In Canada, inventions that are a new and useful art, process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, can be protected under the Patent Act. Having a patent grants the patentee the exclusive right, privilege and liberty of making, constructing, using and selling the invention for a duration of 20 years from the patent’s filing date.

Additionally, protection of a product’s visual features, such as its particular shape, configuration, pattern or ornament, or a combination of such features, can receive protection pursuant to the Industrial Design Act. Registered designs grant the owner an exclusive right to use, make or sell products using the design for a period of time of up to 15 years after the filing date of the application.

Inventions may also be protected as a “trade secret”. To be a trade secret, the information being protected must at minimum have commercial value, be secret in the sense that it is not known to the public, and be subject to reasonable measures to ensure that the information remains secret. Protection for trade secrets exists only through common law, as there is no statute in Canada enshrining protection over this kind of intellectual property.

In Canada, patents are granted by the Commissioner of Patents at the Canadian Intellectual Property Office (CIPO). The process starts by an applicant filing a patent application with CIPO or having an international patent application that has been filed under the Patent Cooperation Treaty enter the national phase in Canada, followed by a request for examination within the prescribed time period. The Patent Act and the Patent Rules set out the requirements for the filing, examination and issuance of patents. The Act and Rules provide that, among other requirements, the application must contain a description of the invention and its operation or use as contemplated by the inventor. It must also explain how to make the invention and, in the case of a machine, describe the inventor’s preferred way (best mode) of making and operating the machine. The patent application must end with a claim or claims that explicitly define the scope of the invention being claimed. It is common for patent claims to be modified or amended by the applicant throughout the examination process, either voluntarily or in response to objections raised by the patent examiner at CIPO. If the patent examiner is satisfied that all requirements for a patent are met, the patent application will be allowed and granted following payment of an issuance fee.

To receive a registered industrial design, an application has to be filed with CIPO. The application must include a representation of the design and the identity of the finished article to which the design is applied. CIPO examiners review the application to ensure that the design is sufficiently disclosed and is novel, and that all formalities are met. If objections are made by the examiner, they must be overcome prior to the granting of registration. Once any objections are overcome, a Notice of Industrial Design Registration will be issued and the design will be registered within the Register of Industrial Designs.

As protection for trade secrets exists only through the common law, there is no application or grant procedure for this type of intellectual property.

A patentee has up to four years from the date of filing its patent application to request that the application be examined. The amount of time it takes from this request for examination to the issuance of the patent varies, but typically the process takes two to three years. As patent drafting and prosecution can be a complex, challenging process, it is recommended that patentees work with a registered patent agent to ensure compliance with the Patent Act and Patent Rules and that the application seeks to properly protect the full scope of their inventions. In 2026, CIPO fees associated with filing, examining and granting a patent with 20 claims or fewer is roughly CAD2,231; fees may be smaller for small entities and for applications that have already been subject to an international search, or may increase for applications with more than 20 claims, or if the patentee wishes to proceed on an expedited track.

With respect to industrial designs, the timeline from filing of an application to registration is typically faster in comparison to the patent process. The basic fee for filing an industrial design application in 2026 is roughly CAD607, although applicants may pay an additional fee of roughly CAD760 to expedite the examination process. Applicants are encouraged to work with an experienced professional to ensure that their industrial designs are registered and robustly protected.

Patentees enjoy patent protection over the invention for a period of 20 years from the date the patent application was filed in Canada. As addressed in 1.6 Further Protection After Lapse of the Maximum Term, this term may be extended in certain circumstances.

An owner of a registered industrial design enjoys protection over the design for a term of ten years from the date the design was registered, or 15 years from the filing date of the application, whichever is longer.

There is no set length of time for how long a trade secret enjoys protection. Instead, the trade secret remains protected so long as the information remains confidential and the business continues to take reasonable measures to ensure confidentiality.

The Patent Act grants the patentee the exclusive right, privilege and liberty of making, constructing, using and selling the invention for the duration of the patent.

In Canada, there is a linkage system that connects drug marketing approval with the resolution of patent disputes through the Patented Medicines (Notice of Compliance) Regulations (“PMNOC Regulations”) enacted pursuant to the Patent Act. Under this system, patents claiming a Health Canada approved drug’s dosage form, formulation or medicinal ingredient, or use of the medicinal ingredient, are entitled to be listed on the Patent Register against the approved drug. If another company seeks marketing approval from Health Canada for a generic or biosimilar version of a drug and intends to market the drug for sale prior to the expiration of a patent on the Register, the generic company must set out in a Notice of Allegation why it believes its drug does not infringe the patent and/or why the patent is invalid. Upon receipt of a Notice of Allegation, the patentee has 45 days to commence an infringement action in respect of the listed patent, triggering an automatic stay of up to 24 months within which the Minister of Health must not issue a Notice of Compliance to the generic drug company pending the litigation.

A registered design grants the owner an exclusive right to use, make or sell products using the design for a period of time of up to 15 years after the filing date of the application.

Enforcement of rights in trade secrets occurs through civil actions. Causes of action are dependent on the facts specific to a given case, but may include breach of confidence, breach of contract, misappropriation of confidential information and breach of fiduciary duty.

In certain circumstances, the patent grant term may be extended beyond 20 years to compensate for the time during the patent prosecution process. The Patent Act provides that applications filed on or after 1 December 2020 may receive an additional grant term for a patent issued five years or more after its filing date or three years or more after the applicant requested examination, provided that the applicant applies for this term extension within three months of the patent being issued. The extension is calculated by subtracting from the five-year or three-year threshold date the number of days the applicant could be considered responsible for the issuance delay (for example, the number of days it took the applicant to respond to CIPO notices or the number of days the application was considered abandoned).

Additionally, the Patent Act offers additional protection through a Certificate of Supplementary Protection for patents in respect of a medicinal ingredient or combination of medicinal ingredients which is contained within a drug approved for sale within Canada, provided it is the first authorisation of the medicinal ingredient or combination of medicinal ingredients. The total time period of additional protection is calculated by subtracting the patent’s filing date from the date the Notice of Compliance was issued for the drug, minus five years (up to a maximum of two years of additional protection).

Third parties have limited rights when it comes to the patent prosecution process. At any time prior to a patent being granted, third parties may file prior art they believe is relevant to the patentability of an invention, which must include an explanation as to the relevance of said art to the application. A third-party protest may also put forth other arguments.

In any case, the third party’s participation is limited to filing the prior art or protest, meaning that the third party is not able to respond to the examiner or the applicant or otherwise participate in the prosecution process.

When a patent application has received a “Final Action” rejecting the application, the patentee can appeal the rejection to the Patent Appeal Board. In the event that the Patent Appeal Board upholds the rejection, the patentee can appeal the decision to the Federal Court in Canada.

Similarly, refusals to register an industrial design can be appealed to the Federal Court in Canada.

To maintain rights over an invention, each year the patentee must pay a maintenance fee ranging from roughly CAD55 to CAD670, depending on the length of time the patent has been issued and whether the patentee is considered to be a small entity. If these fees are not paid by their prescribed date, then an additional late fee will apply, and the Commissioner of Patents will send a notice to the patentee specifying that the patent will be deemed to expire if both fees are not paid before six months after the initial prescribed date or two months after the notice date, whichever is later. However, in the event the fees remain unpaid and the patent is deemed expired, the patentee may still appeal to the Commissioner to reverse the expiration. To do so, the patentee must provide adequate reasons establishing that the failure to pay the maintenance fee occurred despite the patentee’s due care, in that the patentee took all measures that a reasonably prudent patent holder would take to avoid the failure.

Before the fifth anniversary of registration, the owner of an industrial design must also pay a maintenance fee to maintain rights over the design. If the fee is not paid before the fifth anniversary, the owner may still pay up to six months later, provided the owner pays an additional late fee.

Several options are open to a patentee that wishes to amend its patent post-grant. First, there is a 12-month period following the issuance of the patent during which the patentee can correct any obvious mistakes in the patent’s specification or drawings. Claims can also be amended post-grant by requesting a re-examination of the patent against prior art at any time post-grant. Additionally, the patentee may disclaim claims in whole or in part which, through mistake, accident or inadvertence and without wilful intent to mislead the public, were included despite being overly broad or not part of what was actually invented by the inventor.

