Patent Act (R.S.C., 1985, c. P-4)

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Act current to 2019-01-30 and last amended on 2018-12-13. Previous Versions

Assignments and Devolutions (continued)

Marginal note:Patents to be assignable

  •  (1) Every patent issued for an invention is assignable in law, either as to the whole interest or as to any part thereof, by an instrument in writing.

  • Marginal note:Registration

    (2) Every assignment of a patent, and every grant and conveyance of any exclusive right to make and use and to grant to others the right to make and use the invention patented, within and throughout Canada or any part thereof, shall be registered in the Patent Office in the manner determined by the Commissioner.

  • Marginal note:Attestation

    (3) No assignment, grant or conveyance shall be registered in the Patent Office unless it is accompanied by the affidavit of a subscribing witness or established by other proof to the satisfaction of the Commissioner that the assignment, grant or conveyance has been signed and executed by the assignor and by every other party thereto.

  • R.S., 1985, c. P-4, s. 50;
  • R.S., 1985, c. 33 (3rd Supp.), s. 20.

Marginal note:When assignment void

 Every assignment affecting a patent for invention, whether it is one referred to in section 49 or 50, is void against any subsequent assignee, unless the assignment is registered as prescribed by those sections, before the registration of the instrument under which the subsequent assignee claims.

  • R.S., c. P-4, s. 53.

Marginal note:Jurisdiction of Federal Court

 The Federal Court has jurisdiction, on the application of the Commissioner or of any person interested, to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.

  • R.S., c. P-4, s. 54;
  • R.S., c. 10(2nd Supp.), s. 64.

Standard-Essential Patents

Marginal note:Subsequent patentee or holder bound

  •  (1) A licensing commitment in respect of a standard-essential patent that binds the patentee, binds any subsequent patentee and any holder of any certificate of supplementary protection that sets out that patent.

  • Marginal note:Subsequent holder bound

    (2) If a certificate of supplementary protection sets out a standard-essential patent, a licensing commitment that binds the holder of that certificate of supplementary protection, binds any subsequent holder of the certificate of supplementary protection.

  • Marginal note:Application

    (3) Subsections (1) and (2) apply despite any other Act of Parliament and any decision or order made under such an Act.

  • 2018, c. 27, s. 190.

Marginal note:Regulations

 The Governor in Council may make regulations, for the purposes of section 52.1, respecting what constitutes, or does not constitute, a licensing commitment or a standard-essential patent.

  • 2018, c. 27, s. 190.

Legal Proceedings in Respect of Patents

Marginal note:Void in certain cases, or valid only for parts

  •  (1) A patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.

  • Marginal note:Exception

    (2) Where it appears to a court that the omission or addition referred to in subsection (1) was an involuntary error and it is proved that the patentee is entitled to the remainder of his patent, the court shall render a judgment in accordance with the facts, and shall determine the costs, and the patent shall be held valid for that part of the invention described to which the patentee is so found to be entitled.

  • (3) [Repealed, 2017, c. 6, s. 38]

  • R.S., 1985, c. P-4, s. 53;
  • 2017, c. 6, s. 38.

Marginal note:Admissible in evidence

  •  (1) In any action or proceeding respecting a patent, a written communication, or any part of such a communication, may be admitted into evidence to rebut any representation made by the patentee in the action or proceeding as to the construction of a claim in the patent if

    • (a) it is prepared in respect of

      • (i) the prosecution of the application for the patent,

      • (ii) a disclaimer made in respect of the patent, or

      • (iii) a request for re-examination, or a re-examination proceeding, in respect of the patent; and

    • (b) it is between

      • (i) the applicant for the patent or the patentee; and

      • (ii) the Commissioner, an officer or employee of the Patent Office or a member of a re-examination board.

  • Marginal note:Divisional application

    (2) For the purposes of this section, the prosecution of a divisional application is deemed to include the prosecution of the original application before that divisional application is filed.

  • Marginal note:Reissued patent

    (3) For the purposes of this section, a written communication is deemed to be prepared in respect of the prosecution of the application for a reissued patent if it is prepared in respect of

    • (a) the prosecution of the application for the patent that was surrendered and from which the reissued patent results; or

    • (b) the application for reissuance.

  • 2018, c. 27, s. 191.

Infringement

Marginal note:Jurisdiction of courts

  •  (1) An action for the infringement of a patent may be brought in that court of record that, in the province in which the infringement is said to have occurred, has jurisdiction, pecuniarily, to the amount of the damages claimed and that, with relation to the other courts of the province, holds its sittings nearest to the place of residence or of business of the defendant, and that court shall decide the case and determine the costs, and assumption of jurisdiction by the court is of itself sufficient proof of jurisdiction.

  • Marginal note:Jurisdiction of Federal Court

    (2) Nothing in this section impairs the jurisdiction of the Federal Court under section 20 of the Federal Courts Act or otherwise.

  • R.S., 1985, c. P-4, s. 54;
  • 2002, c. 8, s. 182.

Marginal note:Liability for patent infringement

  •  (1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement.

  • Marginal note:Liability damage before patent is granted

    (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the application became open to public inspection under that section.

  • Marginal note:Patentee to be a party

    (3) Unless otherwise expressly provided, the patentee shall be or be made a party to any proceeding under subsection (1) or (2).

  • Marginal note:Deemed action for infringement

    (4) For the purposes of this section and sections 54 and 55.01 to 59, any proceeding under subsection (2) is deemed to be an action for the infringement of a patent and the act on which that proceeding is based is deemed to be an act of infringement of the patent.

  • R.S., 1985, c. P-4, s. 55;
  • R.S., 1985, c. 33 (3rd Supp.), s. 21;
  • 1993, c. 15, s. 48.

Marginal note:Limitation

 No remedy may be awarded for an act of infringement committed more than six years before the commencement of the action for infringement.

  • 1993, c. 15, s. 48.

Marginal note:Burden of proof for patented process

 In an action for infringement of a patent granted for a process for obtaining a new product, any product that is the same as the new product shall, in the absence of proof to the contrary, be considered to have been produced by the patented process.

  • 1993, c. 2, s. 4, c. 44, s. 193.

Marginal note:Exception

  •  (1) It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province or a country other than Canada that regulates the manufacture, construction, use or sale of any product.

  • (2) and (3) [Repealed, 2001, c. 10, s. 2]

  • Marginal note:Regulations

    (4) The Governor in Council may make regulations respecting the infringement of any patent that, directly or indirectly, could result or results from the making, construction, use or sale of a patented invention in accordance with subsection (1), including regulations

    • (a) respecting the conditions that must be fulfilled before a document — including a notice, certificate or permit — concerning any product to which a patent may relate may be issued to any person under any Act of Parliament that regulates the manufacture, construction, use or sale of that product, in addition to any conditions provided for by or under that Act;

    • (b) respecting the earliest day on which such a document may be issued to a person and the earliest day on which it may take effect, and respecting the manner in which each day is to be determined;

    • (c) respecting the issuance, suspension or revocation of such a document in circumstances where, directly or indirectly, the document’s issuance could result or results in the infringement of a patent;

    • (d) respecting the prevention and resolution of disputes with respect to the day on which such a document may be issued or take effect;

    • (e) respecting the prevention and resolution of disputes with respect to the infringement of a patent that could result directly or indirectly from the manufacture, construction, use or sale of a product referred to in paragraph (a);

    • (f) respecting the resolution of disputes with respect to the infringement of a patent that results directly or indirectly from the manufacture, construction, use or sale of such a product;

    • (g) conferring rights of action with respect to disputes referred to in any of paragraphs (d) to (f);

    • (h) restricting or excluding the application of other rights of action under this Act or another Act of Parliament to disputes referred to in any of paragraphs (d) to (f);

    • (i) designating the court of competent jurisdiction in which a proceeding with respect to rights of action referred to in paragraph (g) is to be heard;

    • (j) respecting such proceedings, including the procedure of the court in the matter, the defences that may be pleaded, the remedies that may be sought, the joinder of parties and of rights of action and the consolidation of other proceedings, the decisions and orders the court may make and any appeals from those decisions and orders; and

    • (k) specifying who may be an interested person for the purposes of subsection 60(1) with respect to disputes referred to in paragraph (e).

  • Marginal note:Inconsistency or conflict

    (5) In the event of any inconsistency or conflict between

    • (a) this section or any regulations made under this section, and

    • (b) any Act of Parliament or any regulations made thereunder,

    this section or the regulations made under this section shall prevail to the extent of the inconsistency or conflict.

  • Marginal note:For greater certainty

    (6) For greater certainty, subsection (1) does not affect any exception to the exclusive property or privilege granted by a patent that exists at law in respect of acts done privately and on a non-commercial scale or for a non-commercial purpose.

  • 1993, c. 2, s. 4;
  • 2001, c. 10, s. 2;
  • 2017, c. 6, s. 39;
  • 2018, c. 27, s. 192.
 
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