CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
the case, or force any party to settle. There are similar procedures in some provincial superior courts, but settlement is always voluntary. The court cannot force the parties to settle. 5.4 Other Court Proceedings Parallel Canadian patent proceedings are rare. For example, there is nothing like the US inter partes review process in Canada. If one or more parties to a patent infringement action bring proceedings in more than one court (eg, one party brings an action in the Federal Court and another in a provincial superior court), then one of the proceedings may be stayed pending the outcome of the other, depending on whether it is in the interests of justice to do so. It is possible to request re-examination of a patent that is the subject of an infringement or impeachment pro- ceeding. When this occurs, the action is gener- ally not stayed pending the re-examination. Several remedies are available to a success- ful patentee. They may seek the damages they suffered due to the infringement. Alternatively, and at the judge’s discretion, a patentee may elect the profits that the defendant earned due to the infringement. In either case, recovery can be made as far back as six years prior to the commencement of the infringement action. If the effect of the infringement will continue to affect the patentee after the date of judgment, dam- ages may be available for future losses as well. Once issued, the patentee can also claim rea- sonable compensation for infringement that occurred between the date the patent was pub- lished and the date it was issued. 6. Remedies 6.1 Remedies for the Patentee
In certain cases, for example where the patentee is not selling a product of its own that is covered by the claims of the patent (a “non-practising entity”), the measure of damages may be a rea- sonable royalty. For the period between when the patent applica- tion was made public and when it issued, a pat- entee may recover reasonable compensation for any infringing acts. Reasonable compensation usually takes the form of a reasonable royalty. Punitive damages, while rare in patent cases, are available in cases where there is egregious or high-handed conduct, or a callous disregard for the patentee’s rights. Wilful infringement is not sufficient to establish punitive damages on its own. Other available remedies for successful paten- tees include a permanent injunction, delivery up or destruction, and pre- and post-judgment interest. A successful patentee usually also recovers a portion of their legal fees and all reasonable disbursements. While discretionary, the court may assess legal fees according to a tariff or award a lump sum that is generally in the range of 25–50% of the actual fees. In general, the judge has wide discretion to fash- ion a remedy that will properly fit the circum- stances of each case. The remedies are set out in a judgment of the court, which is enforceable across Canada. A Canadian Federal Court judg- ment can also be enforced under the local rules in other jurisdictions if, for example, the infringer has insufficient assets in Canada to satisfy the award of damages and costs.
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