Markwell Clarizio LLP

Patent litigation

Infringement actions

The issuance of a Canadian patent gives the patentee and its legal representative(s) the exclusive right to make, construct, use and sell the claimed invention for a 20-year term beginning on the filing date. If a person (corporation or individual) interferes with the “full enjoyment of this monopoly”, or induces someone else to do so, then the patentee or person claiming under the patentee (e.g., licensee) may file an action in the Federal Court or in the superior court of a province where the infringement is alleged to have taken place. Non-infringement, invalidity and/or prior use may be asserted as defenses. Once a case has been filed, litigants are required to disclose all relevant documents in their power, possession or control, and to be examined for discovery. Inventors may also be examined orally as of right. Experts are often engaged by each party to prepare reports and help the Court interpret the patent through the eyes of a person skilled in the art. Federal Court patent trial usually begin 24-36 months after the case begins and are heard by a judge alone (no jury). Trial length depends on the number of issues, documents, and witnesses, but generally ranges from five to twenty days. Courts have the power to grant injunctions (interim, interlocutory and permanent), award damages or an accounting of profits, and order the destruction of infringing goods. The losing party is required to pay a portion of the successful party’s legal fees and disbursements.

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Impeachment actions

The Federal Court may declare a patent or patent claim to be invalid or void at the instance of the Attorney General of Canada or by any “interested person” (e.g., competitor). An alleged infringer may also seek a declaration of non-infringement. This relief may be sought by action or by counterclaim to an existing infringement suit. The comments above with respect to discovery, expert evidence, and trial procedure apply equally to impeachment actions. Declarations of invalidity are recorded in the Patent Office and operate in rem.

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Final judgments in patent infringement and impeachment actions may be appealed as of right, but their operation is not stayed pending appeal. The appellant prepares a Notice of Appeal identifying reviewable errors of law or fact with supporting grounds. Each party then has an opportunity to file a written argument in support of its position. Appeals are heard by three-judge panels based on the trial record and arguments made by counsel. Cases are generally heard 9-12 months after they are filed. The Court deciding the appeal has several options. It may: dismiss the appeal and affirm the trial judgment; allow the appeal and make the order that the trial judge ought to have made; or allow the appeal and send the matter back to the trial judge for redetermination. Costs are awarded to the successful party. Leave to appeal to the Supreme Court of Canada may be sought, but is granted infrequently. The case must raise issues of “public importance” or legal issues of “such a nature or significance as to warrant decision by it.” The Supreme Court typically grants leave in approximately one patent case every few years.