Canada: Recent Amendments To The Canadian Patent Act In Response To COVID-19

The COVID-19 Emergency Response Act, effective March 25, 2020, contains several additions to the Patent Act (Canada)

These additions provide that on the application of the Minister of Health, the Commissioner of Patents shall authorize the Government of Canada and any person specified in an application to make, construct, use and sell a patented invention to the extent necessary to respond to a public health emergency. Likely, these changes are designed to allow the Federal Government to respond to the pandemic by making use of any existing patents that can aid in slowing the spread of COVID-19, protecting frontline workers or treating patients infected with the virus.

The existing provisions of the Patent Act (sections 19 and 19.1) already provide that the Commissioner may, on application by the Government of Canada, or the government of a province, authorize the use of a patented invention by that government. Under the new provisions (section 19.4), the Commissioner is no longer required to consider whether the Government has made reasonable commercial efforts to acquire the patent before granting the authorization. Furthermore, the new provisions contemplate other persons (those named in the application) having the authority to make, construct, use and sell the patented invention. Previously, the only person authorized to use the patented invention was the government making the application.

The new additions to the Patent Act require that the Government of Canada and any person authorized to make, construct, use and sell a patented invention under these new sections to pay the patentee any amount that the Commissioner considers to be "adequate" renumeration.

Expiration

The Commissioner is prohibited from making an authorization under these new provisions after September 30, 2020 and any authorization given will cease to have effect the earlier of one year after the authorization is granted and the day on which the Minister of Health notifies the Commissioner that it is no longer necessary to respond to the public health emergency. As a result, it appears the latest changes are only meant to be a response to COVID-19, rather than an indefinite tool the Federal Government can use in response to future public health emergencies.

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