Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.
Results: 4 Answers
Patents
6.
Patent infringement
6.1
What Constitutes Patent Infringement?
 
Canada
The Supreme Court of Canada has held that infringement takes place when an activity deprives the patentee “in whole or in part, directly or indirectly, of full enjoyment of the monopoly conferred by law”.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.2
Does your jurisdiction apply the doctrine of equivalents?
 
Canada
No.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.3
Can a party be liable if the patent infringement takes place outside the jurisdiction?
 
Canada
No, there must be an activity that occurs in Canada in order to ground an infringement claim.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.4
What are the standards for wilful infringement?
 
Canada
Although Canada does not have a doctrine of wilful infringement, it is possible that an infringer’s conduct in infringing a patent through bad faith or wilful blindness could justify an award of punitive damages.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.5
Which parties can bring an infringement action?
 
Canada
Although an infringement action can be commenced by any person “claiming under the patentee” (eg, a licensee), the patentee must be made a party to the litigation unless the court orders otherwise.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.6
How soon after learning of infringing activity must an infringement action be brought?
 
Canada
The Patent Act provides that a patentee cannot seek remedies in respect of acts of infringement that occurred more than six years before commencement of an infringement action.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.7
What are the pleading standards to initiate a suit?
 
Canada
A statement of claim must plead:

  • facts from which it follows that the plaintiff has the exclusive right to do certain things; and
  • facts that constitute an encroachment by the defendant on that right.

In a patent infringement action, the statement of claim must, at a minimum, identify the parties, the patent(s) and claim(s) in suit and the defendant’s acts which are alleged to constitute an infringement.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.8
In which venues may a patent infringement action be brought?
 
Canada
A patent infringement action may be commenced in the Federal Court or in a provincial court in a province where infringement is alleged to have occurred. The Federal Court has country-wide jurisdiction, so an action can be commenced in any office of the court regardless of where in Canada the infringement is alleged to have occurred.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.9
What are the jurisdictional requirements for each venue?
 
Canada
As noted above, a patentee can commence an action in the Federal Court in any location where the court sits in respect of acts of infringement that have occurred anywhere in Canada. Alternatively, a patentee can commence an action in a provincial superior court in any province where acts of infringement are alleged to have occurred.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.10
Who is the fact finder in an infringement action?
 
Canada
The trial judge. The Federal Court prohibits juries and although it is possible to have a jury trial in provincial courts, it is very rare for a patent case to be tried before a jury in Canada.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.11
Does the fact finder change based on venue?
 
Canada
No.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.12
What are the steps leading up to a trial?
 
Canada
The steps in an action are:

  • exchange of pleadings;
  • exchange of documentary productions;
  • examinations for discovery of the parties and the inventor(s) named in the patent(s) in suit;
  • exchange of expert reports;
  • pre-trial conference;
  • trial management conference; and
  • trial.
For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.13
What remedies are available for patent infringement?
 
Canada
In most cases the trial judge will award a successful patentee its election between damages and infringer’s profits. The trial judge, however, has wide-ranging discretion when it comes to deciding whether to grant the patentee the right to elect to recover infringer’s profits instead of damages; it is not automatic that the patentee will be granted such an election. In addition to remedies for any post-grant acts of infringement, a successful patentee is entitled to ‘reasonable compensation’ for acts that occurred between publication of its patent application and issuance of its patent that would have constituted infringement of the patent had the patent been issued at the time of such acts. In addition to the foregoing financial remedies, a court will in most cases grant an injunction prohibiting further acts of infringement until expiry of the patent. The court can also grant other remedies such as destruction or delivery up of infringing products.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
6.14
Is an appeal available and what are the grounds to appeal?
 
Canada
Yes, the losing party can file an appeal as of right. On appeal, it can argue that some or all of the trial judge’s judgment should be overturned on the basis that the judge committed errors of law, fact or mixed fact and law that justify the intervention of the appellate court.

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