Comparative Guides
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Results: 4 Answers
Patents
4.
Validity/post-grant review and/or opposition procedures
4.1
Where can the validity of an issued patent be challenged?
 
Canada
The Federal Court has jurisdiction, in a legal proceeding challenging the validity of a patent, to make an in rem declaration that a patent or any claim in the patent is invalid. The commissioner of patents can also declare a patent or any claim in a patent to be invalid in a re-examination proceeding.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.2
How can the validity of an issued patent be challenged?
 
Canada
The attorney general of Canada or an ‘interested person’ can commence an action in Federal Court seeking a declaration of invalidity of a patent or any claim in a patent. The threshold to qualify as an interested person is low. A defendant in an infringement action can also attack the validity of a patent by way of counterclaim in the infringement action. If the validity of a patent is at issue in a provincial court proceeding, any ruling made by the court on the issue of validity will be binding only as between the parties. Any person (including the patentee) can request that the commissioner of patents commence re-examination proceedings in respect of an issued patent where a substantial new issue of patentability is raised by prior art consisting of patents, patent applications and/or printed publications.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.3
What are the grounds to invalidate an issued patent?
 
Canada
There are many grounds upon which an issued patent may be invalidated, such as lack of utility, obviousness, lack of novelty, ambiguity in the claims, double patenting and the claims being broader than the invention made or disclosed.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.4
What is the evidentiary standard to invalidate an issued patent?
 
Canada
Although an issued patent is entitled to a presumption of validity under the Patent Act, once the validity of a patent is challenged in a legal proceeding, the standard upon which the patent may be invalidated is by the preponderance of evidence.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.5
What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
 
Canada
A third party can challenge the validity of a patent either in the courts (through commencement of an impeachment action or by way of counterclaim in an infringement action) or through a re-examination proceeding before the commissioner of patents.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.6
Who can oppose a granted patent?
 
Canada
A person seeking to challenge a granted patent by way of an impeachment action must qualify as an ‘interested person’. As noted above, the threshold to qualify as an ‘interested person’ is low. Any person can seek to challenge a patent by way of re-examination.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.7
What are the timing requirements for filing an opposition or post-grant review petition?
 
Canada
There are no time limits for challenging an issued patent.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.8
What are the grounds to file an opposition?
 
Canada
In the case of a pending application, any third party that wishes to object to the granting of a patent can file a protest with the commissioner of patents based on patents, published patent applications and printed publications that the requesting party believes bear on the patentability of one or more claims. In the case of a granted patent, any third party can request that the commissioner of patents commence re-examination proceedings in circumstances where a substantial new question of patentability is raised by prior art consisting of patents, patent applications and/or printed publications. In the case of a court challenge to the validity of a patent, a broad range of grounds can be alleged, including not only attacks based on prior art, but also other grounds such as lack of patentable subject matter, insufficiency of the patent specification, best mode and the like.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.9
What are the possible outcomes when an opposition is filed?
 
Canada
In the case of a protest or a re-examination, the commissioner of patents will decide whether the prior art being relied upon by the requesting party affects the patentability of any claim in the patent application or patent, as the case may be. In a protest, the commissioner may reject one or more claims based on the submitted art. In a re-examination, the commissioner may declare one or more claims to be invalid based on the prior art. In a court challenge, the court may declare one or more claims of the patent to be invalid.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.10
What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
 
Canada
In a protest, the commissioner will consider the submitted prior art and how it affects the patentability of any pending claim in the same manner as if the commissioner had located the prior art in a search or if the art had been submitted by the applicant. In the case of a re-examination, the commissioner establishes a re-examination board which first determines whether a substantial new question of patentability affecting any claim of the patent is raised by the request for re-examination. If the re-examination board concludes that a substantial new question of patentability has been raised, it shall then determine the patentability of the claims in the same manner as patentability would be considered during examination of a pending application. In a court challenge, although a patent is entitled to a statutory presumption of validity, if the party challenging the patent can establish on the preponderance of the evidence that the patent is invalid, the court will issue a declaration of invalidity.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
4.11
Can a post-grant review decision be appealed and what are the grounds to appeal?
 
Canada
A decision by a re-examination board to cancel a claim of a patent may be appealed by the patentee to the Federal Court. On appeal, the patentee can argue that the re-examination board made errors of law, fact or mixed fact and law that require intervention by the Federal Court. A party which requests the commencement of a re-examination proceeding has no right to appeal the re-examination board’s decision. In an invalidity action before the court, the losing party can appeal to the appellate court as of right and can allege that the court below made errors of law, fact or mixed fact and law that justify intervention by the appellate court.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP