In Canada, patents protect inventions as set out in the Patent Act. Canada also has industrial designs which are analogous to design patents in the USA for the protection of aesthetic features as set out in the Industrial Design Act. For inventions and know-how that are kept confidential, trade secret protection may be available.  

To obtain a patent, a patent application is filed, reviewed by the Canadian Intellectual Property Office, and if substantive and formality requirements are met, granted. A patent application must contain a description of the invention and its utility along with any figures, and claims setting out the scope of the claimed invention. After the application is filed along with identification of the applicant and inventors and the required fees, substantive examination must be requested within four years of the filing date. An examiner at the Patent Office may raise objections such as to the novelty and inventiveness of the claimed invention. If all objections are overcome, the application is allowed, and upon paying an issue fee, granted. Procedures of the Patent Co-operation Treaty (PCT) may be used to enter national phase in Canada.  

Industrial designs follow a similar process but the applications only require figures showing the appearance of the claimed design and a brief description. Procedures of the Hague Agreement may be used to enter national phase in Canada.  

Trade secrets do not have an application/registration process but arise under the common law if information has commercial value due to its confidential nature. A trade secret may be maintained indefinitely if it is kept confidential including using physical, technological and legal means. Trade secret protection may be lost if the information becomes known. 

For patents, it typically takes two to three years from requesting examination for a patent application to be allowed by the Patent Office. Requesting examination may be deferred by up to four years from the filing date. Examination may be expedited upon request by paying a fee or under certain conditions, such as under the patent prosecution highway where similar claims have already been allowed in another jurisdiction. If the patent examiner issues multiple office actions or a final rejection is appealed, the process may take significantly longer. Retaining a Canadian patent agent is recommended although not required if:

• the inventor(s) is the applicant;
• for the formality of filing a patent application; and
• for paying annual maintenance fees.

The minimum government fees for filing, requesting examination and paying the final fee is currently about CAD1,600 although discounts may be available for small entities and if the Canadian Patent Office was the International Search Authority (ISA) for the PCT application. Legal/agent fees, annual maintenance fees, late fees and formality fees will be extra.  

In Canada, patents have a term of 20 years from the filing date or international filing date for applications that entered national phase.  

Certificate of Supplementary Protection 

For patents pertaining to a medicinal ingredient or a combination of medicinal ingredients approved for sale in Canada, a patentee may obtain a Certificate of Supplementary Protection (CSP) which can provide for up to two years of additional patent protection where there are delays in the regulatory approval for a drug.  

Patent Term Adjustment 

Canada does not have patent term adjustment for prosecution delays but it has committed to implementing a form of term adjustment by 2025 for applications filed on or after 1 December 2020 under the Canada-United States-Mexico Agreement (CUSMA).  

Industrial Designs

The term for industrial designs is the later of 10 years from the date of registration or 15 years from the filing date.  

The owner of a patent must pay annual maintenance fees for the life of the patent to maintain the rights.  

There is no marking requirement in Canada.  

For pharmaceutical patents, patents may be listed on the Patent Register maintained by Health Canada for approved pharmaceutical medicines which are used for Canada’s patent/drug linkage system. In additional, there are certain pricing reporting requirements for patented medicines under jurisdiction of the Patented Medicines Prices Review Board.  

It is possible for the government or a third party to bring an application before the Commissioner of Patents to seek a remedy, including licensing at a determined royalty rate, if there has been an abuse of exclusive patents rights such as not meeting demand on reasonable terms. Such applications are exceedingly rare.  

After 20 years from the filing date, patent rights expire except if the owner has obtained a CSP which may provide up to two years of additional protection (see 1.4 Term of Each Intellectual Property Right). 

There are two ways that a third party may interact with the grant process of a patent.   

• Prior to or during examination before the Patent Office, a third party may submit prior art or a protest to the Patent Office. The materials submitted are provided to the examiner reviewing the application and the examiner may disregard or incorporate the protest into an objection. The patent applicant may then address the examiner’s objection as they would in the normal course. Once a third party submits the protest, they have no further role in the process, except by filing a further protest.  
• After a patent has been granted, a third party may request re-examination of the patent by making a request based on printed publications, including prior art patents. A re-examination board will decide if there is a substantial new question of patentability, and if so, notify the patentee and allow the patentee to respond including by proposing amendments to the patent. The re-examination board may cancel any claims, confirm its patentability or incorporate any amendments. Re-examination of a patent subject to litigation does not typically stay the litigation.  

