CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
sidering anticipation and obviousness based on prior written disclosures. 4.2 Partial Revocation/Cancellation Patent validity is assessed on a claim-by-claim basis and the finding that one or more claims are invalid does not necessarily affect the validity of the remaining claims. While most validity attacks need to be consid- ered on a claim-by-claim basis, challenges to the sufficiency of the disclosure or material mis- representation can apply across all claims. 4.3 Amendments in Revocation/ Cancellation Proceedings Patent claims cannot be amended by the Fed- eral Court and it is not possible to amend claims (or propose an amended set of claims) during a patent action to respond to arguments regard- ing the validity of certain claims (or for any other reason). Only the Patent Office can amend or remove patent claims and the circumstances in which it can do so after a patent has been granted are limited. A patentee can apply to re-issue a patent to cor- rect defects in the sufficiency of the description and specification, or the claims that arose from inadvertence, accident or mistake, and without any fraudulent or deceptive intent. The paten- tee must apply to re-issue the patent within four years from its date of grant. The Patent Office, if satisfied, will issue a new patent, in accordance with an amended description and specification made by the patentee for the unexpired term of the original patent. Re-issue is available even where an impeachment action is pending. A patentee may also file a disclaimer of one or more claims. The patentee must show that through mistake, accident or inadvertence, and
without any wilful intent to defraud or mislead the public, a patentee has made the specifica- tion too broad and claimed more than what was invented. When a third party initiates a re-examination, the Patent Office can re-open prosecution and the patentee may have the opportunity to amend the patent’s claims so as to avoid invalidity based on the cited prior art. 4.4 Revocation/Cancellation and Infringement The court almost invariably is asked to decide validity and infringement together because valid- ity is raised as a defence and/or a counterclaim. While a counterclaim is technically a separate action, there are very few cases where the coun- terclaim is not heard together with the claim. Litigants can use summary judgment to dispose of clear cases of non-infringement or invalidity. Re-examination and litigation can run concur- rently but the Federal Court has the power to stay re-examination proceedings where it is in the interests of justice to do so. The re-exam- ination procedure is unequivocally less com- prehensive as compared to an infringement/ invalidity action and therefore re-examinations are frequently stayed in favour of the more com- prehensive court process. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights Actions for patent infringement can be brought in the superior court of any province, or in the Federal Court. If brought in a provincial superior court, the action will be treated the same as oth-
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