Patent Litigation 2024

Last Updated February 15, 2024


Law and Practice


Cassels Brock & Blackwell LLP is one of the largest and highest profile among Canadian full-service law firms. Its intellectual property group has more than 35 dedicated professionals, and from offices in Toronto, Vancouver and Calgary the team advises domestic and international clients in a wide range of industries on the protection, management and enforcement of all types of intellectual property. Cassels has significant bench strength in all areas of intellectual property: patents and trade secrets, trade marks, and copyright and design. Focusing on patents, the firm’s experienced patent litigators have been directly involved in many precedent-setting patent cases in Canada that have helped shape both substantive patent law as well as patent litigation procedure. The team’s strategic approach has resulted in notable and repeated success at trial and on appeal.

Inventions are patentable in Canada under the terms of the Patent Act. A patent is a statutory monopoly. When a patent is granted, the patentee has the exclusive right to make, use, sell and offer for sale the invention claimed in the patent for a period of 20 years from the filing date. 

The visual appearance of an invention may also be protected by industrial designs under the Industrial Design Act. Industrial designs are similar to design patents in the United States and protect the visual features, like the shape and ornamentation, of an article. An industrial design provides the owner with the exclusive right to make, sell or import articles embodying the claimed design or a design that does not differ substantially from the registered design.

Trade secrets can also protect inventions. Trade secrets include any business information that has commercial value derived from its secrecy. In Canada, there is no federal trade secrets act or equivalent statute. Instead, trade secrets are protected under common law.

To receive patent protection, a patent application must be filed with the Canadian Intellectual Property Office (CIPO). The Patent Cooperation Treaty process may be used to enter the national phase in Canada. The application must, amongst other things, describe the invention and how to make it. The application must also include claims setting out the scope of the invention, and any relevant drawings or figures. With a few exceptions, all documents must be filed in English or French. The applicant must request that their application be examined within four years of filing. During the examination process, the examiner may raise substantive and technical objections based on the requirements of the Patent Act and the Patent Rules. If all objections are overcome, and all other requirements are met, the application will be allowed. Once an issue fee is paid, the patent will be granted.

Industrial designs are also obtained by filing an application with CIPO. If the application is in order, the applicant will receive a notice of filing that confirms the filing date. The application will then be examined to ensure that it complies with the statutory requirements. The examiner may raise objections to the application and the applicant has an opportunity to address the objections. If the examiner is satisfied that the design is registrable, the applicant will be notified, and the design will be entered in the Register of Industrial Designs.

Unlike patents and industrial designs, there is no application process for trade secrets. A trade secret arises by the fact that the information has been kept confidential and remains confidential.

In general, the patent application process can take between two and three years from the filing of the request for examination until the issue of the patent. This period can vary depending on several factors, including the number of objections raised by the examiner and how long the applicant waits to request examination. An applicant has up to four years from filing to request examination (or four years and two months upon payment of a late fee). Examination may be expedited by paying an additional fee, or through the patent prosecution highway where a corresponding patent application has previously been allowed in a different jurisdiction.

While an inventor can file a patent application on their own in certain situations, it is recommended that they obtain the assistance of a patent agent. Preparing and prosecuting a patent application is time consuming and complicated. An applicant lacking the necessary experience and knowledge may fail to obtain a patent altogether or may obtain a patent that confers narrower rights than they may otherwise be entitled to. An experienced patent agent can help secure robust patent rights in an efficient and timely manner.

CIPO has increased its filing fees for 2024. Standard fees for filing, requesting an examination, and finalising the patent are roughly CAD2,081. Late fees, reinstatement fees, agent or legal fees, and maintenance fees are an additional cost. Small entities may pay discounted rates.

The process for obtaining an industrial design is generally faster than for a patent. Once an application is filed, the examiner’s report or a notice of allowance is typically issued within the first year. The proprietor of a design may file the application on their own, but the assistance of a qualified professional is recommended. Beginning in January 2024, the filing fee for an industrial design is CAD567. Associated fees, like advanced examination, maintenance and legal fees are additional costs.

The term of patent protection in Canada is 20 years from the Canadian filing date or the international filing date for applications that entered from the national phase. Certificates of supplementary protection may be obtained for patents pertaining to the medicinal ingredient or combination of medical ingredients contained in a drug that is approved for sale in Canada if there were delays in the regulatory approval process. Certificates of supplementary protection may provide up to two years of additional protection and take effect upon expiration of the patent.