If a patent examiner issues a final action rejecting a patent application, the applicant may pursue the application before the Patent Appeal Board, which considers the arguments of the applicant, including at an oral hearing. The Patent Appeal Board may uphold the rejection, allow the patent application, or incorporate any necessary amendments proposed by the applicant. An applicant that is unsuccessful at the Patent Appeal Board may further appeal the rejection of the patent application to the Federal Court.  

Annual maintenance fees are required by each anniversary of the filing date starting from the second anniversary. These maintenance fees may be paid by the agent handling the patent/application or by a third party such as an annuity service. Failure to pay a maintenance will result in a notice from the Patent Office fixing a deadline for paying both the missed fee and a late fee penalty of CAD150 at the later of six months after the deadline or two months after the notice. If the maintenance fee is not paid within this late fee period, the patent/application may be reinstated within one year of the due date by requesting reinstatement with a reinstatement fee and persuading the Patent Office that due care was taken to pay the fee in a timely way. Certain third-party rights may be available during the period the patent was considered abandoned prior to reinstatement.   

After a patent has been granted, there are limited procedures available to make amendments.   

Corrections

Obvious corrections in the specification or drawings may be made with the Patent Office within 12 months of the issuance of the patent. Similarly, errors made by the Patent Office may corrected upon request during this 12-month period.  

Re-examination 

A patentee may request re-examination of its own patent using the same procedure available to third parties by submitting a request for re-examination based on prior art printed documents. The re-examination board may permit amendments to address any substantial new question of patentability identified by the board. Conversely, the re-examination board may cancel claims and not accept the amendments proposed by the patentee.  

Disclaimer

A patentee may file a disclaimer along with a fee where, by “mistake, accident or inadvertence”, the patent is considered too broad. The patentee may disclaim parts of the patent including by providing amended claims. Note that if the disclaimer is later found improper, then the pre-disclaimed claims may also be found invalid based on the admission by the patentee that the claims are too broad.  

Re-issue 

A patentee may request re-issue of a patent where, due to mistake, accident or inadvertence, the patent claims more or less than the patentee had a right to claim. This request may be made within four years of the grant of the patent.  

Corrections or amendments to the inventors or applicants may be made post-grant by way of application to the Federal Court.  

In Canada, the most common proceeding to assert patent rights is a patent infringement action initiated in the Federal Court, which has jurisdiction over patent matters pursuant to the Patent Act and the Federal Courts Act.   

The superior courts of each province or territory also have concurrent jurisdiction over patent matters, with the exception of in rem impeachment or invalidity of a patent pursuant to Section 60 of the Patent Act, which is exclusively within the jurisdiction of the Federal Court.   

The validity of a patent can be challenged either as a defence to patent infringement or as an action or counterclaim to impeach the patent. A declaration of non-infringement of a patent may also be sought as an action on its own, or as a defence to an action for patent infringement.   

When invalidity is pleaded either as an action or counterclaim to impeach the patent in the Federal Court, which has exclusive jurisdiction to invalidate a patent pursuant to Section 60 of the Patent Act, a successful decision renders the patent invalid in rem. If the validity of the patent is challenged in provincial or territorial court or only as a defence (as opposed to a counterclaim) in the Federal Court, the decision only applies in personam.  

Any patent infringement action or impeachment action may be brought before the Federal Court for adjudication. The Federal Court has jurisdiction across Canada and is the venue for the vast majority of patent infringement actions. Decisions of the Federal Court can be appealed as of right to the Federal Court of Appeal, which has jurisdiction pursuant to the Federal Courts Act to hear appeals from the Federal Court and certain tribunals.   

Patent infringement matters can may also be commenced in the superior courts of a province or territory, particularly where the alleged infringement is restricted to one province. There is generally a right of appeal to the Court of Appeal of that province or territory.   

