commissioner of Patents could act based on its declarations. CES appealed this decision to the Federal Court of Appeal.

Jurisdictional and procedural challenges

CES raised several legal objections. First, it argued that Secure’s claim was barred by the doctrine of res judicata and by a release agreement signed years earlier. It also invoked Alberta’s Limitations Act, alleging the claim was out of time. Additionally, CES challenged the finding that Secure had established a valid chain of title to the patent, asserting that title had not legally transferred from Genesis to Secure.

The Federal Court of Appeal addressed each argument. It found that the Alberta courts had not made a final determination on inventorship or ownership and that Secure’s application to the Federal Court did not constitute an abuse of process. It also ruled that the relief sought was declaratory, not remedial, and thus not subject to Alberta's limitation periods. The release was interpreted narrowly; because Secure sought no remedy against Ewanek directly, the release did not bar the application.

Inventorship and factual findings

The Court upheld the Federal Court’s determination that Levey was the true inventor. Levey’s notebooks and testimony demonstrated that he conceived and tested the concept underlying the patent years before CES's involvement. The Court found that Ewanek likely learned of Levey’s ideas while supervising him at Genesis and improperly used them in a later patent application.

CES argued that Levey had not sufficiently developed the concept, especially with respect to non-ionic polymers. However, the Court accepted Secure’s expert evidence that Levey’s initial testing supported the invention’s foundation and dismissed CES’s contention as lacking evidentiary support.

Chain of title and legal outcome

The Federal Court had previously found that Secure’s chain of title to a related patent (the 339 Patent) had been established, and it extended that reasoning to the 834 Patent. On appeal, the Court found this application of res judicata to be erroneous but conducted its own review. It concluded that the 2012 Asset Purchase Agreement between Genesis (then operating as New West) and Marquis Alliance Energy conveyed all relevant intellectual property rights, including the rights to Levey’s invention. Secure, as successor to Marquis, validly inherited those rights.

Final decision

The Federal Court of Appeal dismissed the appeal in its entirety, confirming that Secure Energy (Drilling Services) Inc. is the rightful owner of the 834 Patent and that Simon Levey is its true inventor. The Court awarded costs to Secure.