On 22 June 2023, Canada amended the Patent Act to provide an additional term of protection for patents whose issuance was impacted by unreasonable delays caused by CIPO. The amendments will come into force on 1 January 2025 and will apply to patents that were issued later than five years from the application filing date, or three years from the date of request for examination, whichever date is later. This amendment will only apply to applications filed on or after 1 December 2020, and the patentee must apply for the additional term of protection and pay the associated fee within three months of the patent issue date to obtain it.

The length of the additional term of protection will be calculated by subtracting time delays caused by the applicant (late fees, delay in response to notices from CIPO, etc) from the total extra time over the three- or five-year threshold that it took to issue the patent. No additional term of protection will be granted if the calculated time is a negative value or zero. CIPO notes that the earliest date that a patent could theoretically be eligible for an additional term would be 2 December 2025.

Industrial design protection lasts for ten years from the registration date or 15 years from the filing date, whichever ends later.

A trade secret may be maintained indefinitely, provided that the confidential information remains confidential.

A Canadian patent grants the patentee and their legal representatives the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. To maintain these rights, patentees must pay yearly maintenance fees. The remedies available to a patentee whose rights are infringed are discussed at 6. Remedies.

There is no requirement that products be marked with a patent number. If a patent relates to an approved drug, then it may be eligible to be listed on the Patent Register maintained by Health Canada. Listing eligible patents on the Patent Register with respect to an approved drug creates a linkage between the regulatory approval process and Canada’s patent regime.

The owner of an industrial design has the exclusive right to make, import for the purpose of trade or business, or sell, rent, or offer or expose for sale or rent, any article that embodies the claimed design or a design not differing substantially therefrom. There is no requirement to mark or otherwise identify that a product is protected by an industrial design. If, however, someone is found to have infringed an industrial design, the only available remedy is an injunction if the infringer did not know and had no reason to suspect that the design was registered. A maintenance fee must be paid to maintain an industrial design and the rights that it confers.

The owner of a trade secret can enforce its rights through an action for breach of confidence where confidential information was communicated in confidence to someone who misuses the information to the detriment of the confider.

See 1.4 Term of Each Intellectual Property Right.

Third parties may participate in the patent granting procedure before or after a patent is granted. Prior to a patent being granted, third parties may file prior art or a protest with respect to the application. The prior art can consist of patents, published patent applications, and printed publications that the third party believes have an impact on the patentability of any claim in the application. The prior art must be accompanied by an explanation of why the art is relevant. A third party may also file a written protest against the granting of a patent. The protest may or may not be accompanied by prior art.

If the information in a protest or filed prior art is found to be relevant, it will be considered by the examiner when examining the patent application. The protest and prior art are made part of the public prosecution file but the third party does not otherwise participate in the process. There is no limit on the number of protests or pieces of prior art that may be filed and the third party can remain anonymous by having a lawyer or patent agent submit the protest or prior art on their behalf.

Once granted, a third party may request that the patent be re-examined by filing prior art. This request must explain the relevance of the prior art and how it is applied to the claims in question. After receiving this request, a re-examination board will be established and they must, within three months, determine whether the request raises a substantial new question of patentability. If they determine that it does not, the requesting party will be notified of the result and that is the end of the process. If they determine that the request does raise a substantial new question of patentability, the patentee will be notified and given the opportunity to reply and to participate in the re-examination proceeding. A re-examination proceeding may result in claims being confirmed, cancelled or amended. After filing the request for re-examination, the requesting party is not involved in the proceeding apart from being notified of the result.

Where a patent examiner concludes that an application should be refused they will issue a final action rejecting the application. If an applicant does not withdraw their application, they may seek recourse before the Patent Appeal Board. The Patent Appeal Board will consider the examiner’s grounds for rejecting the application and the applicant will be given an opportunity to be heard, which can include an oral hearing. The Patent Appeal Board will provide a recommendation to the Commissioner of Patents who may decide to maintain the rejection, allow the application or incorporate any necessary amendments proposed by the applicant. If the Commissioner ultimately refuses to grant the patent, the applicant may appeal to the Federal Court of Canada.

Annual maintenance fees are required to maintain patent applications and issued patents. Maintenance fees must be paid for each one-year period from the second anniversary of the filing date of the application. If a maintenance fee is not paid, a notice will be issued setting a deadline for payment of the missed fee and a late fee penalty. If these fees are not paid by the set deadline, then the application will be deemed abandoned or, if the patent has issued, the patent will be deemed expired.

