The following 10 aspects of Canadian patent law and practice
that contrast with that of the United States will be of interest to
Canadian counsel who have occasion to discuss patent litigation in
Canada with U.S. colleagues.
Federal Court judges, sitting alone, try most patent
actions in Canada. There are no juries in the Federal Court. The
Federal Court has exclusive jurisdiction over conflict
(interference) cases and impeachment cases, and concurrent
jurisdiction with the provincial superior courts over patent
matters generally. There is one Federal Court that sits across
Canada and operates with a single set of rules, one group of
judges, and one body of case law.
RE-EXAMINATION IS AN UNUSUAL DEFENCE TACTIC
It is relatively rare for a defendant in a patent
infringement action to use the tactic of seeking re-examination in
the Patent Office. The process is loaded in favour of the patentee,
e.g., the patentee alone has the right of appeal, and
re-examination does not automatically stay a pending action for
THE TRIAL JUDGE DOES NOT MONITOR THE CASE
The trial judge is not assigned until after a pretrial
conference when the trial date is set. Therefore, the trial judge
will not be involved as the case proceeds to trial except by
NO COMPARABLE DEPOSITION PRACTICE
In Canada, there is no deposition practice comparable to
that in the U.S. Instead, questioning of adverse parties is limited
to one individual selected by the adverse party as its
representative, who is to become informed on the matters in issue
and obtain relevant information from other persons under the
control of the examined party. At trial, an examining party may
read selected questions and answers as evidence. Where the
inventors have assigned the patent in issue, the inventors can also
be examined for discovery. However, the discovery of an inventor
cannot be read as evidence at trial, although it may be used for
cross-examination of the inventor. There is no discovery or
examination of adverse expert witnesses prior to trial.
NO MARKMAN HEARINGS
Unlike the Markman practice in the U.S., the Federal
Court in Canada does not construe the claims of the patent
separately and prior to the trial of the issues of validity and
infringement. Claim construction is done at trial, with the benefit
of expert evidence about the common general knowledge of a skilled
person and an understanding of the prior art or allegedly
infringing article that gives rise to the disputed claim
SUMMARY JUDGMENT IS UNLIKELY
Without an advance ruling on claims construction in a
Markman-type hearing and with the difficulty of
establishing facts without a trial, there is a judicial reluctance
to grant summary judgment prior to trial in a patent case. Summary
judgment is intended to weed out only those claims or grounds of
defence that clearly have no chance.
"PURPOSIVE CONSTRUCTION" OF PATENT
Canada follows a rule of "purposive
construction" similar to rules of claims construction in the
U.K. The claims are read in the context of the specification, as a
person skilled in the art would have understood them at the date of
publication. In Canada, the prosecution history of the patent is
largely irrelevant to the construction of the claims. The court
does consider the extent to which equivalents to claim elements
fall within the scope of the claims as part of its construction of
NO "FRAUD ON THE PATENT OFFICE"
In Canada, inequitable conduct before the Patent Office
during prosecution is compartmentalized rather than general in
scope. There are two branches of the duty of good faith: 1. Not to
make a material misstatement in the petition for patent or make
additions or omissions from the specification wilfully for the
purpose of misleading; 2. To answer in good faith all requisitions
of the Patent Examiner. Failure in the former may result in an
issued patent being declared void. Failure in the latter may result
in a patent application be abandoned, but will not invalidate an
NO TREBLE DAMAGES
Our courts do not award treble damages. Punitive damages
are reserved for exceptional cases of egregious conduct.
COSTS FOLLOW THE EVENT
The general rule in Canada is that the successful party
is entitled to reimbursement of part of its costs. Increased costs
are available if a written settlement offer is made that is better
than the judgment.
Originally published in Canadian Lawyer InHouse
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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