Patent Act (R.S.C., 1985, c. P-4)

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Act current to 2019-02-28 and last amended on 2018-12-13. Previous Versions

Impeachment (continued)

 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 23]

Judgments

Marginal note:Judgment voiding patent

 A patent, or part of a patent, that is voided by a judgment shall be and be held to have been void and of no effect, unless the judgment is reversed on appeal as provided in section 63.

  • R.S., 1985, c. P-4, s. 62;
  • 1993, c. 15, s. 49;
  • 2017, c. 6, s. 40.

Marginal note:Appeal

 Every judgment voiding in whole or in part or refusing to void in whole or in part any patent is subject to appeal to any court having appellate jurisdiction in other cases decided by the court by which the judgment was rendered.

  • R.S., c. P-4, s. 65.

Conditions

 [Repealed, 1993, c. 44, s. 195]

Marginal note:Abuse of rights under patents

  •  (1) The Attorney General of Canada or any person interested may, at any time after the expiration of three years from the date of the grant of a patent, apply to the Commissioner alleging in the case of that patent that there has been an abuse of the exclusive rights thereunder and asking for relief under this Act.

  • Marginal note:What amounts to abuse

    (2) The exclusive rights under a patent shall be deemed to have been abused in any of the following circumstances:

    • (a) and (b) [Repealed, 1993, c. 44, s. 196]

    • (c) if the demand for the patented article in Canada is not being met to an adequate extent and on reasonable terms;

    • (d) if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms, the trade or industry of Canada or the trade of any person or class of persons trading in Canada, or the establishment of any new trade or industry in Canada, is prejudiced, and it is in the public interest that a licence or licences should be granted;

    • (e) 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, whether before or after the passing of this Act, to the purchase, hire, licence or use of the patented article or to the using or working of the patented process; or

    • (f) 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 utilized by the patentee so as unfairly to prejudice in Canada the manufacture, use or sale of any materials.

  • (3) and (4) [Repealed, 1993, c. 44, s. 196]

  • Definition of patented article

    (5) For the purposes of this section, the expression patented article includes articles made by a patented process.

  • R.S., 1985, c. P-4, s. 65;
  • 1993, c. 2, s. 5, c. 15, s. 51, c. 44, s. 196.

Marginal note:Powers of Commissioner in cases of abuse

  •  (1) On being satisfied that a case of abuse of the exclusive rights under a patent has been established, the Commissioner may exercise any of the following powers as he may deem expedient in the circumstances:

    • (a) he may order the grant to the applicant of a licence on such terms as the Commissioner may think expedient, including a term precluding the licensee from importing into Canada any goods the importation of which, if made by persons other than the patentee or persons claiming under him, would be an infringement of the patent, and in that case the patentee and all licensees for the time being shall be deemed to have mutually covenanted against that importation;

    • (b) [Repealed, 1993, c. 44, s. 197]

    • (c) if the Commissioner is satisfied that the exclusive rights have been abused in the circumstances specified in paragraph 65(2)(f), he may order the grant of licences to the applicant and to such of his customers, and containing such terms, as the Commissioner may think expedient;

    • (d) if the Commissioner is satisfied that the objects of this section and section 65 cannot be attained by the exercise of any of the foregoing powers, the Commissioner shall order the patent to be revoked, either forthwith or after such reasonable interval as may be specified in the order, unless in the meantime such conditions as may be specified in the order with a view to attaining the objects of this section and section 65 are fulfilled, and the Commissioner may, on reasonable cause shown in any case, by subsequent order extend the interval so specified, but the Commissioner shall not make an order for revocation which is at variance with any treaty, convention, arrangement, or engagement with any other country to which Canada is a party; or

    • (e) if the Commissioner is of opinion that the objects of this section and section 65 will be best attained by not making an order under the provisions of this section, he may make an order refusing the application and dispose of any question as to costs thereon as he thinks just.

  • Marginal note:Proceedings to prevent infringement

    (2) A licensee under paragraph (1)(a) is entitled to call on the patentee to take proceedings to prevent infringement of the patent, and if the patentee refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in his own name as though he were the patentee, making the patentee a defendant, but a patentee added as defendant is not liable for any costs unless he enters an appearance and takes part in the proceedings.

  • (3) [Repealed, 2017, c. 6, s. 41]

  • Marginal note:Considerations by which Commissioner to be guided

    (4) In settling the terms of a licence under paragraph (1)(a), the Commissioner shall be guided as far as possible by the following considerations:

    • (a) he shall endeavour to secure the widest possible use of the invention in Canada consistent with the patentee deriving a reasonable advantage from his patent rights;

    • (b) he shall endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in Canada; and

    • (c) he shall endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the patentee under any licence previously granted.

  • R.S., 1985, c. P-4, s. 66;
  • R.S., 1985, c. 33 (3rd Supp.), s. 24;
  • 1993, c. 44, s. 197;
  • 2017, c. 6, s. 41.

 [Repealed, 1993, c. 44, s. 198]

Marginal note:Contents of applications

  •  (1) Every application presented to the Commissioner under section 65 or 66 shall

    • (a) set out fully the nature of the applicant’s interest, the facts on which the applicant bases his case and the relief that he seeks; and

    • (b) be accompanied by statutory declarations verifying the applicant’s interest and the facts set out in the application.

  • Marginal note:Service

    (2) The Commissioner shall consider the matters alleged in the application and declarations referred to in subsection (1) and, if satisfied that the applicant has a bona fide interest and that a case for relief has been made, the Commissioner shall direct the applicant to serve copies of the application and declarations on the patentee and on any other persons appearing from the records of the Patent Office to be interested in the patent, and the applicant shall advertise the application both

    • (a) in the Canada Gazette; and

    • (b) on the website of the Canadian Intellectual Property Office or in any other prescribed location.

  • R.S., 1985, c. P-4, s. 68;
  • 2017, c. 6, s. 42.

Marginal note:Opposition and counter statement

  •  (1) If the patentee or any person is desirous of opposing the granting of any relief under sections 65 to 70, he shall, within such time as may be prescribed or within such extended time as the Commissioner may on application further allow, deliver to the Commissioner a counter statement verified by a statutory declaration fully setting out the grounds on which the application is to be opposed.

  • Marginal note:Attendance for cross-examination

    (2) The Commissioner shall consider the counter statement and declaration referred to in subsection (1) and may thereupon dismiss the application if satisfied that the allegations in the application have been adequately answered, unless any of the parties demands a hearing or unless the Commissioner himself appoints a hearing, and in any case the Commissioner may require the attendance before him of any of the declarants to be cross-examined or further examined on matters relevant to the issues raised in the application and counter statement, and he may, subject to due precautions against disclosure of information to rivals in trade, require the production before him of books and documents relating to the matter in issue.

  • Marginal note:Reference to Federal Court

    (3) In any case where the Commissioner does not dismiss an application as provided in subsection (2), and

    • (a) if the parties interested consent, or

    • (b) if the proceedings require any prolonged examination of documents or any scientific or local investigation that cannot in the opinion of the Commissioner conveniently be made before him,

    the Commissioner, with the approval in writing of the Minister, may order the whole proceedings or any issue of fact arising thereunder to be referred to the Federal Court, which has jurisdiction in the premises.

  • Marginal note:Idem

    (4) Where the whole proceedings are referred under subsection (1), the judgment, decision or order of the Federal Court is final, and where a question or issue of fact is referred under that subsection, the Court shall report its findings to the Commissioner.

  • R.S., c. P-4, s. 71;
  • R.S., c. 10(2nd Supp.), s. 64.
 
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