CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
1.5 Rights and Obligations of Owners of Intellectual Property Rights A Canadian patent grants the patentee and their legal representatives the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. To maintain these rights, patentees must pay yearly maintenance fees. The remedies available to a patentee whose rights are infringed are dis- cussed at 6. Remedies . There is no requirement that products be marked with a patent number. If a patent relates to an approved drug, then it may be eligible to be list- ed on the Patent Register maintained by Health Canada. Listing eligible patents on the Patent Register with respect to an approved drug cre- ates a linkage between the regulatory approval process and Canada’s patent regime. The owner of an industrial design has the exclu- sive right to make, import for the purpose of trade or business, or sell, rent, or offer or expose for sale or rent, any article that embodies the claimed design or a design not differing substan- tially therefrom. There is no requirement to mark or otherwise identify that a product is protected by an industrial design. If, however, someone is found to have infringed an industrial design, the only available remedy is an injunction if the infringer did not know and had no reason to sus- pect that the design was registered. A mainte- nance fee must be paid to maintain an industrial design and the rights that it confers. The owner of a trade secret can enforce its rights through an action for breach of confidence where confidential information was communi- cated in confidence to someone who misuses the information to the detriment of the confider.
1.6 Further Protection After Lapse of the Maximum Term See 1.4 Term of Each Intellectual Property Right . 1.7 Third-Party Rights to Participate in Grant Proceedings Third parties may participate in the patent grant- ing procedure before or after a patent is grant- ed. Prior to a patent being granted, third parties may file prior art or a protest with respect to the application. The prior art can consist of patents, published patent applications, and printed pub- lications that the third party believes have an impact on the patentability of any claim in the application. The prior art must be accompanied by an explanation of why the art is relevant. A third party may also file a written protest against the granting of a patent. The protest may or may not be accompanied by prior art. If the information in a protest or filed prior art is found to be relevant, it will be considered by the examiner when examining the patent appli- cation. The protest and prior art are made part of the public prosecution file but the third party does not otherwise participate in the process. There is no limit on the number of protests or pieces of prior art that may be filed and the third party can remain anonymous by having a lawyer or patent agent submit the protest or prior art on their behalf. Once granted, a third party may request that the patent be re-examined by filing prior art. This request must explain the relevance of the prior art and how it is applied to the claims in question. After receiving this request, a re-examination board will be established and they must, within three months, determine whether the request raises a substantial new question of patentabili- ty. If they determine that it does not, the request-
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