Canada: Recent Amendments To The Canadian Patent Act Have Come Into Force

Last Updated: July 4 2019
Article by Carina De Pellegrin

Most Read Contributor in Canada, July 2019

A number of significant amendments to Canada's Patent Act came into force at the end of 2018. These amendments will have an impact on both obtaining and enforcing patent rights in Canada. The Budget Implementation Act, 2018 (the Budget Act) sets out, in Division 7, Subdivision A, these various amendments to the Patent Act.

1. Admissibility into Evidence of a Patent's Prosecution History

Historically, Canadian courts have repeatedly confirmed the principle that statements made during prosecution of a patent application were not relevant to the construction of that patent in later patent litigation.1 The Budget Act changes this established principle by the addition of section 53.1(1) to the Patent Act. This provision will allow into evidence in any court action or proceeding involving a Canadian patent, any written communication from the applicant or patentee to the Patent Office that may rebut representations made by the patentee related to the construction of any claim of the patent, including communications made during prosecution of the patent, disclaimers, and in any request for re-examination of the patent. Such written communications relating to a patent can also be allowed into evidence in any action or proceeding respecting a Certificate of Supplementary Protection in which that patent is set out, under the new section 123.1 of the Patent Act added by the Budget Act. Of particular significance, the transition provisions are such that this provision applies to pending litigation and not just litigation commenced after the coming into force of the legislation.

2. Demand Letters

The Budget Act also provides in the new section 76.2, that demand or cease-and-desist letters related to the enforcement of patent rights must comply with prescribed requirements. There have been a number of cases in the Canadian courts which have sought to deal with the issue of inappropriate cease-and-desist letters, and the impact those letters might have for the sender. For example, in Excalibre Oil Tools Ltd. v. Advantage Products Inc.,2 the sender of inappropriate cease and desist letters was found liable for damages under section 7(a) of the Trademarks Act, because the overtly threatening letters were ultimately found to constitute false or misleading statements tending to discredit the business, goods, or services of the patentee's competitors and caused damage to their business.

The new legislation indicates that any person who receives a written demand that does not comply with the "prescribed requirements", as well as any person who is aggrieved as a result of the receipt of such an inappropriate demand made to a third party, may bring proceedings in the Federal Court. The Court could grant damages, punitive damages, an injunction, a declaration or an award of costs in respect of the inappropriate demand.

No detail regarding the required contents of demand letters is provided in new section 76.2, and regulations will be necessary in order to set out these "prescribed requirements". New section 76.3 expressly provides the power to make such regulations including to set out what constitutes a written demand, what constitutes an aggrievement, the requirements with which a written demand must comply, the factors the Federal Court may and may not consider in any related proceeding, as well as any circumstances where a defendant should not be found liable under the written demand provision. Consequently, it appears that additional regulations will be required before the provision will be clarified and able to work as intended. As of the date of writing, no draft of these regulations has been published.

New section 76.2 (4) also makes a corporation's officers, directors, and agents jointly and severally, or solitarily, liable with the corporation if they authorized or acquiesced in the sending of such demands, unless they can show that they exercised due diligence to ensure the written demands complied with the prescribed legal requirements.

3. Experimental Use Exception

New section 55.3(1) expressly recognizes that something that is done "for the purpose of experimentation relating to the subject matter of a patent" is not an infringement of that patent. While Canadian courts had recognized that non-commercial, experimental use of a patented invention could sometimes constitute an exception to infringement, there will now be further clarification of this exception. New section 55.3(2) provides that regulations may be made to outline the factors that a court may consider, must consider or will not be permitted to consider in determining whether an act is for the purpose of such experimentation. As of the date of writing, no draft of these regulations has been published.

4. Prior Use Exception

The Budget Act also amends section 56 of the Patent Act, further detailing when the good faith use or sale of an article or service, which later becomes patented, can be considered an exception to infringement. In particular, the Act now provides that the infringement exemption continues after the patent issues. Furthermore, this prior use exemption can be transferred such that the transferee will become exempt if they commit an act after the transfer that the transferor could have committed under the exemption before the transfer.

5. Standard-Essential Patents

Canada has not previously had a regime that deals with standard-essential patents. New section 52.1(1), however, provides such a regime. If a patentee enters into a licensing commitment with respect to a standard-essential patent, that commitment binds any subsequent patentee or holder of a Certificate of Supplementary Protection.

Again, there are no details as to what constitutes a licensing commitment or a standard-essential patent, however, regulations may be made as to these definitions. As of the date of writing, no draft of these regulations has been published.

Comment

In conclusion, many of these recent legislative changes are significant, but will require further regulation and judicial interpretation before their effect and scope will be fully understood. If you would like to further investigate and discuss the potential impact these changes to Canada's patent law may have for your business and your patent strategy, please contact one of BLG's legal professionals.

Footnotes

Free World Trust v. Électro Santé, 2000 SCC 66 at para 64-67.

2 2016 FC 1279 (under cross-appeal in A-460-16, see 2019 FCA 22).

About BLG

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 Mondaq.com.

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

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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