Patent Act (R.S.C., 1985, c. P-4)

Marginal note:Injunction may issue

• 57 (1) In any action for infringement of a patent, the court, or any judge thereof, may, on the application of the plaintiff or defendant, make such order as the court or judge sees fit,

  • (a) restraining or enjoining the opposite party from further use, manufacture or sale of the subject-matter of the patent, and for his punishment in the event of disobedience of that order, or

  • (b) for and respecting inspection or account,

  and generally, respecting the proceedings in the action.

• Marginal note:Appeal

  (2) An appeal lies from any order made under subsection (1) in the same circumstances and to the same court as from other judgments or orders of the court in which the order is made.

Marginal note:Invalid claims not to affect valid claims

58 When, in any action or proceeding respecting a patent that contains two or more claims, one or more of those claims is or are held to be valid but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claims.

Marginal note:Defence

59 The defendant, in any action for infringement of a patent may plead as matter of defence any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.

Impeachment

Marginal note:Impeachment of patents or claims

• 60 (1) A patent or any claim in a patent may be declared invalid or void by the Federal Court at the instance of the Attorney General of Canada or at the instance of any interested person.

• Marginal note:Declaration as to infringement

  (2) Where any person has reasonable cause to believe that any process used or proposed to be used or any article made, used or sold or proposed to be made, used or sold by him might be alleged by any patentee to constitute an infringement of an exclusive property or privilege granted thereby, he may bring an action in the Federal Court against the patentee for a declaration that the process or article does not or would not constitute an infringement of the exclusive property or privilege.

• Marginal note:Security for costs

  (3) With the exception of the Attorney General of Canada or the attorney general of a province, the plaintiff in any action under this section shall, before proceeding therein, give security for the costs of the patentee in such sum as the Federal Court may direct, but a defendant in any action for the infringement of a patent is entitled to obtain a declaration under this section without being required to furnish any security.

61 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 23]

Judgments

Marginal note:Judgment voiding patent

62 A patent, or part of a patent, that is voided by a judgment shall be and be held to have been void and of no effect, unless the judgment is reversed on appeal as provided in section 63.

Marginal note:Appeal

63 Every judgment voiding in whole or in part or refusing to void in whole or in part any patent is subject to appeal to any court having appellate jurisdiction in other cases decided by the court by which the judgment was rendered.

Conditions

64 [Repealed, 1993, c. 44, s. 195]

Marginal note:Abuse of rights under patents

• 65 (1) The Attorney General of Canada or any person interested may, at any time after the expiration of three years from the date of the grant of a patent, apply to the Commissioner alleging in the case of that patent that there has been an abuse of the exclusive rights thereunder and asking for relief under this Act.

• Marginal note:What amounts to abuse

  (2) The exclusive rights under a patent shall be deemed to have been abused in any of the following circumstances:

  • (a) and (b) [Repealed, 1993, c. 44, s. 196]

  • (c) if the demand for the patented article in Canada is not being met to an adequate extent and on reasonable terms;

  • (d) if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms, the trade or industry of Canada or the trade of any person or class of persons trading in Canada, or the establishment of any new trade or industry in Canada, is prejudiced, and it is in the public interest that a licence or licences should be granted;

  • (e) if any trade or industry in Canada, or any person or class of persons engaged therein, is unfairly prejudiced by the conditions attached by the patentee, whether before or after the passing of this Act, to the purchase, hire, licence or use of the patented article or to the using or working of the patented process; or

  • (f) if it is shown that the existence of the patent, being a patent for an invention relating to a process involving the use of materials not protected by the patent or for an invention relating to a substance produced by such a process, has been utilized by the patentee so as unfairly to prejudice in Canada the manufacture, use or sale of any materials.

• (3) and (4) [Repealed, 1993, c. 44, s. 196]

• Marginal note:Definition of patented article

  (5) For the purposes of this section, the expression patented article includes articles made by a patented process.

Marginal note:Powers of Commissioner in cases of abuse

• 66 (1) On being satisfied that a case of abuse of the exclusive rights under a patent has been established, the Commissioner may exercise any of the following powers as he may deem expedient in the circumstances:

  • (a) he may order the grant to the applicant of a licence on such terms as the Commissioner may think expedient, including a term precluding the licensee from importing into Canada any goods the importation of which, if made by persons other than the patentee or persons claiming under him, would be an infringement of the patent, and in that case the patentee and all licensees for the time being shall be deemed to have mutually covenanted against that importation;

  • (b) [Repealed, 1993, c. 44, s. 197]

  • (c) if the Commissioner is satisfied that the exclusive rights have been abused in the circumstances specified in paragraph 65(2)(f), he may order the grant of licences to the applicant and to such of his customers, and containing such terms, as the Commissioner may think expedient;

  • (d) if the Commissioner is satisfied that the objects of this section and section 65 cannot be attained by the exercise of any of the foregoing powers, the Commissioner shall order the patent to be revoked, either forthwith or after such reasonable interval as may be specified in the order, unless in the meantime such conditions as may be specified in the order with a view to attaining the objects of this section and section 65 are fulfilled, and the Commissioner may, on reasonable cause shown in any case, by subsequent order extend the interval so specified, but the Commissioner shall not make an order for revocation which is at variance with any treaty, convention, arrangement, or engagement with any other country to which Canada is a party; or

  • (e) if the Commissioner is of opinion that the objects of this section and section 65 will be best attained by not making an order under the provisions of this section, he may make an order refusing the application and dispose of any question as to costs thereon as he thinks just.

• Marginal note:Proceedings to prevent infringement

  (2) A licensee under paragraph (1)(a) is entitled to call on the patentee to take proceedings to prevent infringement of the patent, and if the patentee refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in his own name as though he were the patentee, making the patentee a defendant, but a patentee added as defendant is not liable for any costs unless he enters an appearance and takes part in the proceedings.

• (3) [Repealed, 2017, c. 6, s. 41]

• Marginal note:Considerations by which Commissioner to be guided

  (4) In settling the terms of a licence under paragraph (1)(a), the Commissioner shall be guided as far as possible by the following considerations:

  • (a) he shall endeavour to secure the widest possible use of the invention in Canada consistent with the patentee deriving a reasonable advantage from his patent rights;

  • (b) he shall endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in Canada; and

  • (c) he shall endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the patentee under any licence previously granted.

67 [Repealed, 1993, c. 44, s. 198]

Marginal note:Contents of applications

• 68 (1) Every application presented to the Commissioner under section 65 shall

  • (a) set out fully the nature of the applicant’s interest, the facts on which the applicant bases his case and the relief that he seeks; and

  • (b) be accompanied by statutory declarations verifying the applicant’s interest and the facts set out in the application.

• Marginal note:Service

  (2) The Commissioner shall consider the matters alleged in the application and declarations referred to in subsection (1) and, if satisfied that the applicant has a bona fide interest and that a case for relief has been made, the Commissioner shall direct the applicant to serve copies of the application and declarations on the patentee and on any other persons appearing from the records of the Patent Office to be interested in the patent, and the applicant shall advertise the application both

  • (a) in the Canada Gazette; and

  • (b) on the website of the Canadian Intellectual Property Office or in any other prescribed location.

Marginal note:Opposition and counter statement

• 69 (1) If the patentee or any person is desirous of opposing the granting of any relief under sections 65 to 70, he shall, within such time as may be prescribed or within such extended time as the Commissioner may on application further allow, deliver to the Commissioner a counter statement verified by a statutory declaration fully setting out the grounds on which the application is to be opposed.

• Marginal note:Attendance for cross-examination

  (2) The Commissioner shall consider the counter statement and declaration referred to in subsection (1) and may thereupon dismiss the application if satisfied that the allegations in the application have been adequately answered, unless any of the parties demands a hearing or unless the Commissioner himself appoints a hearing, and in any case the Commissioner may require the attendance before him of any of the declarants to be cross-examined or further examined on matters relevant to the issues raised in the application and counter statement, and he may, subject to due precautions against disclosure of information to rivals in trade, require the production before him of books and documents relating to the matter in issue.

• Marginal note:Reference to Federal Court

  (3) In any case where the Commissioner does not dismiss an application as provided in subsection (2), and

  • (a) if the parties interested consent, or

  • (b) if the proceedings require any prolonged examination of documents or any scientific or local investigation that cannot in the opinion of the Commissioner conveniently be made before him,

  the Commissioner, with the approval in writing of the Minister, may order the whole proceedings or any issue of fact arising thereunder to be referred to the Federal Court, which has jurisdiction in the premises.

• Marginal note:Idem

  (4) Where the whole proceedings are referred under subsection (1), the judgment, decision or order of the Federal Court is final, and where a question or issue of fact is referred under that subsection, the Court shall report its findings to the Commissioner.

Marginal note:Licence deemed to be by deed

70 Any order for the grant of a licence under this Act, without prejudice to any other method of enforcement, operates as if it were embodied in a deed granting a licence executed by the patentee and all other necessary parties.

Marginal note:Appeal to Federal Court

71 All orders and decisions of the Commissioner under sections 65 to 70 are subject to appeal to the Federal Court, and on any such appeal the Attorney General of Canada or such counsel as he may appoint is entitled to appear and be heard.

72 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 25]

Abandonment and Reinstatement of Applications

Marginal note:Deemed abandonment of applications

• 73 (1) An application for a patent in Canada shall be deemed to be abandoned if

  • (a) the applicant does not reply in good faith, within the prescribed time, to any requisition made by an examiner in connection with an examination;

  • (b) the applicant does not comply with a notice given under subsection 27(6);

  • (c) the prescribed fee and late fee referred to in a notice sent under paragraph 27.1(2)(b) are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice;

  • (d) the request referred to in a notice sent under paragraph 35(3)(b) is not made and the prescribed fee and late fee referred to in that notice are not paid before the end of two months after the date of the notice; or

  • (e) the request referred to in a notice sent under subsection 35(5) is not made and the prescribed fee referred to in that notice is not paid within the prescribed time.

  • (f) [Repealed, 2015, c. 36, s. 62]

• Marginal note:Deemed abandonment in prescribed circumstances

  (2) An application shall also be deemed to be abandoned in any other circumstances that are prescribed.

• Marginal note:Reinstatement

  (3) Subject to the regulations, an application that is deemed to be abandoned is reinstated if

  • (a) the applicant, within the prescribed time,

    • (i) makes a request for reinstatement to the Commissioner,

    • (ii) states, in the request, the reasons for the failure to take the action that should have been taken in order to avoid the abandonment,

    • (iii) takes the action that should have been taken in order to avoid the abandonment, and

    • (iv) pays the prescribed fee; and

  • (b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.

• Marginal note:Powers of the Federal Court

  (3.1) The Federal Court may, by order, declare an application that is reinstated under subsection (3) to never have been reinstated if the Federal Court determines either

  • (a) that the statement of the reasons referred to in subparagraph (3)(a)(ii) contains a material allegation that is untrue, or

  • (b) that, if paragraph (3)(b) applies, the failure referred to in subparagraph (3)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.

• (4) [Repealed, 2015, c. 36, s. 62]

• Marginal note:Filing date

  (5) An application that is reinstated retains its filing date.