When a patentee becomes aware of an individual or entity believed to be infringing its patent, the typical course of action is to first send a demand letter requesting infringing activities to cease, but this step is not necessary. A patentee and/or those claiming under the patentee may commence a patent infringement action in either the Federal Court or the provincial superior courts in Canada. Parties may also seek to have their dispute settled by mediation or arbitration.

After a patent is granted, a third party may file prior art and request the patent be re-examined against that art. Re-examination is limited to issues arising from this art. Re-examination occurs in two steps: at the preliminary stage, a re-examination board established by the Commissioner of Patents assesses whether the art raises a substantial new question of patentability; if it does, the board will then re-examine the patent.

A third party may seek a declaration that a patent is invalid and thus void through an impeachment action in the Federal Court. A patent may be invalid for a number of reasons, including because the claimed invention is not new, is obvious, lacks utility or is not sufficiently disclosed, or because the patent’s claims are ambiguous or overly broad.

A third party can also bring an action seeking a declaration of non-infringement, such that if it is granted, the patentee would not be able to stop the third party’s activities through enforcement of the patent.

Both the Federal Court and provincial superior courts in Canada have jurisdiction to hear patent infringement actions. That said, typically patent litigation occurs in the Federal Court. This is because the Federal Court has expanded relief powers, including the ability to issue Canada-wide injunctions, as well as the ability to impeach a patent in rem (meaning that the patent is deemed void and unenforceable against all third parties). The Federal Court also has more judges with experience hearing IP and patent proceedings, and generally offers a quicker resolution timeline than the provincial courts.

Parties have the automatic right to appeal decisions from the Federal Court in respect of patent infringement and/or validity to the Federal Court of Appeal. From there, parties must seek leave to further appeal to the Supreme Court of Canada.

In Canada, a number of judges of the Federal Court have expertise in patent cases; however, there is no formally recognised body or organisation dedicated to the resolution of patent disputes.

A patentee can initiate an action for patent infringement at any time after the patent has been granted. For patent impeachment, the sole “prerequisite” for filing an impeachment action is that the party bringing the action must be an “interested person”, as per the Patent Act. In practice, this might be satisfied if the party bringing the action is a competitor to the patentee engaging in the design, manufacture or sale of similar products, has been sued by the patentee for infringement of the patent at issue in the impeachment action, or could be a potential infringer of the patent.

All corporations, partnerships and unincorporated associations must be represented by a lawyer in Federal Court proceedings, although the Court may grant leave in special circumstances for the entity to be represented by an officer, partner or member. While individuals are entitled to represent themselves in the Federal Court, it is highly recommended to obtain qualified legal representation due to the complexity of patent proceedings.

Interim injunctions are available in patent infringement actions but are generally quite difficult to obtain in practice.

The test to obtain an injunction provides that the moving party must establish the following three factors:

• there is a serious issue to be tried;
• irreparable harm will result if the injunction is not issued; and
• the balance of convenience lies with the moving party (in that the moving party would suffer more harm if the injunction is not granted in comparison to the harm suffered by the responding party in the event the injunction is granted).

The irreparable harm prong is difficult to meet because typically the moving party must satisfy the court that its harm if the injunction is not granted would not be adequately remedied through an award of monetary damages if successful following the trial.

While costs awards are discretionary, the Federal Court typically orders the losing party to pay the successful party’s legal fees and disbursements. The Federal Court often awards “lump sum” costs awards, which generally fall within the range of 25% to 50% of the successful party’s actual fees, depending on the circumstances, as well as 100% of reasonable disbursements.

A party challenging a patent’s validity through an impeachment action and/or by seeking a declaration of non-infringement from the Federal Court must provide security to be held at the Court for the potential costs owed to the patentee. If the opponent raises defences of invalidity or non-infringement in response to an allegation of infringement from a patentee, security for costs is not required.

A defendant to an infringement action in the Federal Court can also bring a motion for security for costs from the plaintiff. This is available if, for example, a plaintiff is a foreign entity or does not have sufficient assets within Canada to satisfy a potential costs judgment against it. Security for costs may be paid in instalments, as costs are incurred.

While there is no specific limitation on the act of infringement other than the term of the patent, the Patent Act does limit the availability of a remedy for infringement. Section 55.01 of the Act provides that no remedy may be awarded for infringing acts committed more than six years before the commencement of an action for infringement. Section 55(1) further provides that damages for infringement are limited to damage sustained after the grant of the patent.

A finding that a party has infringed a patent generally results in the granting of a permanent injunction against the infringer, restraining or enjoining the infringer from further use, manufacture or sale of the infringing product/process until the expiry of the patent.

In certain circumstances, a patentee may be able to obtain an interlocutory injunction before the action goes to trial. To do so, the patentee must meet the high burden of proving, among other things, that it would suffer irreparable harm without a preliminary injunction being granted. The Federal Court does not commonly grant interlocutory injunctions in patent actions.

In patent impeachment and/or infringement actions, both documentary and oral discovery is standard. Once an action is commenced, both sides are required to produce all relevant and non-privileged documents within their possession, power or control. Both are also required to select a knowledgeable representative to be examined on behalf of the party. The representative has an obligation to reasonably inform themselves of the relevant issues. The answers provided by the party’s representative are binding on the party and can be admitted as evidence during trial.

Discovery in Canada is meant to be proportionate to the needs of the case and cover only information relevant to unadmitted allegations of fact. Parties have a continuing duty to disclose unproduced relevant information and to correct any errors given during discovery.

Generally, the party opposing the patent is also entitled to examine the named inventors of the patent at issue. Examination of inventors is limited to the inventors’ personal knowledge and does not bind the company. On occasion, non-parties to the action may be examined, with leave of the court. Inventor and non-party evidence is generally not producible at trial, and if available, can be used only to impeach the witness.

Patent infringement and/or impeachment actions are commenced by having a Statement of Claim issued by the court. A Statement of Claim must clearly set out the parties to the action, the claimed relief (eg, monetary damages, injunction) and its legal basis, and contain concise statements of the material facts on which a party relies. For example, the Statement of Claim must explain how the party infringes a patent by identifying the party’s infringing activities. A Statement of Claim does not contain evidence or opinion that the party intends to use in proving its allegation, and a party is not required to adduce evidence at the pleadings stage.

A defendant will typically defend against the claim through a Statement of Defence, which must admit or deny (or plead no knowledge of) all allegations in the Statement of Claim, and outline the key facts and legal basis the party intends to rely on for its defence. A Statement of Defence may also raise affirmative defences not raised in the Statement of Claim and may contain a counterclaim against the patentee (or against a third party), and in the case of patent infringement actions, it commonly contains an assertion that the patent is invalid.

In the Federal Court, pleadings may be amended without leave before another party has pleaded over, or with written consent of the parties. If the adverse party does not consent to an amendment, the party must bring a motion to amend. Generally, if the proposed amendments have a reasonable prospect of success, as determined by the Court, the amendment will be allowed for the purpose of determining the real questions in controversy between the parties and in service of the interest of justice. An amendment may be denied if the effect of the amendment would result in injustice to the adverse party that could not be adequately compensated by costs.

Class actions can be brought in both Federal and provincial courts, and are generally the preferred method of litigating collective claims (as compared to representative actions). In order for a proceeding to be certified as a class action, the party must show:

• the pleadings disclose a cause of action;
• there is an identifiable class of two or more persons who would be represented by the representative plaintiff;
• the claims of the class members raise common issues;
• a class proceeding would be the preferable procedure for resolving the common issues; and
• there is a representative plaintiff.

The standard of proof for certification of a class action is low.

Actions have also proceeded by way of reverse class action, where an individual plaintiff sues a group of defendants that are alleged to have engaged in the same wrongful conduct – for example, where a patentee brings an action against a group of defendants which it alleges have all engaged in an infringing activity, such as the manufacture, distribution or sale of an infringing product.

Assertion of patent rights in Canada is subject to certain limits and exceptions, including abuse of patent rights and anti-competitive activities.

The Patent Act allows the Attorney General of Canada or any interested person, at any time after three years from the grant of the patent, to apply to the Commissioner of Patents alleging that there has been an abuse of the exclusive rights under the patent. Abuses under the Act include:

• the patentee failing to meet public demand;
• the patentee refusing to grant reasonable licences;
• the patentee having unfair or prejudicial licensing conditions; and
• the use of a patented process to unfairly restrict the production or use of unpatented materials required to enact the process.

