Canada and the United States are close neighbors. About 300,000
people cross the border each day, and bilateral trade amounts to
about $1.6 billion in goods daily. It is not surprising that
patent, and other intellectual property disputes, often involve
some element of cross-border litigation. The Canadian
litigation experience is relatively similar to the American
experience. There are, however, some important differences
that U.S. attorneys involved in such litigation should be aware
Like in the United States, Canada has federal and
provincial/state courts. Both can decide patent cases.
Litigation process and procedure is dictated by the rules of
civil procedure of the court in which litigation has been
commenced. Generally, the procedure is similar between the
provincial and federal courts. In many courts, case management is
common, whereby the equivalent to a deputy judge is assigned to the
lawsuit, deals with scheduling and adjudicates most
Lawsuits are commenced through the issuance by the court
of a document called a "statement of claim," which is
similar to a complaint in the United States. Upon being served
with such a claim, a defendant may respond by serving a statement
of defence. It may also assert counterclaims against
a plaintiff, cross-claim against other defendants, or draw in
third parties through a third-party claim. All such documentation
is referred to as "pleadings."
In patent cases, the patentee must be named as a party to
the suit, but need not necessarily be a plaintiff, as persons
"claiming under" the patentee (e.g., a licensee) may
commence an infringement action.
Once pleadings are closed, parties begin the discovery
process. Affidavits of documents are exchanged, which list all
of the relevant documents in the possession, power or control
of each party to the lawsuit. There are no formal document
requests; however, motions can be brought to address perceived
deficiencies in documentary production.
Parties are entitled to conduct a single oral examination
for discovery of each opposing party. In most courts, the number of
examinations and timing for each is limited. Such examinations
are similar to a 36(b) examination in the United States.
However, they are not normally video recorded. Transcriptions
of discovery evidence may be read into the evidentiary record
at trial, but may not be used for other purposes due to the
so-called "deemed undertaking" rule. Non-parties may be
examined with leave of the court. Questions may be refused during
examination and need not be answered at the time. Undertakings may
also be given to make inquiries and answer questions at a
later time in writing.
Interlocutory motions regarding the propriety of refusals and
sufficiency of answers to undertakings are common. They are
generally adjudicated by the equivalent of a deputy judge.
Appeals from such judgments are allowed.
Follow-up or second-round discovery may be allowed. The
scope is usually limited to further questions stemming from
answers to undertakings or additional documents that have been
Summary judgment motions may be brought at any time.
They are generally supported by a paper record; however, in
some instances, oral testimony may be permitted.
Expert reports are exchanged in advance of trial, usually after
documentary and oral discovery are complete. Legislation generally
limits the number of experts a party may call at trial; however,
the court may allow for additional experts if justified.
The parties can also agree to the "hot-tubbing" of their
In most courts, the parties must attend a pre-trial
conference and mandatory mediation prior to trial. In rare
circumstances, the parties may be excused from this
Trial in Canada rarely occurs before a jury, as there is
no constitutional right to trial by jury. Instead, most trials are
presided over by a single judge. Appeals generally exist as
of right from trial judgments.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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).