Cassan Maclean
Intellectual Property | Barristers, solicitors, patent and trademark agents



Certain changes to Canada’s Patent Act now in effect

The Canadian Patent Act is undergoing several major revisions (mostly in concert with Canada’s accession to the Patent Law Treaty), and corresponding regulations are currently undergoing final consultation and approval.  However, certain amendments to the Patent Act received Royal Assent on December 13, 2018 and are currently in force.  Surprisingly, these particular amendments do not appear to have been specifically mandated by Treaty obligations but, instead, were included in the Canadian Government’s “Budget Implementation Act 2018”, Bill C-86.

 Some highlights of the current amendments include the following:

  •  Admissibility of prosecution histories as evidence in an action or proceeding (Section 53.1 of the revised Patent Act): A written communication (or part thereof) between the applicant and the Patent Office, such as what is included during the prosecution of a patent application, may be admitted into evidence to rebut any representation made by the patentee as to the construction of a claim in the patent.   The introduction of file wrapper estoppel represents a significant change to Canadian patent practice.

  •  Standard-essential patents (Section 52.1 of the revised Patent Act): The amendments include a provision for a licensing commitment in respect of a standard-essential patent that binds the patentee and any holder of a certificate of supplementary protection (CSP) [click here for our earlier blog entry on CSPs).  The revised Act does not articulate what constitutes a “licensing commitment” nor a “standard-essential patent”; however, the Act does provide the Governor-in-Council the ability to regulate these terms.

  •  Experimental use (Section 55.3 of the revised Patent Act): The amendments clarify that an act committed for the purpose of experimentation relating to the subject matter of a patent is not an infringement of a patent.  Again, the Governor-in-Council is empowered to make regulations in consideration of the factors and circumstances regarding this intended purpose.

  •  Prior Use (Section 56 of the revised Patent Act): This section provides that if a person committed an act in good faith and before the claim date of a patent (or made serious and effective preparations to commit such an act) - that would otherwise constitute infringement of the patent, performing the same act on or after the claim date would not be considered infringement of that patent.  An exception to infringement is provided where that person committed the act because they obtained knowledge of the subject matter defined by the claim in the patent, directly or indirectly, from the applicant of that patent, where the person knew that the applicant was the source of the knowledge.

  •  Written Demands (Section 76.2 of the revised Patent Act): The amendments provide requirements for written demands, or cease-and-desist letters.  These requirements appear to be directed only to demands received by a person in Canada, but can relate to “an invention that is patented in Canada or elsewhere.”  Corresponding regulations on the actual scope of the requirements have not yet been established.

Further details on the above amendments will likely be clarified by way of corresponding regulations, and the eventual impact of these changes will not be known until challenged in the courts.  In addition, the transitional provisions indicate that these amendments apply in respect of any action or proceeding that has not been finally disposed as of the coming-into-force date.  This appears to suggest that they may be applied retroactively to any active matter (e.g. prior as well as ongoing communications in the prosecution history of any pending patent application). 

This blog entry is for information purposes only and does not constitute legal or professional advice.

PatentsDr. David Barrans