Upon a finding of abuse, the Commissioner may order the grant of a licence on reasonable terms or order the patent be revoked.

Competition law can also intersect with patent rights. The Competition Bureau may review conduct involving patent rights where the behaviour extends beyond the “mere” exercise of the patent right to exclude others. For example, patent litigation settlement agreements between brand and generic pharmaceutical manufacturers can attract investigation by the Competition Bureau if the settlement delays entry of a generic version of a drug, and particularly if settlement agreements contain payment to delay generic competition.

Pursuant to Section 55(1) of the Patent Act, a person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for any damages sustained as a result of the infringement. As a result, both the patentee and any person claiming under the patentee can begin an infringement action against the infringer. Third parties, such as licensees of the patent, are able to file an action for infringement as a person claiming under the patentee. However, even where the patentee does not start the infringement action, the Act prescribes that they must be made a party to the action.

The governing law in Canada is that infringement is any act that interferes with the patentee’s full enjoyment of its monopoly. As a result, both direct and indirect infringement are recognised as infringement under Canadian law:

• Direct infringement occurs when someone makes, constructs, uses or sells a patented invention without the patentee’s consent, thereby depriving the patentee of the monopoly granted by the patent.
• Indirect or induced infringement occurs when a party (or an “inducer”) actively does something leading another party, the direct infringer, to infringe the patent. Induced infringement requires that the influence was knowingly exercised by the inducer.

For the first time in Canadian law, in 2025 the Federal Court found a party liable for patent infringement based on common design. Infringement by common design occurs where two parties agree on a common action, and in carrying that action out together, they infringe on the rights of the patentee. This is an evolving area of law, and the Court’s decision is currently under appeal.

Both direct and indirect infringement have the same available remedies, discussed in 6. Remedies.

It is an act of infringement to import inventions into Canada that are patented in Canada, even if they are manufactured elsewhere. Similarly, Canadian law has recognised that it can be an act of infringement to import into Canada a product made using a process or method patented in Canada, even when the process or method is performed outside Canada (including when the final product itself is not patented). The party alleging infringement must establish that there is a strong link between the use of the patented process or product, and the product sold in Canada. Key considerations include:

• the importance of the product or process to the final product sold in Canada (ie, that the use is not incidental, non-essential or readily substituted);
• whether the final product actually contains all or part of the patented product or process;
• the stage at which the patented process or product is used (eg, if it is a preliminary step in a lengthy process);
• the number of times the patented process or product is used; and
• the strength of the evidence demonstrating that, if carried out or used in Canada, the product or process would constitute infringement.

The scope of patent protection is governed by the patent claims. In Canada, claim language is interpreted using purposive construction, which identifies the claim elements the patentee intended to be essential and non-essential, as determined from the perspective of a person skilled in the art, and taking into consideration the patent specification. Purposive construction is done on a claim-by-claim basis.

Both infringement and invalidity analyses use the same purposive construction. In infringement actions, the court will compare the essential elements of the claims with the alleged infringing product/process to assess whether that claim has been infringed. The doctrine of equivalents is not applied in Canada.

The Canadian patent prosecution history can be used in limited circumstances in infringement and invalidity actions. The Patent Act specifically allows courts to consider written communications from the patentee to the Patent Office made during prosecution only for the purpose of rebutting a representation made by the patentee in the action about the construction of a claim. Recent decisions from the court suggest that this will not extend to the use of a foreign file history.

In Canada, patent infringement defences generally centre on either demonstrating non-infringement of the patent claims or demonstrating that the claims are invalid.

The Patent Act also provides for certain other statutory defences or exceptions to infringement, including experimental use (ie, the infringing activity was purely for research and was non-commercial) and prior use (ie, allowing a party to continue engaging in an infringing act after the claim date if the party engaged or performed the same “act” in good faith prior to the patent’s claim date). The Act also provides that an act of infringement committed more than six years prior to the commencement of an action for infringement cannot result in any remedy being awarded. Further, the Act provides a mechanism for the Commissioner of Patents to authorise the use of a patented invention by the government (or other authorised parties) in certain circumstances through limited compulsory licences – for example, to ensure access to essential medications.

Laches, acquiescence and patent exhaustion may be raised as possible defences.

