CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
after a patent has been granted, to apply to the Commissioner of Patents to remedy abuse of patent rights. Abuse includes instances where the patentee has failed to meet demand for the patented article in Canada to an adequate extent and on reasonable terms. The Commissioner can rectify the abuse by granting a licence to work the patent on reasonable terms. Patent rights are also subject to competition laws. The Competition Bureau may review con- duct involving patent rights in circumstances where the conduct involves something more than the mere exercise of the patent rights. More rarely, it may also review conduct involving the mere exercise of a patent right. 3. Infringement 3.1 Necessary Parties to an Action for Infringement The Canadian Patent Act provides that an infringer is liable to the patentee and to all persons claiming under the patentee for the infringement. Thus, either a patentee or a person claiming under the patentee may start an action for infringement. Where the patentee does not start the infringement action, the patentee must be made a party to the action. Persons claiming under the patentee generally include exclusive and non-exclusive licensees of the patent and non-licensees whose business is harmed by the infringement. 3.2 Direct and Indirect Infringement Canadian law recognises both direct and indi- rect patent infringement. Direct infringement is any act that interferes with the full enjoyment of the monopoly granted to the patentee. This includes making, using and selling the patented invention. Indirect infringement occurs where
someone influences another person to directly infringe a patent. The remedies available for direct or indirect infringement are the same and are discussed in 6. Remedies . Contributory infringement is not recognised as a cause of action in Canada, but some recent case law has discussed the potential for developing the law on infringement by common design or acting in concert. 3.3 Process Patents When a process is patented in Canada, infringe- ment occurs when a final product made using the patented process is imported into Canada, even if the process takes place elsewhere. 3.4 Scope of Protection for an Intellectual Property Right Canadian courts apply a purposive construc- tion of a patent’s claim to determine the scope of protection available. The same purposive claim construction is used for both validity and infringement. In the context of analysing infringe- ment, courts will identify the essential and non- essential elements of a claim and compare these elements to the allegedly infringing product to assess whether the claim has been infringed. Canadian courts do not apply the doctrine of equivalents. Historically, file wrapper estoppel was not recog- nised in Canada. The Patent Act was amended recently to allow courts to consider communi- cations between the Patent Office and the pat- entee during prosecution when construing pat- ent claims. The use of such communications is limited to rebutting any representations made by the patentee in a proceeding regarding the construction of a claim.
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