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Patent Act (R.S.C., 1985, c. P-4)

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Act current to 2020-01-27 and last amended on 2019-10-30. Previous Versions

Standard-Essential Patents (continued)

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  • (3) [Repealed, 2017, c. 6, s. 38]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
  • 2018, c. 27, s. 211(F)

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 specification contained in the application for the patent became open to public inspection, in English or French, 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 specification became open to public inspection, in English or French, 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
  • 2014, c. 39, s. 135

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 — third party rights

  •  (1) This section applies only in respect of the following patents and certificates of supplementary protection that set out the following patents:

    • (a) a patent that was granted on the basis of an application

      • (i) in respect of which the prescribed fee referred to in subsection 27.1(2) was not paid on or before the applicable prescribed date referred to in that subsection, without taking into account subsection 27.1(3),

      • (ii) in respect of which a request referred to in subsection 35(2) was not made and the prescribed fee referred to in that subsection was not paid within the prescribed time referred to in that subsection, without taking into account subsection 35(4), or

      • (iii) that was deemed abandoned under paragraph 73(1)(a), (b) or (e), under paragraph 73(1)(f) as it read at any time before the coming into force of this subparagraph or under subsection 73(2);

    • (b) a patent that was granted on the basis of a divisional application that

      • (i) results, under subsection 36(2) or (2.1), from the division of an original application that is an application referred to in this paragraph or paragraph (a), and

      • (ii) was filed after the beginning of the period referred to in subsection (2) or, if it is earlier, the period referred to in subsection (3), that applies to the patent granted on the basis of the original application or that would apply to that patent if it were granted; and

    • (c) a patent in respect of which the prescribed fee referred to in subsection 46(2) was not paid on or before the applicable prescribed date referred to in that subsection, without taking into account subsection 46(3).

  • Marginal note:Act committed during period

    (2) If, during a period that is established by regulations made under paragraph 12(1)(j.74) that relates to a patent, a person, in good faith, committed an act that would otherwise constitute an infringement of that patent, that act is not an infringement of the patent.

  • Marginal note:Act committed after period

    (3) Subject to subsection (4), if — during a period established by regulations made under paragraph 12(1)(j.75) that relates to a patent — a person, in good faith, committed an act that would otherwise constitute an infringement of that patent or made serious and effective preparations to commit that act, it is not an infringement of the patent or any certificate of supplementary protection that sets out the patent if the person commits the act after that period.

  • Marginal note:Transfer

    (4) If the act referred to in subsection (3) 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 (3) or paragraph (b), as the case may be, does not apply in respect of 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 if the transferee commits the act after the transfer.

  • Marginal note:Use or sale of article

    (5) 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, under subsection (2) or (3) or paragraph (4)(b), sell the article without infringing the patent or the certificate.

  • Marginal note:Use of service

    (6) The use of a service is not an infringement of a patent if the service is provided by a person who, under subsection (2) or (3) or paragraph (4)(b), is able to provide it without infringing the patent.

  • Marginal note:Use of article

    (7) Subject to subsection (8), the use of an article is not an infringement of a patent or any certificate of supplementary protection that sets out the patent if the article was acquired, directly or indirectly, from a person who, during a period that is established by regulations made under paragraph 12(1)(j.75) that relates to that patent, 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

    (8) If the making or selling referred to in subsection (7) 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 (7) 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 a patent or a certificate of supplemental protection referred to in subsection (7) 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:Use of service

    (9) Subject to subsection (10), the use of a service is not an infringement of a patent if the service is provided by a person who, during a period that is established by regulations made under paragraph 12(1)(j.75) that relates to that patent, 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, during the period referred to in subsection (9), the service 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).

  • 2014, c. 39, s. 136
  • 2015, c. 36, ss. 59, 65(F)
  • 2018, c. 27, s. 207
 
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