CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
3.5 Defences Against Infringement Apart from demonstrating that a claim is inva- lid, the Canadian Patent Act provides several defences to infringement, including for experi- mental use and prior use of a patented inven- tion. Laches, acquiescence and exhaustion may be available as defences under certain circum- stances. Fair, reasonable and non-discriminatory licensing (FRAND) is generally not available as a defence and compulsory licensing may be avail- able in rare circumstances such as for public health emergencies. 3.6 Role of Experts While Federal Court patent cases are heard and decided by a single judge, the trial judge is almost invariably assisted by expert evidence. Experts therefore play an extremely important role in patent infringement and invalidity pro- ceedings. Experts provide opinion and/or fact evidence on various issues, including the iden- tity and common general knowledge of the per- son of ordinary skill in the art, how the claims would be understood by such a person, whether an allegedly infringing product falls within the scope of the claims, and various validity issues. Experts prepare written reports that are submit- ted to the court, are examined at trial, but are not examined prior to trial. While parties select and retain their own experts, experts have an over- riding duty to assist the court objectively and impartially. 3.7 Procedure for Construing the Terms of the Patent’s Claim Claim construction is usually done by the trial judge at trial with the assistance of expert evi- dence. Canadian procedure generally does not include a pre-trial mechanism for claim con- struction like a Markman hearing but pre-trial claim construction may be available in excep- tional cases.
3.8 Procedure for Third-Party Opinions While it is possible for the court to have amicus curiae to assist at the court’s request, it is very rare in patent cases.
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
The Federal Court has exclusive jurisdiction to declare that a patent is invalid or void. An “inter- ested person” can bring an action to challenge the validity of a patent. Standing to qualify as an “interested person” has been interpreted gen- erously and is not limited to actual or potential infringers. A defendant to a patent infringement action can raise validity as a defence and, additionally, counterclaim for a declaration of invalidity. While provincial superior courts can hear pat- ent infringement actions, they cannot declare a patent invalid except as between the parties. Invalidity attacks include: • anticipation (lack of novelty); • obviousness (lack of inventiveness); • inutility (either lack of demonstrated utility or a sound prediction of utility); • insufficient disclosure; • overbreadth; • ambiguity;
• unpatentable subject-matter; • material misrepresentation; and • double patenting.
In addition to a legal action, patents can also be challenged through re-examination proceedings at the Patent Office. Re-examination proceed- ings are rarely brought and are limited to con-
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