A patent application that is deemed abandoned can be reinstated if certain requirements are met, including by demonstrating that the applicant took due care in complying with the official requirements despite not paying the maintenance fee. If a patent is deemed to have expired, it is possible to make a request to the Commissioner of Patents to reverse the deemed expiry. The time limit for a patentee to request the reversal of a deemed expiry of a patent is 12 months after the end of six months after the applicable maintenance fee due date. The Commissioner will only reverse the deemed expiry if it is determined that the failure to pay the fees occurred despite due care having been taken.

Like patents, a maintenance fee must be paid to maintain industrial design registrations. This fee must be paid by the end of five years from the registration date. If this deadline is missed, the fee may be paid up to six months after the deadline, provided a late fee is also paid.

There are several mechanisms by which a patentee can amend their rights once a patent is granted. For a period of 12 months after the issue of a patent, a patentee may request that the Patent Office correct any obvious mistakes in the specification or drawings in the patent.

A patentee may also request re-examination of their patent. This involves the same procedure discussed in 1.7 Third-Party Rights to Participate in Grant Proceedings with respect to third parties. This procedure may be used by a patentee to amend their claims to avoid prior art that may otherwise invalidate one or more claims in an impeachment proceeding.

Patentees can also disclaim anything claimed in their patent that would render a claim overly broad, or anything claimed to which the patentee had no lawful right, as long as that information was included through “mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public”. Those filing a disclaimer must pay a prescribed fee. What is disclaimed will no longer form part of the patent.

Finally, a patentee can request that their patent be re-issued, where, due to mistake, inadvertence or accident, their patent claims less or more than they otherwise were entitled to claim. A request for re-issuance must be made within four years of the patent being granted.

When a Canadian patentee discovers that their invention is being infringed, the first step is typically to retain a lawyer to send a letter demanding that the infringement stop. If a satisfactory resolution cannot be negotiated, the patentee’s usual recourse is to issue a statement of claim initiating a patent infringement action. The infringement action is usually commenced in the Federal Court and can be brought against anyone who is infringing the patentee’s exclusive rights. Infringement actions are also sometimes brought in one of the provincial superior courts. The provincial superior courts have concurrent jurisdiction to hear patent infringement actions but they do not have jurisdiction to make in rem findings in respect of the validity of a patent.

A third party’s rights to challenge a patent before it issues are limited. They may submit a “protest” to the Examiner challenging the patentability of one or more claims. The Examiner will consider the prior art and arguments submitted but will not respond. The protester has no substantive or procedural rights and is not able to participate further in the examination process except by filing another protest.

After a patent has issued, a third party may challenge the patent by:

  • requesting re-examination;
  • commencing an impeachment action; and/or
  • seeking a declaration of non-infringement.

A third party may request re-examination of any claim(s) in a patent by filing prior art (patents, applications and printed publications) and providing written submissions explaining how the prior art impacts the patentability of the claim(s). If the re-examination board determines that a substantial new issue of patentability has been raised, the patentee may have to amend or even cancel the claim(s). The party initiating the re-examination is not involved in the re-examination and has no right of appeal. Re-examinations can take place concurrently with litigation.

The Federal Court has exclusive jurisdiction to declare a patent invalid in an impeachment action under Section 60 of the Patent Act at the instance of any interested person. Validity can also be challenged as a defence to a patent infringement action.

The Federal Court is also empowered to grant declaratory relief, and it will hear an action for a declaration of non-infringement brought against a patentee.

Provincial superior courts and the Federal Court of Canada have concurrent jurisdiction over patent infringement actions. Litigants generally prefer the Federal Court for the following reasons:

  • it can issue Canada-wide injunctions and monetary remedies;
  • it has a dedicated chambers of judges with expertise in patent cases;
  • it has a comprehensive case management process that increases efficiency – it is not unusual to have a patent case get to trial in two years;
  • it has in rem jurisdiction over patents and so can provide final judgments as to the validity and infringement of any Canadian patent; and
  • the successful party in Federal Court litigation can reasonably expect to receive a costs award of 25–50% of its actual legal fees plus all reasonable disbursements.

A Federal Court decision can be appealed to the Federal Court of Appeal as of right. Decisions of the Federal Court of Appeal may be further appealed to the Supreme Court of Canada with leave (however, that leave is very rarely granted, particularly in patent cases).

The Federal Court offers dispute resolution services in patent cases. The parties to a patent dispute can also voluntarily submit their dispute to any one of a number of well-regarded mediators and arbitrators.

A patent infringement action can be brought any time after the patent has issued. The patentee does not have to send a demand letter or otherwise give notice before commencing the action. Canada has recently introduced a statutory requirement requiring a patentee who does send a written demand to comply with “prescribed requirements” but no requirements have yet been prescribed. A patentee who elects to send threatening letters alleging infringement must be careful – making false statements that tend to discredit the business, goods or services of a competitor are actionable if they result in damages.

There is no requirement that mediation or any other kind of formal or informal dispute resolution be attempted before commencing an action in respect of a patent.

To impeach a patent, the challenger must be an interested person. A competitor dealing in a potentially infringing product would qualify. The party seeking to impeach a patent must also post security for costs with the Federal Court.

Foreign patentees with no Canadian presence may also have to post security for costs if the defendant requests it.

Patentees should be represented by a patent agent in their dealings with the Patent Office. A patentee is not required to be represented by a lawyer before litigation is commenced.

Once litigation is commenced, the general rule is that individuals have a right to represent themselves but that corporate parties (including partnership and unincorporated associations) need to be represented by lawyer unless they get leave from the Court to have an individual who is not a lawyer represent the corporation. As patent litigation is complex, most parties to a patent action in Canada will be represented by a lawyer who specialises in patent litigation. It is very rare for a patentee to represent themselves in litigation in Canada.

Interim and interlocutory injunctions are theoretically available in patent infringement actions where the patentee can meet the standard Canadian tripartite test for an interlocutory injunction, namely:

  • there is a serious question to be tried;
  • it will suffer irreparable harm if the relief is not granted; and
  • the balance of convenience lies in its favour.

The Court has characterised patent rights as being economic in nature and therefore necessarily compensable in damages. Accordingly, it is extremely difficult (though not impossible) for a patentee to show irreparable harm to satisfy the second element of the test for an interlocutory injunction. However, since interlocutory injunctions are flexible, discretionary and equitable remedies, an interlocutory injunction may be available in the right circumstance. In general, absent exceptional circumstances, a patentee in Canada should not expect an interim injunction to be an available remedy.

The successful party in Canadian patent litigation is usually awarded costs. While costs awards are discretionary, the Federal Court is increasingly awarding costs in patent infringement actions on a lump sum basis calculated based on 25–50% of the successful party’s actual legal fees plus all of its reasonable disbursements (including amounts paid for expert fees).

A defendant can require a foreign patentee or one who is impecunious to post security for costs. The Court will typically order that monies posted as security for costs be paid into Court in stages and only released at the conclusion of the action.

While patent infringement is an ongoing tort, damages can only be claimed back six years before the commencement of an infringement action or the date the patent was issued, whichever is later.

The patentee’s damages are the presumptive remedy for patent infringement although an accounting of the defendant’s profits earned from its infringement is an equitable alternate remedy that is often available.

A patentee is normally entitled to a permanent injunction prohibiting future infringement, until the expiry of the patent. However, the Court will consider the public interest and may decide not to grant an injunction in rare circumstances, such as when, for example, doing so would prevent access to a patented medicine.

There are mechanisms to obtain and preserve evidence prior to or at the commencement of an action.

After a patent infringement action is commenced, both sides must produce all relevant non-privileged documents and put forward a knowledgeable representative to be examined on behalf of the party. Discovery is designed to be proportionate and there are presumptive limits on the length of the examinations for discovery. Discovery obligations are ongoing and there is a duty to correct answers given on discovery. The discovery of an adverse party can be read into evidence at trial and used to impeach the deponent’s credibility.

Inventors and third parties are also subject to discovery but their discovery evidence cannot be introduced at trial absent exceptional circumstances. They must be called as witnesses and testify at trial.

The pleadings frame the action. An action is commenced by having the Court issue a statement of claim. The claim must set out the legal relief sought and all of the material facts supporting those claims. The plaintiff is not required to plead, or adduce, the evidence it has in support of its claims at the pleadings stage.

The statement of claim must identify the plaintiff(s) (ie, the patentee and anyone claiming under the patentee, such as a licensee). The claim must also explain how the defendant(s) infringe the plaintiff’s rights by identifying what it is the defendant has done to infringe each asserted claim.

The defendant typically defends the action by filing a statement of defence and counterclaim in which it denies infringement and asserts that the patent is invalid.

Pleadings can be amended during the course of the action. The general rule is that as long as the proposed amendments have a reasonable prospect of success, they will be allowed at any stage of an action for the purpose of determining the real questions in controversy between the parties, provided that the amendment would not result in an injustice to the other party not capable of being compensated by an award of costs and that it would serve the interests of justice.

The Federal Courts Rules provide a conjunctive test for class proceedings and require the plaintiff to show:

  • the pleadings disclose a reasonable cause of action;
  • there is an identifiable class of two or more persons;
  • the claims of the class members raise common questions of law or fact, whether or not those common questions predominate over questions affecting only individual members;
  • a class proceeding is the preferable procedure for the just and efficient resolution of the common questions of law or fact; and
  • there is an appropriate representative plaintiff.

Canadian courts have also allowed “reverse class actions” where a patentee brings an action against a category of defendants such as persons who manufactured, distributed or sold certain allegedly infringing products.

An industry association was found to have standing to bring a patent impeachment action against a non-practising entity (NPE) after the NPE began asserting patent infringement claims against a number of the association’s members. In that case, none of the members were prepared to bear the costs of challenging the patents on their own.

The Patent Act allows the Attorney General for Canada or any interested person, three years after a patent has been granted, to apply to the Commissioner of Patents to remedy abuse of patent rights. Abuse includes instances where the patentee has failed to meet demand for the patented article in Canada to an adequate extent and on reasonable terms. The Commissioner can rectify the abuse by granting a licence to work the patent on reasonable terms.

Patent rights are also subject to competition laws. The Competition Bureau may review conduct involving patent rights in circumstances where the conduct involves something more than the mere exercise of the patent rights. More rarely, it may also review conduct involving the mere exercise of a patent right.

The Canadian Patent Act provides that an infringer is liable to the patentee and to all persons claiming under the patentee for the infringement. Thus, either a patentee or a person claiming under the patentee may start an action for infringement. Where the patentee does not start the infringement action, the patentee must be made a party to the action. Persons claiming under the patentee generally include exclusive and non-exclusive licensees of the patent and non-licensees whose business is harmed by the infringement.

Canadian law recognises both direct and indirect patent infringement. Direct infringement is any act that interferes with the full enjoyment of the monopoly granted to the patentee. This includes making, using and selling the patented invention. Indirect infringement occurs where someone influences another person to directly infringe a patent.

The remedies available for direct or indirect infringement are the same and are discussed in 6. Remedies.

Contributory infringement is not recognised as a cause of action in Canada, but some recent case law has discussed the potential for developing the law on infringement by common design or acting in concert.

When a process is patented in Canada, infringement occurs when a final product made using the patented process is imported into Canada, even if the process takes place elsewhere.

Canadian courts apply a purposive construction of a patent’s claim to determine the scope of protection available. The same purposive claim construction is used for both validity and infringement. In the context of analysing infringement, courts will identify the essential and non-essential elements of a claim and compare these elements to the allegedly infringing product to assess whether the claim has been infringed. Canadian courts do not apply the doctrine of equivalents.

Historically, file wrapper estoppel was not recognised in Canada. The Patent Act was amended recently to allow courts to consider communications between the Patent Office and the patentee during prosecution when construing patent claims. The use of such communications is limited to rebutting any representations made by the patentee in a proceeding regarding the construction of a claim.

Apart from demonstrating that a claim is invalid, the Canadian Patent Act provides several defences to infringement, including for experimental use and prior use of a patented invention. Laches, acquiescence and exhaustion may be available as defences under certain circumstances. Fair, reasonable and non-discriminatory licensing (FRAND) is generally not available as a defence and compulsory licensing may be available in rare circumstances such as for public health emergencies.

While Federal Court patent cases are heard and decided by a single judge, the trial judge is almost invariably assisted by expert evidence. Experts therefore play an extremely important role in patent infringement and invalidity proceedings. Experts provide opinion and/or fact evidence on various issues, including the identity and common general knowledge of the person of ordinary skill in the art, how the claims would be understood by such a person, whether an allegedly infringing product falls within the scope of the claims, and various validity issues. Experts prepare written reports that are submitted to the court, are examined at trial, but are not examined prior to trial. While parties select and retain their own experts, experts have an overriding duty to assist the court objectively and impartially.

Claim construction is usually done by the trial judge at trial with the assistance of expert evidence.  Canadian procedure generally does not include a pre-trial mechanism for claim construction like a Markman hearing but pre-trial claim construction may be available in exceptional cases.

While it is possible for the court to have amicus curiae to assist at the court’s request, it is very rare in patent cases.

The Federal Court has exclusive jurisdiction to declare that a patent is invalid or void. An “interested person” can bring an action to challenge the validity of a patent. Standing to qualify as an “interested person” has been interpreted generously and is not limited to actual or potential infringers.

A defendant to a patent infringement action can raise validity as a defence and, additionally, counterclaim for a declaration of invalidity.