While there have been some patent infringement actions relating to fair, reasonable and non-discriminatory (FRAND) licensing and standard essential patents (SEPs), the Federal Court has yet to weigh in on the circumstances in which an injunction may be granted, or for the calculation of FRAND royalties or an accounting of profits for SEP holders.

It is extremely common for patent cases to involve the use of expert evidence to assist the court in determining the issues through both written expert reports and testimony at trial, particularly when a patent is technically or scientifically challenging. Expert opinion evidence commonly covers issues such as identification of the notional person skilled in the art, the scope of common general knowledge in the field at the relevant time, interpretation of claim language as it would be understood by a skilled person, infringement, and validity issues.

Experts are selected by a party. However, all experts are bound by a Code of Conduct for Expert Witnesses set out in the Federal Courts Rules, which requires that experts provide independent, impartial and objective evidence and opinions to the court, and sets out their overriding duty to assist the court.

Claims construction is within the ambit of the trial judge, with the assistance of expert evidence presented through reports and testimony at trial. It is possible for parties to come to an agreement prior to trial as to the construction of claims or certain claim elements.

Generally, there is no separate, formal, preliminary procedure dedicated to the construction of claims, unlike a Markman hearing in the US. However, the court can employ summary procedure mechanisms (ie, summary judgment and summary trial) to determine, among other things, infringement issues, including when they turn on claims construction, in order to resolve the action in its entirety. It is possible that these mechanisms may be used in the future to allow a Markman-style motion solely to construe claims.

Canadian courts have a system for receiving third-party opinions through amicus curiae appointments, or through formal intervenors, often in the appellate context. This allows non-parties to provide relevant information or arguments to the court, particularly in complex cases or in the case of novel or public interest issues. Intervenor submissions are often broader or have a different focus from those of the parties to the action and are more common when the case raises issues of public importance or would affect a specific industry or group.

Courts generally use their discretion to allow third-party opinions sparingly in patent cases.

The Patent Act provides that an “interested person” or the Attorney General can bring an action in the Federal Court to have the patent or its claims declared invalid or void (commonly referred to as an impeachment action). Such an action can also arise through a counterclaim for a declaration of invalidity. The term “interested person” is not defined within the Act but has been broadly interpreted.

The Federal Court has exclusive jurisdiction to declare patents or their claims invalid or void, whereas provincial courts cannot declare a patent invalid except as against the involved parties.

Multiple challenges to the validity of a patent in Canada exist, including:

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

The validity of a patent can also be challenged through requests for re-examination of the patent claims by the Patent Office. See 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property.

Under most grounds of invalidity set out in 4.1 Reasons and Remedies for Revocation/Cancellation, the validity of a patent is assessed on a claim-by-claim basis. Accordingly, a finding by the court that some of the claims of a patent are invalid does not necessarily render the entire patent invalid. When only a subset of claims are found invalid, effect is given to the patent as if it contained only the valid claim(s).

However, certain grounds of invalidity, including insufficiency of disclosure and material misrepresentation, are assessed based on the patent as a whole, and therefore can render the entire patent and each of its claims invalid and void.

Once a patent has been granted by the Patent Office, the availability of amending (or removing) the claims is limited:

• If it is determined that there is an error in the patent which arose due to inadvertence, accident or mistake (ie, without intent to defraud or deceive), the patent can be reissued with the amendments to rectify the error. This includes errors due to insufficiency of the description or specification, or if more or less is claimed than the patentee had right to claim. The original term of the patent continues to apply. The patentee must apply to have its patent reissued within four years of the date of grant.
• If, by inadvertence, accident or mistake (ie, without intent to defraud or mislead the public), a patentee has made the specification too broad or claimed more than that which was invented, the patentee can disclaim the parts of the patent that it does not claim to hold. Once disclaimed, the disclaimer acts to narrow the scope of some or all of the patent claims.
• If a third party challenges a patent through a request for re-examination by the Patent Office, the patentee is entitled to propose any amendment to the patent or propose any new claims in relation to the re-examination proceeding. The proposed amendments or claims cannot enlarge the scope of the claim of the original patent.

Only the Patent Office can amend or remove claims from a patent. The Federal Court does not have the jurisdiction to amend claims, and the patentee cannot amend or propose amendments in response to arguments of invalidity raised in impeachment or infringement actions.

It is common that invalidity of a patent is raised as a defence or counterclaim to an action alleging infringement of a patent, so the court will often assess both invalidity and infringement together. It is possible that impeachment and infringement actions are heard separately – for example, if an “interested person” brings an impeachment action but does not engage in any infringing activities until later in time. Case splitting, or litigating issues such as validity in multiple, separate actions, may be considered an abuse of process. Parties should allege all possible issues and defences of infringement and invalidity at first instance, as failure to raise an argument may preclude the ability to raise that argument at a later time.

Re-examination of a patent can occur simultaneously with an invalidity action in the Federal Court. However, re-examination is significantly less comprehensive, and generally deals with fewer grounds of invalidity than an action in the Federal Court. The Federal Court has the power to stay re-examination proceedings in the interest of justice, and in practice it is common for a re-examination to be stayed in favour of the invalidity action.

In Canada, patent actions can be brought before the Federal Court or the Superior Court of any province or territory. There are special guidelines for complex proceedings in the Federal Court, 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. There are no special guidelines for complex proceedings in the provincial Superior Courts – actions are treated the same as other civil actions. As such, the time from commencement of a patent action to trial in the Superior Courts is generally longer than in the Federal Court.

A patent action may be conducted as a single hearing (where all issues are determined at once) or over the course of multiple hearings in a bifurcated proceeding (where the issues of validity and infringement are decided separately from the damages/remedies portion). Whether an action will be bifurcated depends on the circumstances, including whether the parties request or consent to it.

Fact witnesses and experts are typically heard in person at the trial, usually in conjunction with tendering their evidence in writing, by affidavit or by report. Fact witness and expert reports, including any reply expert reports, are typically exchanged well in advance of trial. In Canada, experts are not examined in advance of trial. At trial, the party that calls the witness generally conducts an examination in chief, which is followed by cross-examination of that witness by the opposing party.

IP cases before the Federal Court are heard and decided by a single judge, and it is rare for an IP case to be decided by a jury in a proceeding in the provincial courts. While the parties are informed which judge is assigned to their case in advance of the hearing, parties are not involved in the selection of the judge.

The Federal Court has a dedicated group of judges and associate judges who have become specialised in hearing intellectual property cases. Judges from this group usually have IP litigation experience and/or a technical background, although this is not always the case. In contrast, IP cases heard before the provincial courts do not benefit from a dedicated group of specialised intellectual property judges.

In Canada, an offer to settle may be made by either party at any time prior to the final hearing; however, where it is made less than seven days before the hearing commences, costs consequences are not applicable. Offers to settle may be made by either party informally through an agreement, or through a formal mechanism such as a voluntary mediation.

The Federal Court also provides dispute resolution services, where a dispute resolution conference is conducted by an associate judge who acts as a third party to assist the parties in reaching a resolution or narrowing down the issues to be heard at the hearing. The judge may conduct a mediation or a mini-trial to help the parties facilitate a discussion among themselves and/or get a sense of the probable outcome should the issue go to trial.

While the Federal Court can order a dispute resolution conference, neither the Federal Court nor the provincial court can force the parties to reach a settlement.

Canadian courts typically do not hear parallel proceedings. If parallel proceedings are engaged (for example, a revocation proceeding and an infringement proceeding are brought simultaneously), the courts may order the proceedings to be consolidated or heard together, or stay one proceeding pending the outcome of the other proceeding in another forum.

A successful patentee in an infringement action may elect between damages for its losses as a result of the infringement or an accounting of the infringers’ profits due to the infringement. Damages may be calculated as compensation to the patentee for actual losses suffered due to the infringement, or as a reasonable royalty that would have been paid to the patentee had the parties negotiated for a licence. Damages begin to accrue from the date of the first infringement. In some cases, damages are also available for future losses following the judgment. Other remedies available to successful patentees include a permanent injunction and delivery up or destruction of the infringing goods. Some remedies are only available for Federal Court proceedings, including declarations of patent invalidity or removal of a patent from the Patent Register.

At both the Federal and provincial levels, a successful patentee also usually recovers the costs of all of its reasonable disbursements and a portion of its legal fees from the losing party (typically 25–50% of actual legal fees), which may be calculated according to a tariff or awarded as a lump sum.

The judge has wide discretion in ordering remedies that best serve the interest of justice. While punitive damages are rarely awarded, the court may award punitive damages in exceptional circumstances.

A judgment issued by the Federal Court is automatically enforceable nationwide, while a judgment issued by a provincial court is not automatically enforceable in any other province or territory. At both the Federal and provincial levels, there are court orders and procedures to recover damages and/or enforce remedies against non-compliant defendants. In certain circumstances, pre- and post- judgment interest may also be ordered.

In both the Federal and provincial courts, the losing party is liable to pay for the successful party’s reasonable disbursements and a portion of its legal fees. In cases where an interlocutory injunction was in place for the duration of the proceeding, such as for generics blocked from entering the market due to a statutory stay in a PMNOC proceeding, a successful defendant may also be compensated for being unjustly prevented from entering the market (also known as “but-for” or “Section 8” damages).

The types of remedies available to successful parties are generally the same for different intellectual property rights, with the exception of special remedies that may be available for parties in a PMNOC proceeding (see 1.5 Rights and Obligations of Owners of Intellectual Property). In any case, the goal of the court is usually to put the successful party into the position it would have been in had the infringement not occurred.

If a patent is found valid and infringed at first instance, the usual practice is for the court to grant a permanent injunction. A permanent injunction is enforceable pending appeal, but it is open to the appellant to bring a motion to stay the injunction pending the outcome of the appeal. Stays of injunctions are rarely granted – the test requires the party seeking a stay to establish irreparable harm, which is a high threshold to meet.

There are no special provisions concerning appellate procedure for intellectual property rights proceedings. Appeals in the Federal and provincial courts are treated similarly. Appeals are typically available following the final decision of a judge at first instance. An appeal is typically heard by a panel of three judges of the Federal Court of Appeal or provincial court of appeal. Appeals of a decision by the Federal Court of Appeal or a provincial court of appeal may be made to the Supreme Court of Canada upon a successful application for Leave to Appeal. The Supreme Court of Canada is the final appellate court.

Across both Federal and provincial appellate proceedings, new evidence is typically not permitted to be introduced on appeal and requires leave to introduce. The appeal is concerned with reviewing the decision at first instance for legal or procedural errors. In some instances, the appellate court may review serious errors of fact. The appellate courts heavily defer to the trier of fact for factual issues compared to purely legal issues. The appellate court may allow the appeal, reverse or change the trial judge’s decision, remand the matter back to the judge at first instance, or order a new hearing before the same or a different judge.

Prior to filing a lawsuit, parties may conduct various pre-litigation diligence and analyses, including an assessment of infringement to ensure there is a basis to sue or of validity to determine the strength of their potential lawsuit. It is also common practice to send warning letters of potential infringement prior to the commencement of an action.

There is typically a modest, fixed court fee associated with commencing a proceeding. For example, the Federal Court charges CAD150 to issue a Statement of Claim or Statement of Defence, while the provincial Ontario Superior Court charges CAD243 to issue a general civil action Statement of Claim.

See 6.1 Remedies for the Patentee and 6.2 Rights of Prevailing Defendants.

Alternative dispute resolution is a faster and more cost-effective way to resolve patent disputes outside of the courts. Canadian courts often encourage the use of negotiation, mediation and arbitration to resolve disputes. The Federal Court also offers its own mediation procedure (see 5.3 Settling the Case). Indeed, most patent disputes are resolved prior to trial.

There are no requirements or restrictions to assigning a patent right. Typically, assignments are conducted in writing and registered with CIPO, although this is not a requirement.

Typically, a written assignment agreement identifies the patent rights being assigned, the parties involved in the transfer of rights, any payment received for the assignment, and any information relevant to registration of the assignment with CIPO. The agreement is then signed by the parties, and often also by a witness to the assignment agreement, and may then be registered with CIPO.

As with assignment of patent rights, there are no requirements or restrictions to licensing patent rights. Typically, licensing agreements are drafted, while registration of the licence with CIPO is optional.

The procedure for licensing a right is the same as an assignment. Typically, a written licensing agreement identifies the terms of the licence, the parties involved, any agreement regarding payment, and any information relevant to registration with CIPO. The agreement is signed by the parties, and often also by a witness, and may be registered with CIPO.