CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
be proportionate and there are presumptive lim- its on the length of the examinations for discov- ery. Discovery obligations are ongoing and there is a duty to correct answers given on discovery. The discovery of an adverse party can be read into evidence at trial and used to impeach the deponent’s credibility. Inventors and third parties are also subject to discovery but their discovery evidence cannot be introduced at trial absent exceptional circum- stances. They must be called as witnesses and testify at trial. 2.11 Initial Pleading Standards The pleadings frame the action. An action is commenced by having the court issue a state- ment of claim. The claim must set out the legal relief sought and all of the material facts sup- porting those claims. The plaintiff is not required to plead, or adduce, the evidence it has in sup- port of its claims at the pleadings stage. The statement of claim must identify the plaintiff(s) (ie, the patentee and anyone claim- ing under the patentee, such as a licensee). The claim must also explain how the defendant(s) infringe the plaintiff’s rights by identifying what it is the defendant has done to infringe each asserted claim. The defendant typically defends the action by filing a statement of defence and counterclaim in which it denies infringement and asserts that the patent is invalid. Pleadings can be amended during the course of the action. The general rule is that as long as the proposed amendments have a reasonable prospect of success, they will be allowed at any stage of an action for the purpose of determining the real questions in controversy between the
parties, provided that the amendment would not result in an injustice to the other party not capa- ble of being compensated by an award of costs and that it would serve the interests of justice. 2.12 Representative or Collective Action The Federal Courts Rules provide a conjunctive test for class proceedings and require the plain- tiff to show: • the pleadings disclose a reasonable cause of action; • there is an identifiable class of two or more persons; • the claims of the class members raise com- mon questions of law or fact, whether or not those common questions predominate over questions affecting only individual members; • a class proceeding is the preferable proce- dure for the just and efficient resolution of the common questions of law or fact; and • there is an appropriate representative plaintiff. Canadian courts have also allowed “reverse class actions” where a patentee brings an action against a category of defendants such as per- sons who manufactured, distributed or sold cer- tain allegedly infringing products. An industry association was found to have standing to bring a patent impeachment action against a non-practising entity (NPE) after the NPE began asserting patent infringement claims against a number of the association’s members. In that case, none of the members were pre- pared to bear the costs of challenging the pat- ents on their own. 2.13 Restrictions on Assertion of an Intellectual Property Right The Patent Act allows the Attorney General for Canada or any interested person, three years
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