While provincial superior courts can hear patent infringement actions, they cannot declare a patent invalid except as between the parties. Invalidity attacks include:

  • anticipation (lack of novelty);
  • obviousness (lack of inventiveness);
  • inutility (either lack of demonstrated utility or a sound prediction of utility);
  • insufficient disclosure;
  • overbreadth;
  • ambiguity;
  • unpatentable subject-matter;
  • material misrepresentation; and
  • double patenting.

In addition to a legal action, patents can also be challenged through re-examination proceedings at the Patent Office. Re-examination proceedings are rarely brought and are limited to considering anticipation and obviousness based on prior written disclosures.

Patent validity is assessed on a claim-by-claim basis and the finding that one or more claims are invalid does not necessarily affect the validity of the remaining claims.

While most validity attacks need to be considered on a claim-by-claim basis, challenges to the sufficiency of the disclosure or material misrepresentation can apply across all claims.

Patent claims cannot be amended by the Federal Court and it is not possible to amend claims (or propose an amended set of claims) during a patent action to respond to arguments regarding the validity of certain claims (or for any other reason). Only the Patent Office can amend or remove patent claims and the circumstances in which it can do so after a patent has been granted are limited.

A patentee can apply to re-issue a patent to correct defects in the sufficiency of the description and specification, or the claims that arose from inadvertence, accident or mistake, and without any fraudulent or deceptive intent. The patentee must apply to re-issue the patent within four years from its date of grant. The Patent Office, if satisfied, will issue a new patent, in accordance with an amended description and specification made by the patentee for the unexpired term of the original patent. Re-issue is available even where an impeachment action is pending.

A patentee may also file a disclaimer of one or more claims. The patentee must show that through mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has made the specification too broad and claimed more than what was invented.

When a third party initiates a re-examination, the Patent Office can re-open prosecution and the patentee may have the opportunity to amend the patent’s claims so as to avoid invalidity based on the cited prior art.

The court almost invariably is asked to decide validity and infringement together because validity is raised as a defence and/or a counterclaim. While a counterclaim is technically a separate action, there are very few cases where the counterclaim is not heard together with the claim.

Litigants can use summary judgment to dispose of clear cases of non-infringement or invalidity.

Re-examination and litigation can run concurrently but the Federal Court has the power to stay re-examination proceedings where it is in the interests of justice to do so. The re-examination procedure is unequivocally less comprehensive as compared to an infringement/invalidity action and therefore re-examinations are frequently stayed in favour of the more comprehensive Court process.

Actions for patent infringement can be brought in the superior court of any province, or in the Federal Court. If brought in a provincial superior court, the action will be treated the same as other civil actions; there are no special procedural provisions for intellectual property cases. In the Federal Court, any party can seek case management of a patent action and there are special guidelines for complex proceedings, which can be applied to patent actions.

The Federal Court seeks to have most patent actions heard within approximately two years. This is generally accomplished by way of case management and court-ordered timetables in line with the guidelines for complex proceedings, to ensure that the required steps take place in a timely manner. The time from commencement of an action to trial in the provincial superior courts varies widely but is generally longer (often much longer) than in the Federal Court.

The trial of a patent action is conducted as a single hearing. Fact and expert witnesses are typically called to testify in-person at the trial before the trial judge. The party that calls the witness generally conducts an in-court examination in chief, followed by cross-examination of each witness by the opposing party. Sometimes, the evidence of a fact or expert witness can be given in writing, by affidavit or report, but in-court, in-person cross-examination is always available to the opposing party.

During the period between the commencement of the action and trial, there are a series of procedural steps, including the exchange of pleadings, documentary discovery, and oral discovery where a single representative of each party and any inventors may be examined by the opposing party. In the time leading up to trial, brief summaries (or “will-says”) of fact witnesses are typically exchanged, as well as expert reports detailing the evidence that the experts are expected to give at trial on the issues in the action.

Remedies are sometimes determined at the same time as issue of validity and infringement, and sometimes later (in what is called a bifurcated action). Whether an action will be bifurcated depends on the circumstances (including whether the parties request it).

In the Federal Court, all patent actions are decided by a single judge. In the provincial superior courts, the procedures differ somewhat, but it would be exceptional for any patent action in Canada to be decided by a jury; they are almost exclusively decided by a single judge of the court in which the action is brought.

The Federal Court has a group of judges who have volunteered to hear patent actions and have developed an interest and expertise in such actions. Patent actions are generally heard by a judge from that group (though those judges do not necessarily have any technical background). In the provincial superior courts, there are no specialised intellectual property judges.

Regardless of the court in which the action is brought, in Canada, the parties have no input into or involvement in the selection of the trial judge assigned to the case.

In any Canadian court, the parties can settle the case before the final hearing, by way of agreement or voluntary out-of-court mediation. In the Federal Court, a party can request a dispute resolution conference before a member of the Court, who will act as the mediator. The role of the judge or associate judge at a dispute resolution conference is to act as a mediator and try to assist the parties in settling the entire case or at least narrowing the issues. They do not have the authority to decide the case or any issue in the case, or force any party to settle. There are similar procedures in some provincial superior courts, but settlement is always voluntary. The court cannot force the parties to settle.

Parallel Canadian patent proceedings are rare. For example, there is nothing like the US inter partes review process in Canada. If one or more parties to a patent infringement action bring proceedings in more than one court (eg, one party brings an action in the Federal Court and another in a provincial superior court), then one of the proceedings may be stayed pending the outcome of the other, depending on whether it is in the interests of justice to do so. It is possible to request re-examination of a patent that is the subject of an infringement or impeachment proceeding. When this occurs, the action is generally not stayed pending the re-examination.

Several remedies are available to a successful patentee. They may seek the damages they suffered due to the infringement. Alternatively, and at the judge’s discretion, a patentee may elect the profits that the defendant earned due to the infringement. In either case, recovery can be made as far back as six years prior to the commencement of the infringement action. If the effect of the infringement will continue to affect the patentee after the date of judgment, damages may be available for future losses as well.

Once issued, the patentee can also claim reasonable compensation for infringement that occurred between the date the patent was published and the date it issued.

In certain cases, for example where the patentee is not selling a product of its own that is covered by the claims of the patent (a “non-practising entity”), the measure of damages may be a reasonable royalty.

For the period between when the patent application was made public and when it issued, a patentee may recover reasonable compensation for any infringing acts. Reasonable compensation usually takes the form of a reasonable royalty.

Punitive damages, while rare in patent cases, are available in cases where there is egregious or high-handed conduct, or a callous disregard for the patentee’s rights. Wilful infringement is not sufficient to establish punitive damages on its own.

Other available remedies for successful patentees include a permanent injunction, delivery up or destruction, and pre and post judgment interest.

A successful patentee usually also recovers a portion of their legal fees and all reasonable disbursements. While discretionary, the court may assess legal fees according to a tariff or award a lump sum that is generally in the range of 25–50% of the actual fees.

In general, the judge has wide discretion to fashion a remedy that will properly fit the circumstances of each case. The remedies are set out in a judgment of the court, which is enforceable across Canada. A Canadian Federal Court judgment can also be enforced under the local rules in other jurisdictions if, for example, the infringer has insufficient assets in Canada to satisfy the award of damages and costs.

If an infringer violates the non-monetary terms of the judgment, for example by continuing to sell despite an injunction, then contempt proceedings may be brought to force the defendant to comply.

A prevailing defendant may recover a portion of their legal fees and all reasonable disbursements. The defendant’s legal fees are usually assessed according to a tariff or are awarded as a lump sum that is generally in the range of 25–50% of the actual fees. If an interlocutory injunction was awarded against a defendant who ultimately prevails, they may be able to recover damages attributable to the injunction. In cases where a counterclaim for a declaration of invalidity is brought, a judgment invalidating the patent will also be available, rendering the patent unenforceable.

In general, a person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee by reason of the infringement. The available remedies are discussed in 6.1 Remedies for the Patentee, but generally fall into three categories: compensatory (ie, damages or profits), preventative (ie, injunction) and declarative (ie, a declaration of infringement and/or validity).

If a patent is found valid and infringed at trial, a permanent injunction will almost always be granted, unless there is a public policy reason not to (eg, doing so would deprive the public of a medicine that they could not otherwise access). A permanent injunction is enforceable pending appeal; however, the appellant can bring a motion seeking to have the injunction stayed pending the appeal. The test to obtain a stay pending appeal is difficult, rarely sought and even more rarely granted. It requires the moving party to establish that its appeal raises a genuine issue, that the appellant will suffer irreparable harm if no stay is granted, and that the balance of convenience favours granting a stay. The second and third factors of this test are extremely difficult for an infringer to establish.

Each Canadian court has rules for appeals to the appellate court for that jurisdiction. Appeals for intellectual property cases are treated the same as any other civil appeal. They take place before a panel of three judges of the Federal Court of Appeal, or a panel of three judges of the provincial Court of Appeal for the provincial superior court in which the trial took place.

After the appeal decision is rendered by the applicable Court of Appeal, the unsuccessful party has the right to seek leave to appeal further to the Supreme Court of Canada. Leave applications to the Supreme Court of Canada are very rarely granted in intellectual property cases.

Appeals are not a full review of the facts of the case or a de novo review of the evidence presented at trial. Appeals are primarily directed to a review of the decision of the trial judge for any legal errors, though serious errors of fact are also reviewable. Significant deference is given to the trial judge on questions of fact and the evaluation of the evidence at trial, while purely legal questions are subject to a less deferential correctness standard. The hearing of an appeal is much shorter than a trial. The duration of the appeal is set by the court and is usually one day or less.

Parties are not required to take any specific steps before starting an action for patent infringement. However, it is common for parties to send a demand letter and to analyse the potential patent infringement to ensure there is a basis for proceeding to litigation.

There are modest fixed fees for commencing a proceeding. The Federal Court of Canada charges CAD150 for issuing a statement of claim and CAD50 for commencing a claim under simplified procedure (in cases where the monetary relief sought does not exceed CAD100,000).

While an award of legal fees is discretionary, Canadian courts almost always award the successful party a portion of their legal fees and all reasonable disbursements. When awarded, legal fees are assessed according to the court’s tariff, or as a lump sum that is typically 25–50% of the actual fees incurred. Courts generally consider various factors when assessing costs, including:

  • the amounts claimed and recovered;
  • the complexity of the action;
  • the work required;
  • the parties’ conduct;
  • settlement offers; and
  • any public interest in the outcome of the action.

Most Canadian patent actions are resolved prior to trial. The Federal Court, in which most patent cases are commenced, has a dispute resolution process to help facilitate resolutions prior to trial. Any proceeding, or any issue in a proceeding, can be referred to a dispute resolution conference. These conferences are conducted by a case management judge or an associate judge, who may:

  • conduct a mediation, to assist the parties by meeting with them together or separately to encourage and facilitate discussion between them in an attempt to reach a mutually acceptable resolution of the dispute;
  • conduct an early neutral evaluation of a proceeding, to evaluate the relative strengths and weaknesses of the positions advanced by the parties and render a non-binding opinion as to the probable outcome of the proceeding; or
  • conduct a mini-trial, presiding over presentation by counsel for the parties of their best case and rendering a non-binding opinion as to the probable outcome of the proceeding.

Discussions and documents prepared for dispute resolution conferences are confidential. The case management judge or associate judge who presides over the dispute resolution conference shall not preside over the trial unless all parties consent.

Parties to a patent action may also resolve their disputes through negotiation or a formal mediation. Mediations are usually conducted before a senior intellectual property practitioner or retired judge.

There are no compulsory requirements or restrictions for the assignment of patent rights and assignment can take place at any time. It is best practice to ensure that any assignment is in writing, clearly identifies the patent or patents being assigned, and is signed by the parties to the assignment. An assignment can be registered with the Patent Office, but this is optional.

As noted in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights, there are no prescribed requirements for assignment. However, it is best practice to assign (transfer) the rights in writing, with signatures from both parties. Parties should identify who is involved in the transfer, pertinent patent registration information, the rights being assigned, and any payment or consideration received for the transfer. It is also good practice to have a witness present to sign the transfer document as well.

There are no formal requirements for licensing patent rights. As set out in 10.2 Procedure for Assigning an Intellectual Property Right, it is best practice to license the rights in writing and in the presence of a witness. From a practical perspective, it is best to be specific regarding the terms of the licence, including whether the licensee will be responsible for seeking remedies for any infringement. As with assignment, there is no requirement to register a licence with the Patent Office.

The Patent Act gives rights to claim infringement to the patentee and “persons claiming under the patentee”, which commonly includes licensees. It is not required to have a written licence to fall within this definition. However, having a licence in writing, where the terms are clearly set out, is beneficial to ensure that the rights of both the licensor and licensee are clearly defined and can be effectively enforced.

See 10.3 Requirements or Restrictions to License an Intellectual Property Right.

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Cassels Brock & Blackwell LLP is one of the largest and highest profile among Canadian full-service law firms. Its intellectual property group has more than 35 dedicated professionals, and from offices in Toronto, Vancouver and Calgary the team advises domestic and international clients in a wide range of industries on the protection, management and enforcement of all types of intellectual property. Cassels has significant bench strength in all areas of intellectual property: patents and trade secrets, trade marks, and copyright and design. Focusing on patents, the firm’s experienced patent litigators have been directly involved in many precedent-setting patent cases in Canada that have helped shape both substantive patent law as well as patent litigation procedure. The team’s strategic approach has resulted in notable and repeated success at trial and on appeal.

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