American companies are frequently involved in intellectual
property (IP) disputes in Canada. While litigation procedures in
Canadian courts are substantially similar to those in theUnited
States, there are noteworthy differences.
IP litigation proceeds to trial before a judge. Most IP
litigation takes place in the Federal Court, where juries are
prohibited. Juries in Superior Courts cannot grant an injunction,
effectively eliminating a jury trial in any IP case.
A party must make available one informed representative for
examination for discovery (similar to a 30(b)(6) witness). No other
employees or former employees may be examined as of right.
Inventors and other assignors of IP rights are subject to be
examined. However, their evidence may not be read in as part of the
examiner's case at trial.
The Federal Court has recently adopted the practice of some
Australian courts of allowing for panels of experts, who are
addressing the same issue, to be sworn and present evidence at the
same time (colloquially known as "hot tubbing"). The
experts would present their views and may be directed to comment on
the views of other panel members. There is no pre-trial examination
of expert witnesses.
A litigant's right to privacy
Information disclosed by an adverse party under compulsion of a
court order or procedural rule is protected from disclosure to
non-parties. Parties are protected against use of such information
for any purpose beyond the litigation proceedings in which the
information was compelled, unless and until the information is
disclosed in open court. Parties to Canadian litigation are implied
to have given an undertaking(hence "the implied undertaking
rule") that they will not disclose or use information obtained
in the discovery process of the adverse party for any reason other
than the litigation in which the information was disclosed.
Extraordinary remedies –Anton Piller orders
Taking its name from a 1976 English Court of Appeal decision, an
Anton Piller order is essentially a private search
warrant. These orders are difficult to obtain, and require evidence
of i) a strong case; ii) serious harm; and iii) clear and
convincing evidence that the defendant is likely to destroy
evidence if notified of the proceedings. Anton Piller
orders can authorize the search of businesses, computers, private
homes and automobiles to locate and preserve relevant evidence.
At present, the legislation prohibiting the abuse of
intellectual property rights to unduly prevent or lessen
competition is rarely successfully invoked to challenge the
validity or enforceability of a statutory IP monopoly right. While
these statues provide remedies in the event of anti competitive
acts, they have never been successfully invoked to strike down an
IP right or limit the enforceability of that right.
No Markman hearings in patent cases
Construction of patent claims is a matter of law. The court may
receive expert evidence to assist it in its purposive construction
of the claims. However, there are no pre-trial Markman hearings.
Construction of the claims occurs at the main trial.
No file wrapper estoppel in patent cases
What an applicant or its agent says during the prosecution of
the patent cannot be used to construe the claims. The contents of
the prosecution history may nonetheless be admissible for other
reasons. No treble damages in patent cases A successful patentee is
entitled to the damages it can prove were caused by the infringing
acts. The patentee may also request the court to allow it to
recover the infringer's profits derived from the infringement.
There are no provisions for treble damages. While punitive damages
may be awarded, such an award is exceedingly rare even in cases of
demonstrated deliberate and intentional infringement.
Costs of litigation
A successful party is presumed to be entitled to an award of
costs from the other side in accordance with a court tariff. A
successful party usually recovers a small portion of the fees it
has paid its own counsel and reimbursement of the vast majority of
out-of-pocket expenses necessarily or reasonably incurred in the
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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