CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
leave from the court to have an individual who is not a lawyer represent the corporation. As patent litigation is complex, most parties to a patent action in Canada will be represented by a lawyer who specialises in patent litigation. It is very rare for a patentee to represent themselves in litiga- tion in Canada. 2.7 Interim Injunctions Interim and interlocutory injunctions are theo- retically available in patent infringement actions where the patentee can meet the standard Cana- dian tripartite test for an interlocutory injunction, namely: • there is a serious question to be tried; • it will suffer irreparable harm if the relief is not granted; and • the balance of convenience lies in its favour. The court has characterised patent rights as being economic in nature and therefore neces- sarily compensable in damages. Accordingly, it is extremely difficult (though not impossible) for a patentee to show irreparable harm to satisfy the second element of the test for an interlocu- tory injunction. However, since interlocutory injunctions are flexible, discretionary and equita- ble remedies, an interlocutory injunction may be available in the right circumstance. In general, absent exceptional circumstances, a patentee in Canada should not expect an interim injunction to be an available remedy. 2.8 Protection for Potential Opponents The successful party in Canadian patent litigation is usually awarded costs. While costs awards are discretionary, the Federal Court is increasingly awarding costs in patent infringement actions on a lump sum basis calculated based on 25–50% of the successful party’s actual legal fees plus
all of its reasonable disbursements (including amounts paid for expert fees). A defendant can require a foreign patentee or one who is impecunious to post security for costs. The Court will typically order that monies posted as security for costs be paid into Court in stages and only released at the conclusion of the action. 2.9 Special Limitation Provisions While patent infringement is an ongoing tort, damages can only be claimed back six years before the commencement of an infringement action or the date the patent was issued, which- ever is later. The patentee’s damages are the presumptive remedy for patent infringement although an accounting of the defendant’s profits earned from its infringement is an equitable alternate remedy that is often available. A patentee is normally entitled to a permanent injunction prohibiting future infringement, until the expiry of the patent. However, the court will consider the public interest and may decide not to grant an injunction in rare circumstances, such as when, for example, doing so would pre- vent access to a patented medicine. 2.10 Mechanisms to Obtain Evidence and Information There are mechanisms to obtain and preserve evidence prior to or at the commencement of an action. After a patent infringement action is com- menced, both sides must produce all relevant non-privileged documents and put forward a knowledgeable representative to be examined on behalf of the party. Discovery is designed to
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