From the Federal Court of Appeal or a provincial or territorial Court of Appeal, an appeal can be taken to the Supreme Court of Canada, but only with leave.    

There are no specialised bodies or organisations for the resolution of patent infringement disputes in Canada. However, the Federal Court being the venue for the vast majority of patent infringement actions has developed significant expertise in adjudicating patent disputes. Several presiding judges of the Federal Court previously practised as patent litigators before being appointed to the Court.  

There are no prerequisites to filing a patent infringement lawsuit in Canada. A warning or demand letter requesting that the alleged infringer cease and desist is not mandatory before asserting a patent in court proceedings, although a demand letter may be considered when assessing pre-judgment interest if successful.   

To bring an action to impeach a patent pursuant to Section 60 of the Patent Act, a plaintiff must first establish that it is an “interested person”. This is commonly met when the plaintiff is able to establish that it is a competitor or dealing in similar products or processes to those disclosed in the patent. Similarly, when a statement of claim is filed to impeach a patent pursuant to Section 60 of the Patent Act, security for costs must be filed at the time of issuance of the claim. The purpose of the security for costs is to deter frivolous or unfounded attacks on a patent.  

A person is generally entitled to represent themselves in any matter before the Federal Court, as well as in any intellectual property proceeding before a provincial or territorial superior court. However, the courts recognise that patent infringement cases are inherently complex and, in some circumstances, have required unsophisticated self-represented patentees to obtain legal representation for their cases to proceed.   

Corporations, partnerships or other unincorporated parties must be represented by a lawyer unless leave of the court is obtained. 

Interim injunctions are available in certain circumstances, even ex parte, for a period not exceeding 14 days, after which an interlocutory injunction will be required. To obtain an interim injunction, the court must be satisfied that the matter is urgent, and the three-part test of American Cyanamid Co. v Ethicon Ltd., [1975] AC 396 (UKHL) is satisfied, namely the applicant must show:

• a serious question to be tried;
• that it will suffer irreparable harm if the relief is not granted; and
• that the balance of convenience lies in its favour.

For an interlocutory injunction, the same three-part test fromAmerican Cyanamid must be satisfied.   

Interim and interlocutory injunctions have historically been difficult to obtain in the Federal Court of ‎Canada in patent disputes. The Court has been hesitant to find irreparable harm where a party can be fully ‎compensated through a damages award.‎  

Security for costs can be sought by any party to an action, including a party that brings a counterclaim or third-party claim, pursuant to Rule 415 of the Federal Courts Rules. The Rules provide for certain circumstances when security for costs is more frequently sought, including for (i) a plaintiff resident outside of Canada; or (ii) when a plaintiff is a corporation, unincorporated or a nominal plaintiff and there is reason to believe that the plaintiff would have insufficient assets in Canada available to pay the costs of the defendant if so ordered to do so.   

The entitlement to security for costs is not automatic and resides within the discretion of the Federal Court. The burden rests with the party seeking security to prove that the other party falls within one of the scenarios prescribed by Rule 416.  

To recover monetary remedies, an infringement action must be brought within six years of the act of infringement, pursuant to Section 55.01 of the Patent Act. For ongoing infringement, the practical implication of this limitation period is that recovery for acts of infringement that occurred before the six-year period will be barred. 

The discovery process in an action for patent infringement or impeachment is the mechanism by which a party can obtain relevant information and evidence from the other party or a third party.   

For documentary discovery, each party to a lawsuit is obligated to list all relevant documents that are in the possession, power or control, and for which no privilege is claimed, in an affidavit of documents. In the Federal Court, a “relevant document” is considered to be any document on which the party intends to rely or that adversely affects the party’s case or supports another party’s case. There is a continuing obligation on all parties to disclose additional relevant documents upon becoming aware of their existence in the course of the litigation.   

Examinations for discovery take place after the parties have exchanged affidavits of documents and after the pleadings have closed. In most cases, only a single representative for each party is examined, who has a duty before the examination to inform themselves with respect to any matter in question in the action. The person being examined must answer any relevant question, with a “relevant question” being a question relating to any unadmitted allegation of fact in a pleading or that concerns the identity of a person who might have knowledge related to a matter in question in the action.   

