Patent Act (R.S.C., 1985, c. P-4)

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Act current to 2019-05-22 and last amended on 2018-12-13. Previous Versions

Infringement (continued)

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  • (2) and (3) [Repealed, 2001, c. 10, s. 2]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

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
 
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