CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
2.2 Third-Party Remedies to Remove the Effects of Intellectual Property A third party’s rights to challenge a patent before it issues are limited. They may submit a “protest” to the Examiner challenging the patentability of one or more claims. The Examiner will consider the prior art and arguments submitted but will not respond. The protester has no substantive or procedural rights and is not able to participate further in the examination process except by fil- ing another protest. After a patent has issued, a third party may chal- lenge the patent by: • requesting re-examination; • commencing an impeachment action; and/or • seeking a declaration of non-infringement. A third party may request re-examination of any claim(s) in a patent by filing prior art (patents, applications and printed publications) and pro- viding written submissions explaining how the prior art impacts the patentability of the claim(s). If the re-examination board determines that a substantial new issue of patentability has been raised, the patentee may have to amend or even cancel the claim(s). The party initiating the re- examination is not involved in the re-examination and has no right of appeal. Re-examinations can take place concurrently with litigation. The Federal Court has exclusive jurisdiction to declare a patent invalid in an impeachment action under Section 60 of the Patent Act at the instance of any interested person. Validity can also be challenged as a defence to a patent infringement action. The Federal Court is also empowered to grant declaratory relief, and it will hear an action for a
may otherwise invalidate one or more claims in an impeachment proceeding. Patentees can also disclaim anything claimed in their patent that would render a claim overly broad, or anything claimed to which the paten- tee had no lawful right, as long as that informa- tion was included through “mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public”. Those filing a disclaimer must pay a prescribed fee. What is disclaimed will no longer form part of the patent. Finally, a patentee can request that their patent be re-issued, where, due to mistake, inadvert- ence or accident, their patent claims less or more than they otherwise were entitled to claim. A request for re-issuance must be made within four years of the patent being granted. When a Canadian patentee discovers that their invention is being infringed, the first step is typi- cally to retain a lawyer to send a letter demand- ing that the infringement stop. If a satisfactory resolution cannot be negotiated, the patentee’s usual recourse is to issue a statement of claim initiating a patent infringement action. The infringement action is usually commenced in the Federal Court and can be brought against anyone who is infringing the patentee’s exclusive rights. Infringement actions are also sometimes brought in one of the provincial superior courts. The provincial superior courts have concurrent jurisdiction to hear patent infringement actions but they do not have jurisdiction to make in rem findings in respect of the validity of a patent. 2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
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