The adverse party has the right, at its discretion, to examine for discovery any assignor of a patent, including an inventor of the patent in suit. If the inventor is later called as a witness, this transcript can be used to impeach the witness in cross-examinations, as appropriate, but cannot be filed as evidence at trial without leave of the court.    

A party may rely on any part of its examination for discovery of an adverse party as its own evidence at trial by reading into evidence portions of the transcript of an examination for discovery. The party being examined may not rely on the transcript, except to introduce into evidence related portions those introduced by the examining party, as allowed by the Court. Only the examination for discovery of another party to the lawsuit can be relied on by an opposing party as the Federal Courts Rules to not authorise entering into evidence the transcript from the examination of a non-party or an assignor (eg, an inventor of a patent).     

A patent infringement action in the Federal Court is commenced by way of a statement of claim. In its claim, the plaintiff must allege material facts to enable the defendant and the Court to understand the grounds of the action. As part of this obligation to allege material facts, the plaintiff must set out in the pleading its interest in the patent(s) being asserted, for example as the patentee, assignee or licensee of the asserted rights. A licensee may commence a patent infringement action on its own, but the patentee must be a party to such an action as a co-plaintiff.   

The plaintiff must also plead material facts related to the alleged acts of infringement by the defendant. These acts of infringement must be specifically pleaded to set out the relevant facts that give rise to the claim of infringement, ie, how the defendant has allegedly infringed the plaintiff’s patent.   

A party must provide adequate particulars of each allegation or claim in the pleading. When the particulars provided in a pleading are deemed inadequate, the other party may seek and obtain particulars at any time during the proceeding. If needed, an order for further particulars can be sought from the Court by way of motion.     

Pleadings may be amended at any time during a proceeding, although some amendments will require leave of the court. A party may amend its pleading without leave if the other side has not yet pleaded over or otherwise on consent.  

In general, any claim seeking representative or ‎collective redress can be filed as a class action in Canada. In other words, there is no category of claims that has been held to be per se inappropriate for class action litigation by the courts. However, class actions in the context of patent rights have been rarely pursued, if ever, in Canada.   

Patent misuse or abuse is addressed in the Patent Act, which provides a broad definition and provides for an administrative summary procedure before the Commissioner of Patents to address such misconduct. There are four circumstances deemed to constitute abuse of a patent:   

• if the demand for the patented article in Canada is not being met to an adequate extent or on reasonable terms;  
• if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms, the trade, industry, or the trade of any person or class of persons trading in Canada is prejudiced, and it is in the public interest that a licence or licences should be granted;  
• if any trade or industry in Canada, or any person or class of persons engaged therein, is unfairly prejudiced by the conditions attached by the patentee to the purchase, hire, licence or use of the patented article or to the using or working of the patented process; or  
• if it is shown that the existence of the patent, being a patent for an invention relating to a process involving the use of materials not protected by the patent or for an invention relating to a substance produced by such a process, has been utilised by the patentee so as unfairly to prejudice in Canada the manufacture, use or sale of any materials.  

As this suggests, the circumstances that constitute abuse may include a patentee՚s failure to work or to adequately work an invention in Canada, the patentee՚s refusal to license a patent at all or on reasonable terms, or improper licensing practices with certain prejudicial and not necessarily anti-competitive effects.  

Any time after the expiration of three years from the date of the grant of the patent, any interested person may apply to the Commissioner of Patents alleging an abuse of the exclusive rights under the patent and asking for relief, such as an order for a compulsory license on terms that are expedient or to revoke the patent.  

An action for infringement may be brought by the patentee or by any party “claiming under” the patentee. The Patent Act requires that a patentee be made a party to any action for infringement, unless otherwise expressly provided. Licensees, whether exclusive or non-exclusive, are able to bring an action for infringement. Further, a party whose market position is impacted by an infringement may bring an action for the harm caused by the infringement even if the party is not a licensee. 

A party may be liable to a patentee (or person claiming under, eg, licensee) for either direct or indirect infringement. Direct infringement is any act which interferes with the rights of the patentee to make, use or sell the subject matter of the claims of the patent. Further, an indirect infringement occurs where a party exerts influence on another party who then carries out an act which is within the exclusive rights to make, use or sell the subject matter of the patent claims.   

Remedies available for patent infringement include:  

• an injunction against further making, using or selling until the patent has expired;  
• an order for the delivery up or destruction of the infringing product;  
• a reasonable royalty from the date of publication to the date of issuance of the patent; or 
• a claim for damages suffered by the patentee or an account of profits made by the infringer due to the infringement.  

There are also punitive and exemplary damages available in circumstances where the conduct of the infringer calls for such additional damages.  

A product imported into Canada will be considered to infringe if the process by which the patent was made would have been an infringement if carried out in Canada. 

The scope of the exclusive rights provided by a patent are determined by a purposive construction of the claims. There is a single claim construction and no doctrine of equivalents is available in Canada. Instead, the essential elements of the claims are identified with reference to the objectively determined intention of the inventor. The essential elements are then compared with the allegedly infringing product or process to determine whether there is infringement or not.   

Claim construction is not influenced by the prosecution history with the exception that the prosecution history may be put into evidence to rebut any representation made by the patentee in the action or proceeding as to the construction of a claim. 

Defences available to a party accused of infringement include a “prior use” defence which permits a party to continue an infringing act if that act was first performed prior to the “claim date” of the patent claim in question. The claim date is the filing date or the priority date of the claim. Defences of laches and acquiescence are available under Canadian law. Patent exhaustion may also be applicable, including the right to repair.  

In most patent infringement actions each of the adversarial parties will retain experts to provide opinion evidence relating to technical and accounting matters. The experts work with counsel but are required to be impartial and to assist the court on technical matters. Although “hot tubbing” of experts is potentially part of the Canadian practice, it is rarely used and not required. It is very rare for the court to have its own expert in patent infringement cases. Experts must file written reports before trial and are not subject to pre-trial examination.  

Although it is possible for a party to seek to have patent claims construed before trial, in most cases the claim construction is subject to expert evidence and is carried out by the court as part of the ultimate decision-making as reflected in the reasons for judgment.  

Although an amicus brief is potentially available in patent infringement cases, it is virtually never sought by the court. 

Proceedings for patent revocation, or invalidation, are typically brought in the Federal Court of Canada. The Federal Court has exclusive jurisdiction to issue declarations that a patent is invalid in rem, or at law. Patent validity can be challenged through an impeachment action brought by any “interested person” or as a counterclaim to a patent infringement action. Courts have interpreted the “interested person” requirement broadly and there is no requirement for patent infringement litigation to have been contemplated, threatened or even foreseeable. Provincial superior courts, which may adjudicate patent infringement, cannot declare a patent invalid in rem, but can adjudicate the enforceability or validity of a patent only as between the parties and can declare a patent invalid in personam.   

There are several grounds for invalidating a patent in a court proceeding. Invalidity attacks of anticipation (lack of novelty) and obviousness (lack of inventiveness) are based on prior public disclosures. Grounds of insufficient disclosure, overbreadth, ambiguity, and inutility are based upon the bargain theory that a patentee should only be granted a monopoly in return for full and clear disclosure of a useful invention. Other technical grounds for invalidity include unpatentable subject matter, double patenting and material untrue allegations in the petition.   

While not common, patents can also be challenged at the Patent Office through re-examination proceedings. In re-examination proceedings, only anticipation and obviousness invalidity attacks are available, and only based on prior written disclosures. Prior public use or sale cannot be asserted on re-examination. The other invalidity attacks discussed above are not available to be asserted on re-examination. Additionally, re-examination should be used with caution by those seeking to avoid the patent, given that ‎a patentee may use re-examination to amend its claims to avoid the cited prior art, resulting in stronger patent claims.  

The Patent Act provides that the presence of any invalid claims in a patent does not affect the validity of the remaining claims. For prior art-based attacks, it is not uncommon for the broadest independent claims to be invalid, while some narrower dependent claims remain valid. However, other invalidity attacks, such as insufficient disclosure or material untrue allegations in the petition, are not measured against the claims and may result in the entire patent being invalidated if successful.   

Patent claims cannot be amended through litigation in the Federal Court of Canada. Claims can only be amended through proceedings before the Canadian Patent Office.  

During a re-examination proceeding, a granted patent re-enters prosecution before the Patent Office based on a newly identified prior art reference. A patentee is granted the opportunity to amend the claims, as if prosecution of the underlying application was pending. Re-examination can allow the patentee to strengthen a patent claim to avoid the cited prior art and is a significant reason for re-examination proceedings not being commonly used to challenge Canadian patents.   

Notwithstanding any pending patent impeachment action, a patentee has the opportunity to apply for re-issuance of a patent during the first four years after grant. Re-issuance allows the patentee to surrender the existing patent and receive an amended patent if certain conditions are satisfied. The patentee must establish that the original patent was defective or inoperative by reason of insufficient description, or by reason of the patentee claiming more or less than it had a right to claim. The patentee must also establish that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention. Re-issuance can correct minor errors in the specification or claims and can be used to narrow or broaden the claimed monopoly. However, re-issuance is not intended to save a fundamentally invalid patent.   

Notwithstanding any patent impeachment action, a patentee may also file a disclaimer to narrow a patent’s monopoly. The patentee must establish that by mistake, accident or inadvertence and without any wilful intent to defraud or mislead the public, the patent claimed more than the patentee was entitled to. Once a disclaimer is made, the subject matter identified is excluded from the patent monopoly and not assertable, even if the disclaimer is not accepted and deemed ineffective.  

Patent validity and patent infringement are often adjudicated together. Patent impeachment actions brought as a counterclaim to patent infringement actions will almost always be heard together with the infringement action.   

Re-examination proceedings at the Patent Office may be commenced in parallel to patent infringement proceedings before the courts. The Federal Court has the jurisdiction to stay re-examination proceedings pending the resolution of infringement or impeachment proceedings where it is in the interests of justice to do so.  

Almost all patent infringement litigation in Canada takes place in the Federal Court. The Court does not have divisions or districts and venue-shopping is not typically an issue. The Court is bilingual and proceedings may be in French or English or a mixture. There is no special set of rules for patent proceedings but the Court is highly experienced in patent matters.  

Most patent infringement disputes are brought as actions (previous regulations which permitted pharmaceutical disputes to be pursued by way of application are now replaced by an action-based approach). Although the Federal Court is more receptive to dispositive pre-trial hearings (summary judgment and trial of an issue, for example), it remains the case that most patent infringement actions that are not settled will go to a trial where liability is determined. In many cases the question of monetary remedies is deferred to a second hearing to occur only where liability is established.  

The trial is invariably before a single judge of the Federal Court. Although there is a discovery process that is potentially extensive, no pre-trial examination of experts or specific witnesses is typically permitted. Expert reports are exchanged before trial but experts typically give oral testimony in chief despite being restricted to opinions set out in their reports. Most evidence of fact witnesses is provided in person (or by video link) for both evidence in chief and in cross-examination. A “will-say” statement is typically provided before a witness appears at a trial hearing.  

The parties to a patent infringement trial are able to appeal the result to a three-judge panel of the Federal Court of Appeal. No leave to appeal is required. 

The Federal Court, where almost all patent infringement actions take place, does not have juries. There is a roster of judges in the Federal Court who are primarily assigned to patent cases. However, this is not required by a formal rule but is an administrative preference of the Court, only. There are several judges on the Federal Court who practised as patent lawyers before being appointed to the bench but there are also several judges who have no specific technical or patent background who regularly hear patent cases.  

The request for a French-language speaking or bilingual judge will tend to result in a hearing in the Province of Quebec. However, this is not universally the case and there is no ability to select a particular venue or judge in the Federal Court practice.  

Although patent infringement cases may be brought to a particular provincial court, as opposed to the Federal Court, it is not frequently done and there is no ability to select the decision-maker in the provincial court.  

Although mediation or other alternative dispute resolution (ADR) is not required in a patent case, the Federal Court will encourage the parties to seek ADR before trial during mandatory pre-trial conferences. The Federal Court provides no-fee ADR services. It is typical to have one or more formal mediation sessions with a mediator and facilities both provided by the Federal Court.  

