Canada: Third Party Rights Coming To Canada To Join New Prior User Rights

Last Updated: July 15 2019
Article by Adrian J. Howard and Zosia Zielinski

Most Read Contributor in Canada, July 2019

Patent practice in Canada is changing1 as the government aims to ratify its commitment to the Patent Law Treaty. As part of these changes, amendments to the Patent Act and upcoming Patent Rules, coming into force on October 30, 2019, introduce to the Canadian patent system the concept of third party rights. This appears to permit otherwise would-be infringers to continue to infringe a valid, issued patent with impunity. Below we discuss how the Canadian Intellectual Property Office (CIPO) describes third party rights, when they arise, and how they may continue even when the patent is in force. Patent owners should be vigilant to ensure the window for third party patent rights never opens.

When third party rights may arise. The amended Patent Act2 appears to provide a safe-harbour for a person who, in good faith, commits an act that would otherwise constitute patent infringement, if the act was committed during a period of time as outlined below, as defined by the draft regulations.3

Starting period


Ending period

Six months after non-payment of a maintenance fee on a pending application


If the Commissioner sent a notice to the applicant and the application is deemed to be abandoned

The earlier of reinstatement or grant, and the demonstration that due care was taken4

If the application is not deemed to be abandoned

The earlier of the payment of all required fees or grant

Six months after non-payment of a maintenance fee for a granted patent


If the Commissioner sent a notice to the applicant and the patent is deemed to have expired

The date on which all required fees are paid, and the demonstration that due care was taken5

If the patent is not deemed to be expired

The date on which all required fees are paid

Six months after the end of the prescribed time to request examination


If the application was deemed to be abandoned

The earlier of reinstatement or grant, and the demonstration that due care was taken4

If the application was not deemed to be abandoned

The earlier of the request being made and payment of all required fees, or grant

12 months after the application was deemed to be abandoned for any other reason, and the conditions for reinstatement were not met


Grant, and the demonstration that due care was taken4


The third party can continue the otherwise-infringing act. The amendments state if a person, in good faith, committed an act of infringement during the safe harbour period, or made serious and effective preparations to do so, the person may continue to commit the act even after the patent is reinstated – including after grant.6

Third party rights can be transferred. If the would-be infringing acts or preparations were carried out in the course of a business, the third party rights of that business may be transferred such that the transferee is protected from infringement. The transferor would thus relinquish their third party rights.7

Divisional applications are also vulnerable. Third party rights for acts committed when an application is in a safe-harbour period also seem to apply to any divisional application thereof. This applies to acts committed during the safe-harbour period for the parent application, but excludes acts committed after the divisional application was presented.8

Patent strategy should be devised with third party rights in mind. Currently, the only penalty for allowing an application to go abandoned, and waiting until the end of the one-year period for reinstatement, is payment of a modest late fee. Applicants should beware, as the new penalty could be much steeper – the risk of losing exclusive rights to their patent.

CIPO explains9 that in its view, these changes to the Patent Act and Patent Rules are intended to be a balancing act. While applicants will have new safety nets, including longer reinstatement periods after missing certain deadlines, this correspondingly increases periods of uncertainty for parties who may be interested in using the invention. Therefore, CIPO rationalizes that third party rights have been introduced in an attempt to be fair to the would-be infringer, and deter applicants and patentees from exploiting said safety nets.

Changes to prior use rights10 have already become law in Canada. Similar rights have already been given to a person who committed, or made serious and effective preparations to commit, would-be infringing acts before the claim date of a patent. Before these amendments came to force in December 2018, a third party was limited to using or selling only the article(s) they constructed, purchased, or acquired prior to the claim date. Now, as with third party rights, it appears that they may continue to commit the otherwise-infringing acts, including manufacture, as long as the applicant was not the source of knowledge of the subject-matter. These prior use rights are also transferable.

Transitional provisions11 indicate that the third party safe harbours will begin after the coming into force of the Patent Rules, which is expected this fall. It remains to be seen how third party and prior use rights will be interpreted by the courts, including the requirements for "good faith", "due care", and making "serious and effective preparations". Until that time, the best advice for patent owners is to do everything possible to avoid opening the window for third party rights, and to hope no prior users are out there.


1 See other BLG articles: "Significant Changes Are on the Horizon for Canadian Patent Prosecution" (Boocock & Marsman) and "The Good, The Bad, and The Complicated: Upcoming Changes to Filing Requirements for Canadian Patent Applications" (Marsman & Zielinski).

Patent Act section 55.11

3 Proposed Patent Rule 129. Canada Gazette, Part 1, Vol. 152, No. 48

Patent Act subsection 73(3)

Patent Act subsection 46(5)

Patent Act subsection 55.11(3)

Patent Act subsections 55.11(4)-(10)

8 Proposed Patent Rule 129(d). Canada Gazette, Part 1, Vol. 152, No. 48

10 Patent Act section 56

11 Proposed Patent Rule 231. Canada Gazette, Part 1, Vol. 152, No. 485

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

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
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 (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