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A patent is a legal right to prevent others from making, using or selling your invention for up to 20 years in the country or region where your patent is granted. You can patent products, processes, machines, chemical compositions and improvements or new uses of any of these. Patents can be very valuable.
- Patents
Maintain your patent application or granted patent How to...
- Patents
- Strategy
- Pre-Trial
- At Trial
- Damages and Remedies
- Timescale and Costs
- Appeal
- Options Away from Court
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?
Patent owners' rights are generally enforced through proceedings before the Federal Court. While the provincial courts have concurrent jurisdiction to enforce IP rights, the Federal Court's countrywide jurisdiction allows it to grant an injunction throughout Canada in a single proceeding. Over 95% of IP cases are brought in the Federal Court. Successful plaintiffs are generally entitled to damages, permanent injunctions and some of their legal expenses. While Canadian courts may grant interlo...
What scope is there for forum selection?
For cases involving infringement, the claimant may choose to bring an action in either a provincial court of the province in which the alleged infringement occurred or the Federal Court (Section 54 of the Patent Act). The Federal Court is often preferred over provincial courts because of its countrywide jurisdiction. In addition, Federal Court judges are generally more experienced in IP litigation (Vaver at 608). Actions involving the amendment or invalidation of a patent must be brought in t...
What are the stages in the litigation process leading up to a full trial?
In general, patent litigation is commenced with an exchange of pleadings. The party initiating the action files a statement of claim on the opposing party. In response, the opposing party files a statement of defence and may also elect to file a counterclaim concurrently (Article VII Pretrial motions, discovery and Examinations). All pleadings must contain a statement of material facts on which the party's claim or defence rests (Federal Court Rules, SOR/98-106, Section 174; Rules of Civil Pr...
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?
Case management strategies at both the provincial courts (Federal Court Rules, Sections 77.01-77.09) and the Federal Court (Federal Court Rules, Section 38) make it difficult for a party to delay proceedings unduly without just cause (Michael Crichton and Kiernan A Murphy, "Federal Court Introduces New Measures to Streamline IP Litigation"). The case management judge can set a fixed completion time for any step in the pre-trail proceedings (Federal Court Rules, Section 385(1); Rules of Civil...
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?
In infringement proceedings, it is common for a defendant to challenge the validity of the patent at issue. If a defendant pursues this avenue of defence, it may plead any matter under the Patent Act or any law capable of rendering the patent void or unenforceable (Section 59 of the Patent Act). Possible attacks on a patent's validity include: 1. lack of novelty; 2. insufficient disclosure; 3. double-patenting; and 4. obviousness. In accordance with Section 42(3) of the Patent Act, all grante...
What level of expertise can a patent owner expect from the courts?
The Federal Court has in-depth knowledge of the substantive and procedural aspects of patent litigation. It has exclusive jurisdiction to hear cases regarding conflicting patent applications and the impeachment of a patent. Several judges appointed to the bench are designated experts in this area of law.
Are cases decided by one judge, a panel of judges or a jury?
Trials are decided by a single judge of the Federal Court. Juries were once used to determine issues of fact, but this practice has been suspended.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
The Federal Court does not hold jury trials in patent cases.
Can the successful party obtain costs from the losing party?
The Federal Court has full discretion to assess and award costs (Federal Court Rules, Section 400). Given the long duration and high cost of patent litigation, the successful party is often awarded costs from the losing party. Allocating costs can be less straightforward where success is partially divided. In this case, the court may: 1. reduce the amount awarded to the most successful party; 2. award one or both parties a portion of their costs; or 3. choose not to award costs to either part...
What are the typical remedies granted to a successful plaintiff?
In Canada, a patentee may choose between damages or an account of profits. Damages are intended to compensate a patentee for losses incurred due to infringement, while an account of profits aims to disgorge the profits earned by an infringing party by using the patent without permission (Jay-Lor International Inc v Penta Farm Systems Ltd 2007 FC 358 at Paragraph 114). An account of profits is an equitable remedy that entails a lengthy and complicated calculation process. This remedy is less c...
How are damages awards calculated? Are punitive damages available?
Damages for infringement are measured by what the patentee lost as a result of the infringement. In many cases, it can be difficult to calculate damages with absolute certainty. If a patent holder's usual course of business is to grant licenses, the measure of damages is the loss of royalties that would have been made on licensed sales or manufactures (Colonial Fastener Co Ltd v Lighting Fastener Co Ltd (1936), [1937] SCR 36). If not, the measure of damages is the actual loss suffered by the...
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
It takes an average of two to four years to proceed to trial after commencing an action. The length of the process will depend on the complexity of the issues in question. Through case management, the Federal Court has attempted to expedite the trial process, with the goal of completing most actions within three years of commencement. The parties may attempt to expedite the process through summary judgment, summary trial or simplified actions in cases where the issues are less complex. In som...
How much should a litigant plan to pay to take a case through to a first-instance decision?
The cost of bringing a case through to a first-instance decision will depend on the issues in question, the complexity of those issues and the amount of expert evidence required. While costs may be awarded at the end of the trial, such awards rarely cover the entire cost of the proceeding. Parties may be able to reduce costs by expediting the process or by engaging in alternative dispute resolution.
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?
Parties can appeal to the Federal Court of Appeal. A notice of appeal must be filed in the Registry of the Federal Court of Appeal within 30 days of the pronouncement of the decision (Federal Courts Act, RSC 1985, c F-7, Section 27(2)). Parties must seek leave for the right to appeal to the Supreme Court. The length of the appeal process will depend on the complexity of the issues under appeal.
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?
Parties may choose to pursue mediation or arbitration as an alternative to litigation before the court. If an action is brought before the Federal Court, the parties' solicitors must discuss the possibility of referring any unsettled issues to a dispute resolution conference within 60 days of the close of pleadings (Federal Court Rules, Section 257) and at the pre-trial conference (Federal Court Rules, Section 263(a)). The parties may request to stay the proceedings for up to six months while...
Jun 25, 2019 · Yes. Marking correspondence "without prejudice save as to costs" (WPSATC) means that if the dispute is not resolved and judgment is finally given, then the document can be referred to when costs entitlements are being considered by the court. A WPSATC offer is also known as a Calderbank offer. What this means in practical terms is that ...
Sep 20, 2017 · Footnote 42 Importantly, given the conceptual reasoning that invalidly granted patents stand to prejudice the overriding public interest, a principle centrally established in the patent system, this article examines the extent to which states can implement legislative instruments on patent opposition to mitigate the potential consequences of granting questionable patents. Therefore, drawing on ...
- Thaddeus Manu
- t.manu@qmul.ac.uk
- 2017
invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application. You can use your patent to make a profit by selling it, licensing it or using it as an asset to negoti-ate funding. In exchange, you are expected to provide a full description of the invention so that all Canadians
Aug 22, 2023 · Under paragraph 28.2(1)(d) of the Patent Act, the claim date of other patent applications is also relevant when considering which co-pending Canadian patent applications can be considered in an anticipation inquiry. In addition, even where the Canadian filing date of the co-pending application is later than both the filing date and the claim date of the application in question, the co-pending ...
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Apr 25, 2023 · The Supreme Court of Canada has clarified that the evidence must always be clear, convincing and cogent to satisfy the balance of probabilities test. An issued patent is presumptively valid, so a ...
