CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
2.5 Prerequisites to Filing a Lawsuit A patent infringement action can be brought any time after the patent has issued. The pat- entee does not have to send a demand letter or otherwise give notice before commencing the action. Canada has recently introduced a statutory requirement requiring a patentee who does send a written demand to comply with “prescribed requirements” but no requirements have yet been prescribed. A patentee who elects to send threatening letters alleging infringement must be careful – making false statements that tend to discredit the business, goods or services of a competitor is actionable if such statements result in damages. There is no requirement that mediation or any other kind of formal or informal dispute resolu- tion be attempted before commencing an action in respect of a patent. To impeach a patent, the challenger must be an interested person. A competitor dealing in a potentially infringing product would qualify. The party seeking to impeach a patent must also post security for costs with the Federal Court. Foreign patentees with no Canadian presence may also have to post security for costs if the defendant requests it. 2.6 Legal Representation Patentees should be represented by a patent agent in their dealings with the Patent Office. A patentee is not required to be represented by a lawyer before litigation is commenced. Once litigation is commenced, the general rule is that individuals have a right to represent them- selves but that corporate parties (including part- nership and unincorporated associations) need to be represented by a lawyer unless they get
declaration of non-infringement brought against a patentee. 2.3 Courts With Jurisdiction Provincial superior courts and the Federal Court of Canada have concurrent jurisdiction over pat- ent infringement actions. Litigants generally pre- fer the Federal Court for the following reasons: • it can issue Canada-wide injunctions and monetary remedies; • it has a dedicated chambers of judges with expertise in patent cases; • it has a comprehensive case management process that increases efficiency – it is not unusual to have a patent case get to trial in two years; • it has in rem jurisdiction over patents and so can provide final judgments as to the validity and infringement of any Canadian patent; and • the successful party in Federal Court litiga- tion can reasonably expect to receive a costs award of 25–50% of its actual legal fees plus all reasonable disbursements. A Federal Court decision can be appealed to the Federal Court of Appeal as of right. Decisions of the Federal Court of Appeal may be further appealed to the Supreme Court of Canada with leave (however, that leave is very rarely granted, particularly in patent cases). 2.4 Specialised Bodies/Organisations for the Resolution of Disputes The Federal Court offers dispute resolution ser- vices in patent cases. The parties to a patent dispute can also voluntarily submit their dispute to any one of a number of well-regarded media- tors and arbitrators.
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