Government of Canada / Gouvernement du Canada
Symbol of the Government of Canada

Search

Patent Act (R.S.C., 1985, c. P-4)

Full Document:  

Act current to 2019-11-19 and last amended on 2019-10-30. Previous Versions

Supplementary Protection for Inventions — Medicinal Ingredients (continued)

Infringement and Impeachment

Marginal note:Action for infringement

  •  (1) An action for the infringement of a certificate of supplementary protection may be brought in the same manner as an action for the infringement of a patent, and the following provisions apply to the action:

    • (a) sections 54, 57 and 59, with any reference to “patent” to be read as a reference to “certificate of supplementary protection”;

    • (b) subsection 55(1), and subsection 55(3) as it applies to that subsection (1), with any reference to “patent” to be read as a reference to “certificate of supplementary protection”, any reference to “patentee” to be read as a reference to “holder of the certificate of supplementary protection” and any reference to “grant” to be read as a reference to “taking of effect”;

    • (c) section 55.01;

    • (d) section 55.1, with any reference to “patent” to be read as a reference to “certificate of supplementary protection” and any reference to “patented process” to be read as a reference to “process protected by the certificate of supplementary protection”;

    • (e) subsections 55.2(1) and (6), with any reference to “patent” to be read as a reference to “certificate of supplementary protection” and any reference to “patented invention” to be read as a reference to “invention protected by the certificate of supplementary protection”;

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

    • (g) section 58, with the reference to “a patent that contains two or more claims” to be read as a reference to a “two or more claims in a patent that is set out in a certificate of supplementary protection” and with the reference to “the patent as if it” to be read as a reference to “the certificate as if the patent set out in it”.

  • Marginal note:Regulations — subsection 55.2(4)

    (2) The Governor in Council may make regulations respecting the infringement of any certificate of supplementary protection that, directly or indirectly, could result or results from the making, construction, use or sale of a patented invention or invention protected by a certificate of supplementary protection in accordance with subsection 55.2(1), including regulations described in paragraphs 55.2(4)(a) to (k), with

    • (a) any reference in those paragraphs to a “patent” to be read as a reference to a “certificate of supplementary protection”; and

    • (b) the reference in paragraph 55.2(4)(k) to “subsection 60(1)” to be read as a reference to “subsection 125(1)”.

  • 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.

  • Marginal note:Inconsistency or conflict

    (3) In the event of an inconsistency or conflict between regulations made under subsection (2) and any Act of Parliament or regulations made under such an Act, the regulations made under subsection (2) prevail to the extent of the inconsistency or conflict.

  • 2017, c. 6, s. 59
  • 2018, c. 27, s. 198

Marginal note:Impeachment

  •  (1) A certificate of supplementary protection, or any claim in the patent set out in such a certificate, may be declared invalid or void — including on the basis that the certificate was issued despite non-compliance with any of the requirements, as they existed at the time that the certificate was issued, of subsection 106(1) or that the patent set out in the certificate no longer complies with the requirements, as they existed at that time, set out in paragraph 106(1)(c) — by the Federal Court at the instance of the Attorney General of Canada or any interested person.

  • Marginal note:Application

    (2) Subsections 60(2) and (3) apply with respect to a certificate of supplementary protection, with any reference to “patentee” to be read as a reference to “holder of a certificate of supplementary protection” and any reference to “patent” to be read as a reference to “certificate of supplementary protection”.

  • 2017, c. 6, s. 59

Marginal note:Judgment voiding certificate or claim

  •  (1) A certificate of supplementary protection, or a claim in the patent set out in such a certificate, 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 subsection (2).

  • Marginal note:Appeal

    (2) Every judgment voiding a certificate of supplementary protection or any claim in the patent set out in such a certificate, and every judgment refusing to do so, is subject to appeal to any court having appellate jurisdiction in other cases decided by the court by which the judgment was rendered.

  • 2017, c. 6, s. 59

Abuse of Rights

Marginal note:Abuse of patent rights

  •  (1) The Commissioner may, in respect of application under section 65, exercise any of the powers under any of paragraphs 66(1)(a), (d) and (e) with respect to an issued certificate of supplementary protection if he or she is satisfied that a case of abuse of the exclusive rights under the patent that is set out in the certificate has been established.

  • Marginal note:Abuse — application to Commissioner

    (2) The Attorney General of Canada or an interested person may, at any time after a certificate of supplementary protection takes effect and after the expiry of three years from the date of the grant of the patent set out in the certificate, apply to the Commissioner alleging that there has been an abuse of the exclusive rights granted under a certificate of supplementary protection issued with respect to that patent and asking for relief under this Act.

  • Marginal note:What amounts to abuse

    (3) The exclusive rights under a certificate of supplementary protection are abused in any of the following circumstances:

    • (a) the demand in Canada for a drug that contains the medicinal ingredient or a combination of the medicinal ingredients set out in the certificate is not being met to an adequate extent and on reasonable terms;

    • (b) by reason of the refusal of the certificate’s holder 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;

    • (c) any trade or industry in Canada, or any person or class of persons engaged in such a trade or industry, is unfairly prejudiced by the conditions attached by the certificate’s holder to the purchase, hire, licence, use or working of the invention protected by the certificate.

  • 2017, c. 6, s. 59

Marginal note:Provisions that apply

 Sections 66 to 71, other than paragraph 66(1)(c), apply for the purposes of section 127, with

  • (a) any reference to “patent”, other than with respect to the Patent Office, to be read as a reference to “certificate of supplementary protection”;

  • (b) any reference to “patentee” to be read as a reference to “holder of the certificate of supplementary protection”;

  • (c) any reference in paragraphs 66(1)(d) and (e) and subsection 68(1) to “section 65” to be read as a reference to “section 127”;

  • (d) any reference in subsection 69(1) or section 71 to “sections 65 to 70” to be read as a reference to “sections 66 to 70 and 127”; and

  • (e) the reference in subsection 69(3) to “the Minister” to be read as a reference to “the Minister of Industry”.

  • 2017, c. 6, s. 59

General

Marginal note:Electronic form and means

  •  (1) Subject to the regulations, any document, information or fee that is submitted to the Minister under this Act may be submitted in any electronic form, and by any electronic means, that is specified by the Minister.

  • Marginal note:Collection, storage, etc.

    (2) Subject to the regulations, the Minister may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information under sections 106 to 134.

  • Marginal note:Definition

    (3) In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means.

  • 2017, c. 6, s. 59

Marginal note:Certified copies as evidence

 In any action or proceeding respecting a certificate of supplementary protection authorized to be had or taken in Canada under this Act, a copy purporting to be certified by the Minister of any such certificate, or of any other document that is made by or filed with the Minister and is connected to such a certificate, may be produced before the court or other tribunal, or a judge or member of the court or tribunal, and the copy purporting to be so certified may be admitted in evidence without production of the original and without proof of the Minister’s certification.

  • 2017, c. 6, s. 59
 
Date modified: