Canada: Responding To Threats Of Patent Infringement

Last Updated: May 10 2013
Article by Steven Tanner, Kara L. Smyth and Timothy St.J. Ellam

Most Read Contributor in Canada, September 2018

Patent disputes have proliferated in Alberta.  As the economy has levelled-off in recent years, patentees have increasingly sought to enforce patents as part of their business strategy.  Threats of patent infringement have proliferated and infringement actions have been filed in all Courts, particularly the Federal Court.  Companies in the oil and gas sector must be ready to respond quickly and properly to the threat of patent infringement.

On March 27, we met with in-house counsel and other industry leaders at our Calgary office to discuss effective responses to threats of patent infringement.  By taking the 10 steps outlined below, a potential defendant will put itself in the best position to respond to threats of patent infringement.

1.      Investigate Business Relationship with the Patentee/Complainant

Understand the complainant.  In many instances, the complainant may be known to you or well known in the business.  You may already have a business relationship with the complainant.  Understanding the complainant may reveal business solutions that avoid litigation.

If the complainant is not active in the industry but rather is a patent holder seeking to enforce patent rights, a license may be a potential solution.  However, the merits of that approach can only be assessed after evaluating the strengths and weaknesses of the case and the merits of litigation.

2.      Review Patent Portfolio for Potential Counterclaims

If your business owns patents, consider whether any can be asserted against the complainant.  Threatening a complainant with a countersuit that can disrupt the complainant's business puts you in a better position to find a settlement that avoids litigation.

3.      Retain Experienced Patent Counsel to Assess Merits of Threatened Litigation

Patent expertise is important, but litigation expertise is equally important.  Counsel who handle IP generally (e.g. trade-mark agents or patent agents) may not be well positioned to represent your interests in litigation.  Seek legal advice early from patent litigators who can help create a winning record from the outset of the dispute.

4.      Retain a Properly Qualified Expert in the Field of Technology of the Patent

Patents are directed to persons in the field to which the patents relate.  Any patent must be understood from the perspective of the ordinary person working in the field.  Retaining an expert early who can provide that understanding, if one is not available at your business, is an important step in determining how the Court would interpret the patent and, along with it, your odds of success.

5.      Determine Potential Liability

How much money may your company owe?  Your company's potential exposure is a key driver in developing an appropriate response.  To assess your liability you must first determine when the alleged infringing acts occurred.  The complainant will typically seek the higher of its damages (how much it has lost) or your profits (how much your business profited from the infringement).  Because profits are an "equitable" remedy, you should be aware that they are not universally awarded.

A second key determinant in determining potential liability is to compare the alleged dates of infringement with the date the patent was issued.  Damages or profits are only available from the date the patent was issued.  "Reasonable compensation" may also be owed for the time period commencing on the date the patent application was published and ending on the date the patent issued.  Reasonable compensation may take the form of a royalty.

6.      Project Management

Project management can help organize your response and maintain efficiency throughout the process, including through litigation.  Using a project management platform early can save hassles and costs in the future as the file becomes larger and more difficult to manage.

7.      Limit Your Potential Losses

Once you understand what the patent claims and the alleged infringing activities are, you can determine whether a "work around" is available to limit your company's future liability.  By making changes to essential elements of the complainant's alleged invention, you may be able to continue your business and limit your exposure.  You also may be able to apply for your own patent if your "work around" is inventive.

8.      Document Retention

Once litigation has been threatened, you need to retain documents which may become relevant to the dispute.  This may include schematics of your machinery, work orders, invoices and correspondence relating to the complainant and his or her patent.  Ensuring that relevant custodians are identified early and their documents are retained will help you meet your legal obligations and respond to any assertion that relevant information has been destroyed.

9.      Consider Patent Impeachment Action in the Federal Court

Consider taking the initiative.  If a complainant threatens you with an infringement action, you may be best served by commencing litigation in the Federal Court to impeach the patent.  Such a step positions you as the plaintiff and allows you to better control the pace of litigation.  Also, by selecting the Federal Court as the forum, you may achieve important objectives.  For instance, the Federal Court is notoriously hesitant to enjoin activities pending trial.  By proceeding in the Federal Court you may be able to continue your business with minimal interference, prior to trial.

10.  Consider Settlement

Mediation should always be considered, and settlement (on your terms) is always a good solution.  Understand your situation so that you can enter any negotiation in a position of strength.  Settlement discussions prior to litigation may yield business solutions which are not available after the parties have expended significant sums in litigation.


Responding to threats of patent infringement in Alberta requires considered and deliberate steps.  Following the 10 steps set out above will put companies in a good position to effectively respond to any threat quickly and decisively.

To view the original article, please click here.

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions