Canada: Canadian/U.S. Cases Diverge on Patent Protection

First it was the metric system—now it’s the patent law. We’re heading on a very different course in Canadian patent law from our cousins south of the border.

Patents protect technology and the way technology works. The monopoly of a patent is defined by the claims of the patent—what should be a checklist of elements or steps. The Patent Act requires you to write "distinctly and in explicit terms" the thing or combination of things that is new. In effect, the Patent Act requires an inventor to claim only what is essential to the invention. The patent owner, subject to objections raised by the Patent Office, is the author of the checklist. He or she writes the claims with as many or as few words as he or she wishes.

In theory, if someone else has what is contained in the checklist, that person is infringing the patent. If you put more in the checklist, more should be needed to infringe. Thus, if you put less in the checklist (while still being inventively different from what everyone else has already done), less should be needed to infringe, or put another way, the broader your patent protection.

Claim Construction

There has been an inherent contradiction in claim construction for some time: are the words of a claim all of equal importance, or can the court rewrite the claim, dropping or modifying elements? If it can consider some elements to be less important and variable, to what extent can the words or actions of the patent owner limit or expand the scope of the patent? Can the patent owner or inventor make admissions against interest and be held to them at trial?

Recent U.S. cases have swung towards a stricter interpretation of the claim language, limiting the scope of the patent to precisely the elements the patent owner claimed and, in limited cases, to equivalents of those elements. As in the TV show Dragnet, anything a patent owner says while trying to get his or her patent can and will be used against him or her in a U.S. court.

Doctrine of Equivalents

Under U.S. law, a patent claim is infringed by anyone who, without permission, makes or sells a device or uses a method that has all the elements of the claim, or their equivalents. The U.S. doctrine of equivalents provides that if the claim says that two things are attached by a screwnail, then any fastener that performs the same function (fastening) in the same way (by mechanical attachment) constitutes an infringement of the patent.

U.S. Supreme Court

In Warner-Jenkinson, the U.S. Supreme Court held that, in order for there to be infringement of a patent, the infringing device must have all the elements of the claim or equivalents of all the elements. If an element or its equivalent is completely missing, there is no infringement (an "all-elements" test).

If a patent applicant amended the words in the proposed claim in response to a request from the patent examiner, limiting the element from something broad and general to something narrower, then equivalents would not infringe that patent. To do otherwise would expand the scope of what had already been limited. That would be unfair to the public, who, through the Patent Office, negotiated the granting of the patent with the narrower element.

The most recent U.S. decision, Festo, held that if the claims were amended during the application phase for any reason, equivalents would not infringe that patent. Once a claim element was narrowed during the application phase, it could not be interpreted to include equivalents after the patent was granted. The Festo decision has surprised and frightened many U.S. practitioners whose clients made voluntary amendments and may now not be able to make use of the doctrine of equivalents. Festo is not popular among patent owners, but provides increased predictability and clarity as to the scope of U.S. patents, making it easier for competitors to figure out how to avoid infringement.

Supreme Court of Canada

In contrast, two recent Supreme Court of Canada decisions, Free World and Whirlpool explicitly endorsed what appear to be two mutually contradictory claim construction approaches and require the courts to ignore admissions against interest made during the application phase.

On the one hand, the court in Whirlpool and Free World seemed to adopt an "all-elements" literal construction approach, analogous to the U.S. Warner-Jenkinson case, when it said: "The Patent Act promotes adherence to the language of the claims..." which " turn promotes both fairness and predictability," and commented favourably on a Federal Court of Appeal decision that said that "a court must interpret the claims; it cannot redraft them."

But the court then endorsed an approach that constituted rewriting the patent by categorizing the claim elements into "essential" and "inessential" elements, the latter of which could be varied (analogous to the U.S. doctrine of equivalents) or completely ignored (contrary to an "all elements" approach).

Prior Admissions

What if the patent owner said, during the negotiation with the Patent Office, that a certain element was essential to the invention, to make it new and inventive over what had gone on before ("the prior art")? Would that sort of statement be seen to be an admission against interest, with the patent owner then being estopped from arguing at trial, after being given the patent based in part on that admission, that the same element was now inessential and could be modified or ignored? In the U.S.A., correct; in Canada, Free World says that you cannot consider such prior admissions when interpreting the patent. While Canadian law of contract interpretation and constitutional law increasingly allow parol evidence to determine the intention of the contracting parties or the intent of the legislation, Free World went the opposite way with patents.

So, in the future, will Canadian courts hold patent owners to the language of the claims as a person who works in that art would read the claims, or will they give claim language leeway, allow equivalents and ignore claim elements? The answer appears to be unequivocally "Yes."


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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.