CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
er civil actions; there are no special procedural provisions for intellectual property cases. In the Federal Court, any party can seek case manage- ment of a patent action and there are special guidelines for complex proceedings, which can be applied to patent actions. The Federal Court seeks to have most patent actions heard within approximately two years. This is generally accomplished by way of case management and court-ordered timetables in line with the guidelines for complex proceedings, to ensure that the required steps take place in a timely manner. The time from commencement of an action to trial in the provincial superior courts varies widely but is generally longer (often much longer) than in the Federal Court. The trial of a patent action is conducted as a single hearing. Fact and expert witnesses are typically called to testify in person at the trial before the trial judge. The party that calls the wit- ness generally conducts an in-court examination in chief, followed by cross-examination of each witness by the opposing party. Sometimes, the evidence of a fact or expert witness can be given in writing, by affidavit or report, but in-court, in- person cross-examination is always available to the opposing party. During the period between the commencement of the action and trial, there are a series of pro- cedural steps, including the exchange of plead- ings, documentary discovery, and oral discovery where a single representative of each party and any inventors may be examined by the opposing party. In the time leading up to trial, brief summa- ries (or “will-says”) of fact witnesses are typically exchanged, as well as expert reports detailing the evidence that the experts are expected to give at trial on the issues in the action.
Remedies are sometimes determined at the same time as the issue of validity and infringe- ment, and sometimes later (in what is called a bifurcated action). Whether an action will be bifurcated depends on the circumstances (including whether the parties request it). 5.2 Decision-Makers In the Federal Court, all patent actions are decid- ed by a single judge. In the provincial superior courts, the procedures differ somewhat, but it would be exceptional for any patent action in Canada to be decided by a jury; they are almost exclusively decided by a single judge of the court in which the action is brought. The Federal Court has a group of judges who have volunteered to hear patent actions and have developed an interest and expertise in such actions. Patent actions are generally heard by a judge from that group (though those judges do not necessarily have any technical background). In the provincial superior courts, there are no specialised intellectual property judges. Regardless of the court in which the action is brought, in Canada, the parties have no input into or involvement in the selection of the trial judge assigned to the case. 5.3 Settling the Case In any Canadian court, the parties can settle the case before the final hearing, by way of agree- ment or voluntary out-of-court mediation. In the Federal Court, a party can request a dispute resolution conference before a member of the court, who will act as the mediator. The role of the judge or associate judge at a dispute resolu- tion conference is to act as a mediator and try to assist the parties in settling the entire case or at least narrowing the issues. They do not have the authority to decide the case or any issue in
93
CHAMBERS.COM
Powered by FlippingBook