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

Infringement (continued)

Marginal note:Exception — experimentation

  •  (1) An act committed for the purpose of experimentation relating to the subject-matter of a patent is not an infringement of the patent.

  • Marginal note:Regulations

    (2) 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 set out in subsection (1); and

    • (b) circumstances in which an act is, or is not, committed for the purpose set out in subsection (1).

  • 2018, c. 27, s. 193.

Marginal note:Exception — prior use

  •  (1) Subject to subsection (2), if — before the claim date of a claim in a patent — a person, in good faith, committed an act that would otherwise constitute an infringement of the patent in respect of that claim, or made serious and effective preparations to commit such an act, it is not an infringement of the patent or any certificate of supplementary protection that sets out the patent, in respect of that claim, if the person commits the same act on or after that claim date.

  • Marginal note:Transfer

    (2) If the act referred to in subsection (1) 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 (1) or paragraph (b), as the case may be, does not apply to 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, in respect of the claim, if the transferee commits the act after the transfer.

  • Marginal note:Exception — use or sale of article

    (3) 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 sell it without infringing the patent or the certificate

    • (a) because the person, before the claim date of a claim in the patent, in good faith, committed an act that would otherwise constitute an infringement of the patent in respect of that claim and they disposed of the article before that claim date; or

    • (b) under subsection (1) or paragraph (2)(b).

  • Marginal note:Exception — use of service

    (4) The use of a service is not an infringement of a patent if the service is provided by a person who, under subsection (1) or paragraph (2)(b), is able to provide it without infringing the patent.

  • Marginal note:Non-application

    (5) Subsection (1) or paragraph (3)(a) does not apply if the person referred to in that subsection or that paragraph was able, as the case may be, to commit the act or make the preparations to commit the act only because they obtained knowledge of the subject-matter defined by the claim, directly or indirectly, from the applicant of the application on the basis of which the patent was granted and they knew that the applicant was the source of the knowledge.

  • Marginal note:Exception — use of article

    (6) Subject to subsection (7), the use of an article is not an infringement of a patent or any certificate of supplementary protection that sets out the patent, in respect of a claim, if the article was acquired, directly or indirectly, from a person who, before the claim date of that claim, 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

    (7) If the making or selling referred to in subsection (6) 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 (6) 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 the patent or any certificate of supplementary protection that sets out the patent, in respect of a claim referred to in subsection (6), 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:Non-application

    (8) Subsection (6) does not apply if the person referred to in that subsection was able to make or sell, or to make the preparations to make or sell, the article only because they obtained knowledge of the use defined by the claim, directly or indirectly, from the applicant of the application on the basis of which the patent was granted and they knew that the applicant was the source of the knowledge.

  • Marginal note:Exception — use of service

    (9) Subject to subsection (10), the use of a service is not an infringement of a patent in respect of a claim if the service is provided by a person who, before the claim date of that claim, in good faith, 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 the service referred to in subsection (9) 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).

  • Marginal note:Non-application

    (11) Subsection (9) does not apply if the person referred to in that subsection was able to provide the service or make the preparations to provide it only because they obtained knowledge of the use defined by the claim, directly or indirectly, from the applicant of the application on the basis of which the patent was granted and they knew that the applicant was the source of the knowledge.

  • R.S., 1985, c. P-4, s. 56;
  • R.S., 1985, c. 33 (3rd Supp.), s. 22;
  • 1993, c. 44, ss. 194, 199;
  • 2018, c. 27, s. 194.

Marginal note:Injunction may issue

  •  (1) In any action for infringement of a patent, the court, or any judge thereof, may, on the application of the plaintiff or defendant, make such order as the court or judge sees fit,

    • (a) restraining or enjoining the opposite party from further use, manufacture or sale of the subject-matter of the patent, and for his punishment in the event of disobedience of that order, or

    • (b) for and respecting inspection or account,

    and generally, respecting the proceedings in the action.

  • Marginal note:Appeal

    (2) An appeal lies from any order made under subsection (1) in the same circumstances and to the same court as from other judgments or orders of the court in which the order is made.

  • R.S., c. P-4, s. 59.

Marginal note:Invalid claims not to affect valid claims

 When, in any action or proceeding respecting a patent that contains two or more claims, one or more of those claims is or are held to be valid but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claims.

  • R.S., c. P-4, s. 60.

Marginal note:Defence

 The defendant, in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.

  • R.S., c. P-4, s. 61.

Impeachment

Marginal note:Impeachment of patents or claims

  •  (1) A patent or any claim in a patent may be declared invalid or void by the Federal Court at the instance of the Attorney General of Canada or at the instance of any interested person.

  • Marginal note:Declaration as to infringement

    (2) Where any person has reasonable cause to believe that any process used or proposed to be used or any article made, used or sold or proposed to be made, used or sold by him might be alleged by any patentee to constitute an infringement of an exclusive property or privilege granted thereby, he may bring an action in the Federal Court against the patentee for a declaration that the process or article does not or would not constitute an infringement of the exclusive property or privilege.

  • Marginal note:Security for costs

    (3) With the exception of the Attorney General of Canada or the attorney general of a province, the plaintiff in any action under this section shall, before proceeding therein, give security for the costs of the patentee in such sum as the Federal Court may direct, but a defendant in any action for the infringement of a patent is entitled to obtain a declaration under this section without being required to furnish any security.

  • R.S., c. P-4, s. 62;
  • R.S., c. 10(2nd Supp.), s. 64.
 
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