Once a patent infringement action is commenced in court, it is unlikely that the action will be stayed. Although post-grant proceedings may take place in the Patent Office, such proceedings are not often pursued and courts will be unlikely to stay proceedings due to actions in the Patent Office.   

It is possible for multiple actions to be taking place in different courts relating to a single patent, for example where infringement and validity are contested in the Federal Court and at the same time ownership issues are in dispute in a provincial court. In such a circumstance, it is possible for one of the two actions to be stayed.   

A patentee that prevails in establishing infringement is entitled to damages from infringement. As an alternative to damages, the successful patentee may seek the disgorgement of the defendant’s profits from infringement. This is an equitable remedy available at the discretion of the trial judge. In addition to damages or profits, a patentee may also obtain a reasonable royalty for acts performed after the publication of a pending application that would constitute infringement after the patent grants. Pre-and post-judgment interest are available on monetary remedies awarded.  

A defendant does not need to have notice of a patent or to act wilfully to be liable for damages caused by infringement. However, there are no provisions for elevated damages for wilful infringement. Punitive damages may be available in exceptional circumstances where the defendant’s conduct is egregious, high handed, callous and oppressive nature. In considering punitive damages, the court may also consider whether the damages awarded are sufficient to punish and deter infringement.   

A successful patentee is almost always awarded a permanent injunction until the expiry of the patent. This is a remedy that will only be denied in “very rare circumstances” on consideration of all the equitable factors and surrounding circumstances. The court may deny an injunction where a patentee has delayed or failed to prosecute its patents in good faith, or where it pursues an overly aggressive licensing strategy, especially if the patentee is a non-practising entity. A patentee may also obtain an order for delivery-up or destruction of infringing materials.   

Awards of legal fees are discretionary but are typically made in favour of the successful party. By default, costs are awarded according to Tariff B of the Federal Courts Rules, SOR/98-106. The tariffs assign a range of dollar values recoverable for the various steps taken in a proceeding. However, in complex patent cases between sophisticated parties, there is a trend towards awarding costs at 25-50% of legal fees paid to counsel plus full recovery of reasonable and necessary disbursements.  

A defendant that succeeds in avoiding infringement is typically awarded legal fees. Legal fees may be determined according to the Federal Court’s tariff or as a percentage of fees paid to counsel as discussed at 6.1 Remedies for the Patentee. Reasonable and necessary disbursements are also usually available.  

Awards of legal fees are discretionary and can be reduced where a defendant has acted inequitably or complicated the proceeding with unmeritorious invalidity arguments.  

A prevailing defendant may also be entitled to damages if they were wrongly held out of the market place by an interlocutory injunction or by the operation of the regulatory scheme governing second entry pharmaceuticals provided by the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133.   

Patentees are entitled to legal remedies, like damages, and/or equitable remedies including injunctions and a disgorgement of the profits from infringement. The Federal Court of Canada is a statutory court, without any inherent jurisdiction, so only remedies within the powers expressly granted to the Federal Court are available.  

As noted at 6.1 Remedies for the Patentee, an injunction is almost always granted following a finding of patent infringement. While not commonly exercised, the court has the discretion to delay the coming into force of an injunction and may do so where it is in the interests of justice, having considered the relevant circumstances and balancing equitable factors. In delaying the onset of an injunction, the court may consider the time and effort required to switch to a non-infringing alternative and the effect that an immediate injunction would have on the Canadian public, including through unemployment of the infringer’s workforce.   

In the Federal Court of Canada, where most patent infringement proceedings are brought, an injunction granted will remain in force while any appeal is pending. If an appellant wants to have the injunction stayed pending determination of an appeal, the appellant must make a motion to the Federal Court of Appeal seeking a stay of the injunction. To succeed in obtaining a stay, the appellant must establish that its appeal raises a genuine issue, that the appellant will suffer irreparable harm if no stay is granted, and that the balance of convenience favours granting a stay. This is a difficult test to satisfy and most appellants fail in establishing the irreparable harm required.   

Decisions of the Federal Court on the infringement and validity of patents create a right of appeal to the Federal Court of Appeal. Decisions of the Federal Court of Appeal may be appealed to the Supreme Court of Canada if leave to appeal is granted. The procedures for appeals in patent litigation are the same as appeals in other types of litigation.   

Decisions of the Patent Office may be challenged through a judicial review application‎, or in some circumstances by way of an appeal, ‎brought in the Federal Court. Decisions of the Federal Court on judicial review applications are appealable to the Federal Court of Appeal as of right. 

Appeals from decisions of the Federal Court are subject to a standard of review of correctness on questions of law and a deferential standard called “palpable and overriding error” on questions of fact or mixed questions of fact and law.  

The interpretation of the claims of a patent is a question of law and subject to a correctness standard, however some deference is typically afforded to the trial judge since claim interpretation is heavily reliant on expert evidence. Questions of patent infringement and validity are questions of fact or mixed fact and law and are subject to the palpable and overriding error standard.   

Applications for judicial review from decisions of the Patent Office are heard by the Federal Court and are subject to a deferential standard of review of reasonableness. 

There are no required steps that must be taken before an action for patent infringement can be commenced by filing a statement of claim. This allows a patentee to limit the initial costs of a patent infringement lawsuit to the preparation of a statement of claim and modest court filing fees.   

Preliminary procedural issues in a patent infringement action can often be addressed on consent or informally before a case management judge, allowing the parties to control costs.

Court fees for proceedings in the Federal Court of Canada are provided in Schedule A of the Federal Courts Rules, SOR/98-106. Patent proceedings are treated the same as other proceedings in the Federal Court and modest fixed fees are payable for various steps taken. For example, a plaintiff commencing an action must pay a filing fee of CAD150. Where a hearing exceeds three days, the parties split a daily court fee of CAD150.  

Each litigant is responsible for paying fees for certain steps taken in a proceeding, as provided in Schedule A of the Federal Courts Rules, SOR/98-106.  

While awards of legal costs are fully discretionary, the Federal Court of Canada typically operates on a loser pays basis, where the successful party has a portion of its legal costs paid by the unsuccessful party. Complex patent cases between sophisticated litigants often result in the successful party being granted 25-50% of its counsel fees and full recovery of reasonable expenses incurred, including fees paid to expert witnesses.   

In determining the amount to be awarded, the Court will consider the outcome of the proceeding as well as other factors including:  

• the amounts claimed and recovered;  
• the importance and complexity of the issues;  
• the amount of work required;  
• the conduct of the parties;  
• any offers to settle; and  
• any public interest in the litigation.  

ADR is commonly used in resolving patent proceedings. It is estimated that 19 out of 20 patent infringement actions before the Federal Court of Canada are settled without requiring a trial. Before a patent action can proceed to trial, the parties must have considered and attempted settlement negotiations. This commonly involves judicially assisted mediation. The Federal Court of Canada provides mediation services to litigants free of charge. Experienced members of the Federal Court judiciary act as mediators and explore the possibility of negotiated settlement.  

There are no imposed requirements for the transferring of patent rights. It is recommended that transfers be in writing and signed by the parties involved to reduce uncertainty about the transfer. It is recommended that any transfer clearly identify: 

• the parties involved;  
• the intellectual property being assigned such as the registration numbers; 
• any particular rights under the registered intellectual property, such as field of use and geography; and  
• the consideration/royalties to be received.  

Assignments or transfers of patent rights may be registered with the Patent Office but this is optional. There are benefits to registration of transfers because a transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded. Copies of the assignments may be recorded with the Patent Office so these documents are available on the public record but this is also optional. 

See 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights. 

There are no imposed requirements for the licensing of patent rights. It is recommended that the licence be in writing and signed by the parties involved to reduce uncertainty about the licence. See 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights, for the particulars that any licence should clearly identify.

Since a licensee may pursue patent infringement and financial remedies in court under the Patent Act as a “person claiming under the patentee”, a licence agreement may also deal with the rights and responsibilities for pursing third-party infringement of the intellectual property rights.  

There is no requirement to register a patent licence with the Patent Office. 

See 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights.