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Budget Implementation Act, 2018, No. 2 (S.C. 2018, c. 27)

Assented to 2018-12-13

PART 4Various Measures (continued)

DIVISION 7Intellectual Property Strategy (continued)

SUBDIVISION AR.S., c. P-4Patent Act (continued)

 The Act is amended by adding the following after section 76.1:

Written Demands

Marginal note:Requirements

  • 76.2 (1) Any written demand received by a person in Canada, that relates to an invention that is patented in Canada or elsewhere or that is protected by a certificate of supplementary protection in Canada or by analogous rights granted elsewhere, must comply with the prescribed requirements.

  • Marginal note:Federal Court

    (2) Any person who receives a written demand that does not comply with the prescribed requirements, and any person who is aggrieved as a result of the receipt by another person of such a written demand, may bring a proceeding in the Federal Court.

  • Marginal note:Relief

    (3) If the Federal Court is satisfied that the written demand does not comply with the prescribed requirements, it may grant any relief that it considers appropriate, including by way of recovery of damages, punitive damages, an injunction, a declaration or an award of costs.

  • Marginal note:Liability — special case

    (4) If a corporation sends a written demand that does not comply with the prescribed requirements, is notified of those requirements and of the demand’s defects in respect of those requirements and does not, within a reasonable time after receiving the notice of those defects, remedy them, the corporation’s officers, directors, agents or mandataries are jointly and severally, or solidarily, liable with the corporation if they directed, authorized, assented to, acquiesced in or participated in the sending of the demand.

  • Marginal note:Due diligence

    (5) A person is not to be found liable under subsection (4) if they establish that they exercised due diligence to ensure that the written demand complies with the prescribed requirements.

Marginal note:Regulations

76.3 The Governor in Council may make regulations for the purposes of section 76.2, including regulations

  • (a) respecting what constitutes a written demand or an aggrievement;

  • (b) respecting the requirements with which a written demand must comply;

  • (c) respecting factors that the Federal Court may consider, must consider or is not permitted to consider in making an order under subsection 76.2(3); and

  • (d) respecting the circumstances in which a defendant is not to be found liable in a proceeding brought under subsection 76.2(2).

 Section 78.2 of the Act is replaced by the following:

Marginal note:Special case

  • 78.2 (1) Subject to subsections (2) and (3), any matter arising on or after the day on which this subsection comes into force in respect of a patent issued on the basis of an application whose filing date is before October 1, 1989 shall be dealt with and disposed of in accordance with sections 38.1, 45, 46 and 48.1 to 48.5 and with the provisions of this Act, other than sections 46 and 56, as they read immediately before October 1, 1989.

  • Marginal note:Application of amendments to Act

    (2) The provisions of this Act that apply as provided in subsection (1) shall be read subject to any amendments to this Act, other than the amendments that came into force on October 1, 1989 or October 1, 1996 or that were made by sections 188, 189, and 195 of the Budget Implementation Act, 2018, No 2.

  • Marginal note:October 1, 1996

    (3) Section 56 of the Patent Act, as it read immediately before October 1, 1989, applies in respect of a purchase, construction or acquisition made before October 1, 1996 of an invention for which a patent is issued on the basis of an application filed before October 1, 1989.

 The Act is amended by adding the following after section 123:

Legal Proceedings in Respect of Certificates of Supplementary Protection

Marginal note:Admissible in evidence

123.1 A written communication, or any part of such a communication, that is admissible under section 53.1 in respect of a patent set out in a certificate of supplementary protection may be admitted into evidence to any action or proceeding respecting the certificate of supplementary protection to rebut any representation made by the holder of the certificate of supplementary protection in the action or proceeding as to the construction of a claim in the patent set out in the certificate of supplementary protection.

  •  (1) Paragraph 124(1)(f) of the Act is replaced by the following:

    • (f) subsection 55.3(1), with any reference to “patent” to be read as a reference to “certificate of supplementary protection”;

  • (2) Section 124 of the Act is amended by adding the following after subsection (2):

    • Marginal note:Regulations

      (2.1) The Governor in Council may make regulations respecting

      • (a) factors that the court may consider, must consider or is not permitted to consider in determining whether an act is, or is not, committed for the purpose of experimentation relating to the subject-matter of the certificate of supplementary protection; and

      • (b) circumstances in which an act is, or is not, committed for the purpose of experimentation relating to the subject-matter of the certificate of supplementary protection.

 Paragraph 134(1)(f) of the English version of the Act is replaced by the following:

  • (f) respecting the circumstances in which any patentee or holder of a certificate of supplementary protection may or must be represented by another person in respect of a certificate of supplementary protection or an application for such a certificate;

Transitional Provisions

Marginal note:Section 52.1 of Patent Act

 Section 52.1 of the Patent Act applies in respect of any action or proceeding that has not been finally disposed of on the coming into force of that section.

Marginal note:Sections 53.1 and 123.1 of Patent Act

 Sections 53.1 and 123.1 of the Patent Act apply in respect of any action or proceeding that has not been finally disposed of on the coming into force of that section 53.1.

Marginal note:Section 55.3 of Patent Act

 Section 55.3 and paragraph 124(1)(f) of the Patent Act apply in respect of any action or proceeding that has not been finally disposed of on the coming into force of that section 55.3.

Marginal note:Section 56 of Patent Act

  •  (1) Section 56 of the Patent Act, as enacted by section 194 of this Act, applies only in respect of an action or proceeding in respect of a patent issued on the basis of an application whose filing date is on or after October 1, 1989 that is commenced on or after October 29, 2018.

  • Marginal note:Section 56 — previous version

    (2) Section 56 of the Patent Act, as it read immediately before the coming into force of section 194 of this Act, applies in respect of any action or proceeding that is in respect of a patent issued on the basis of an application whose filing date is on or after October 1, 1989 and that is commenced before October 29, 2018.

2014, c. 39Related Amendments to the Economic Action Plan 2014 Act, No. 2

 Subsection 118(5) of the Economic Action Plan 2014 Act, No. 2 is amended by replacing the paragraph 12(1)(j.75) that it enacts with the following:

  • (j.75) establishing a period for the purposes of subsections 55.11(3), (7) and (9);

 Section 119 of the Act is amended by repealing the section 15.1 that it enacts.

 Subsection 125(1) of the Act is amended by replacing the subsection 28.4(2.1) that it enacts with the following:

  • Marginal note:Request deemed never filed

    (2.1) Except for the purposes of subsection 10(3), a request for priority is deemed never to have been made if the request is not made in accordance with the regulations or if the applicant does not submit the information, other than the number of each previously regularly filed application, required under subsection (2).

  •  (1) Section 136 of the Act is amended by replacing the portion of the subsection 55.11(1) before paragraph (a) that it enacts with the following:

    Marginal note:Exception — third party rights

    • 55.11 (1) This section applies only in respect of the following patents and certificates of supplementary protection that set out the following patents:

  • (2) Section 136 of the Act is amended by replacing the subsections 55.11(2) to (4) that it enacts with the following:

    • Marginal note:Act committed during period

      (2) If, during a period that is established by regulations made under paragraph 12(1)(j.74) that relates to a patent, a person, in good faith, committed an act that would otherwise constitute an infringement of that patent, that act is not an infringement of the patent.

    • Marginal note:Act committed after period

      (3) Subject to subsection (4), if — during a period established by regulations made under paragraph 12(1)(j.75) that relates to a patent — a person, in good faith, committed an act that would otherwise constitute an infringement of that patent or made serious and effective preparations to commit that act, it is not an infringement of the patent or any certificate of supplementary protection that sets out the patent if the person commits the act after that period.

    • Marginal note:Transfer

      (4) If the act referred to in subsection (3) is committed or the preparations to commit it are made in the course of a business and that business, or the part of that business in the course of which the act was committed or the preparations were made, is subsequently transferred,

      • (a) subsection (3) or paragraph (b), as the case may be, does not apply in respect of an act committed by the transferor after the transfer; and

      • (b) it is not an infringement of the patent or any certificate of supplementary protection that sets out the patent if the transferee commits the act after the transfer.

    • Marginal note:Use or sale of article

      (5) The use or sale of an article is not an infringement of a patent or any certificate of supplementary protection that sets out the patent if that article was acquired, directly or indirectly, from a person who, at the time they disposed of it, could, under subsection (2) or (3) or paragraph (4)(b), sell the article without infringing the patent or the certificate.

    • Marginal note:Use of service

      (6) The use of a service is not an infringement of a patent if the service is provided by a person who, under subsection (2) or (3) or paragraph (4)(b), is able to provide it without infringing the patent.

    • Marginal note:Use of article

      (7) Subject to subsection (8), the use of an article is not an infringement of a patent or any certificate of supplementary protection that sets out the patent if the article was acquired, directly or indirectly, from a person who, during a period that is established by regulations made under paragraph 12(1)(j.75) that relates to that patent, in good faith, made or sold, or made serious and effective preparations to make or sell, an article that is substantially the same as the one used, for that use.

    • Marginal note:Transfer

      (8) If the making or selling referred to in subsection (7) was done or the preparations to do so were made in the course of a business and that business, or the part of that business in the course of which the making or selling was done or the preparations were made, is subsequently transferred, then

      • (a) subsection (7) or paragraph (b), as the case may be, does not apply in respect of an article that is made or sold by the transferor after the transfer; and

      • (b) it is not an infringement of a patent or a certificate of supplemental protection referred to in subsection (7) to use an article for the use referred to in that subsection if it was made or sold for that use by the transferee after the transfer.

    • Marginal note:Use of service

      (9) Subject to subsection (10), the use of a service is not an infringement of a patent if the service is provided by a person who, during a period that is established by regulations made under paragraph 12(1)(j.75) that relates to that patent, provided, or made serious and effective preparations to provide, a service that is substantially the same as the one used, for that use.

    • Marginal note:Transfer

      (10) If, during the period referred to in subsection (9), the service was provided or the preparations to provide it were made in the course of a business and that business, or the part of that business in the course of which the service was provided or the preparations to do so were made, is subsequently transferred, then, after the transfer

      • (a) the transferor is deemed to no longer be the person referred to in subsection (9) for the purposes of that subsection; and

      • (b) the transferee is deemed to be the person who provided the service for the purposes of subsection (9).

 

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