Patent Act (R.S.C., 1985, c. P-4)

Marginal note:Previous version of section 43 applies

• 78.3 (1) Where a conflict, as defined in section 43 as it read immediately before October 1, 1989, exists between an application for a patent in Canada filed before October 1, 1989 (the “earlier application”) and an application for a patent in Canada filed on or after that date (the “later application”) and

  • (a) the later application is filed by a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent describing the same invention,

  • (b) the later application is filed within twelve months after the filing of the previously regularly filed application,

  • (c) the applicant in the later application has made a request for priority in respect of that application on the basis of the previously regularly filed application, and

  • (d) the earlier application is filed after the filing of the previously regularly filed application,

  the applicant having the earlier date of invention shall be entitled to a patent and the applications shall be dealt with and disposed of in accordance with section 43, as it read immediately before October 1, 1989.

• Marginal note:Exception

  (2) Subsection (1) does not apply if

  • (a) the earlier application is filed by a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent describing the same invention;

  • (b) the earlier application is filed within twelve months after the filing of the previously regularly filed application mentioned in paragraph (a);

  • (c) the applicant in the earlier application has made a request for priority in respect of that application on the basis of the previously regularly filed application mentioned in paragraph (a); and

  • (d) the previously regularly filed application mentioned in paragraph (a) was filed before the filing of the previously regularly filed application mentioned in subsection (1).

Marginal note:Applications — filing date October 1, 1989 to before October 1, 1996

78.4 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is on or after October 1, 1989 but before October 1, 1996 shall be dealt with and disposed of in accordance with

• (a) the provisions of this Act, other than the definition filing date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6); and

• (b) subsection 27(2) as it read immediately before October 1, 1996.

Marginal note:Applications — filing date October 1, 1996 to before coming-into-force date

78.5 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is on or after October 1, 1996 but before the coming-into-force date shall be dealt with and disposed of in accordance with the provisions of this Act, other than the definition filing date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6).

Marginal note:Abandonment before coming-into-force date

78.51 If an application for a patent was deemed to be abandoned under section 73 as it read immediately before the coming-into-force date, that section 73 applies in respect of that abandonment.

Marginal note:Abandonment — requisition or notice before coming-into-force date

• 78.52 (1) If, on or after the coming-into-force date, an applicant fails to do any act described in paragraph 73(1)(a), (b), (e) or (f), as those paragraphs read immediately before that date, in respect of a requisition made or notice given, as the case may be, before that date, section 73 as it read immediately before that date applies in respect of any abandonment resulting from the failure.

• Marginal note:Abandonment — section 97 of the Patent Rules

  (2) If, on or after the coming-into-force date, an applicant fails to do any act described in section 97 of the Patent Rules, as that section read immediately before that date, in respect of a requisition of the Commissioner that was given before that date, section 73 as it read immediately before that date applies in respect of any abandonment resulting from the failure.

Marginal note:Patents — filing date before October 1, 1989

• 78.53 (1) Subject to subsection 78.55(2), any matter arising on or after the coming-into-force date, in respect of a patent granted on the basis of an application whose filing date is before October 1, 1989, shall be dealt with and disposed of in accordance with

  • (a) the provisions of this Act, other than the definitions claim date, filing date and request for priority in section 2, sections 10, 27 to 28.4, 34.1 to 36, 38.2 and 55, paragraphs 55.11(1)(a) and (b) and section 56; and

  • (b) sections 10 and 55 and subsections 61(1) and (3), as they read immediately before October 1, 1989.

• Marginal note:Special case

  (2) Section 56 of the Patent Act, as it read immediately before October 1, 1989, applies in respect of a purchase, construction or acquisition made before October 1, 1996 of an invention for which a patent is issued on the basis of an application filed before October 1, 1989.

Marginal note:Patents — filing date October 1, 1989 to before coming-into-force date

78.54 Subject to subsection 78.55(1) and section 78.56, any matter arising on or after the coming-into-force date in respect of a patent granted on the basis of an application whose filing date is on or after October 1, 1989 but before the coming-into-force date shall be dealt with and disposed of in accordance with the provisions of this Act, other than the definition filing date in section 2 and section 28.

Marginal note:Application of section 46 — item 31 of Schedule II to Patent Rules

• 78.55 (1) If the time, not including a period of grace, set out in item 31 of Schedule II to the Patent Rules to pay the applicable fee to maintain the rights accorded by a patent in effect ends before the coming-into-force date, section 46 as it read immediately before the coming-into-force date applies in respect of that fee.

• Marginal note:Application of section 46 — item 32 of Schedule II to Patent Rules

  (2) If the time, not including a period of grace, set out in item 32 of Schedule II to the Patent Rules to pay the applicable fee to maintain the rights accorded by a patent in effect ends before the coming-into-force date, section 46 as it read immediately before the coming-into-force date applies in respect of that fee.

Marginal note:Non-application of subsection 27.1(4) and section 73.1

78.56 Subsection 27.1(4) and section 73.1 do not apply to a patent that was granted before the coming-into-force date or to a reissued patent if the original patent was granted before that date.

Marginal note:Reissued patents

78.57 For greater certainty, for the purposes of sections 78.53 and 78.54, a reissued patent is considered to be issued on the basis of the original application.

Marginal note:Regulations

78.58 For greater certainty, a regulation made under subsection 12(1) applies to an application for a patent referred to in section 78.22, unless the regulation provides otherwise.

Marginal note:Payment of prescribed fees

• 78.6 (1) If, before the day on which this section comes into force, a person has paid a prescribed fee applicable to a small entity, within the meaning of the Patent Rules as they read at the time of payment, but should have paid the prescribed fee applicable to an entity other than a small entity and a payment equivalent to the difference between the two amounts is submitted to the Commissioner in accordance with subsection (2) either before or no later than twelve months after that day, the payment is deemed to have been paid on the day on which the prescribed fee was paid, regardless of whether an action or other proceeding relating to the patent or patent application in respect of which the fee was payable has been commenced or decided.

• Marginal note:Information to be provided

  (2) Any person who submits a payment to the Commissioner in accordance with subsection (1) is required to provide information with respect to the service or proceeding in respect of which the fee was paid and the patent or application in respect of which the fee was paid.

• Marginal note:No refund

  (3) A payment submitted in accordance with subsection (1) shall not be refunded.

• Marginal note:Action and proceedings barred

  (4) No action or proceeding for any compensation or damages lies against Her Majesty in right of Canada in respect of any direct or indirect consequence resulting from the application of this section.

• Marginal note:Application

  (5) For greater certainty, this section also applies to applications for patents mentioned in section 78.22.

Patented or Protected Medicines

Interpretation

Marginal note:Definitions

• 79 (1) In this section and in sections 80 to 103,

  Board

  Board means the Patented Medicine Prices Review Board continued by section 91; (Conseil)

  Consumer Price Index

  Consumer Price Index means the Consumer Price Index published by Statistics Canada under the authority of the Statistics Act; (indice des prix à la consommation)

  medicine

  medicine includes a drug, as defined in section 104, and a medicinal ingredient; (médicament)

  Minister

  Minister means the Minister of Health or such other Member of the Queen’s Privy Council for Canada as is designated by the Governor in Council as the Minister for the purposes of this section and sections 80 to 103; (ministre)

  patentee

  patentee, in respect of an invention pertaining to a medicine, means the person for the time being entitled to the benefit of the patent for that invention and includes, where any other person is entitled to exercise any rights in relation to that patent other than under a licence continued by subsection 11(1) of the Patent Act Amendment Act, 1992, that other person in respect of those rights; (breveté ou titulaire d’un brevet)

  regulations

  regulations means regulations made under section 101; (règlement)

  rights holder

  rights holder means, in respect of an invention pertaining to a medicine, a patentee and the person for the time being entitled to the benefit of a certificate of supplementary protection for that invention, and includes, if any other person is entitled to exercise rights in relation to the certificate, that other person in respect of those rights. (titulaire de droits)

• Marginal note:Invention pertaining to a medicine

  (2) For the purposes of subsection (1) and sections 80 to 101, an invention pertains to a medicine if the invention is intended or capable of being used for medicine or for the preparation or production of medicine.

Pricing Information

Marginal note:Pricing information, etc., required by regulations

• 80 (1) A rights holder for an invention pertaining to a medicine shall, as required by and in accordance with the regulations, provide the Board with the information and documents that the regulations may specify respecting

  • (a) the identity of the medicine;

  • (b) the price at which the medicine is being or has been sold in any market in Canada and elsewhere;

  • (c) the costs of making and marketing the medicine, if that information is available to the rights holder in Canada or is within the knowledge or control of the rights holder;

  • (d) the factors referred to in section 85; and

  • (e) any other related matters.

• Marginal note:Former rights holder

  (2) Subject to subsection (3), a person who is a former rights holder for an invention pertaining to a medicine shall, as required by and in accordance with the regulations, provide the Board with the information and documents that the regulations may specify respecting

  • (a) the identity of the medicine;

  • (b) the price at which the medicine was sold in any market in Canada and elsewhere during the period in which the person was a rights holder for the invention;

  • (c) the costs of making and marketing the medicine produced during that period, whether incurred before or after the patent was issued or the certificate of supplementary protection took effect, if that information is available to the person in Canada or is within the knowledge or control of the person;

  • (d) the factors referred to in section 85; and

  • (e) any other related matters.

• Marginal note:Limitation

  (3) Subsection (2) does not apply to a person who has not, for a period of three or more years, been entitled to the benefit of the patent or certificate of supplementary protection, as the case may be, or to exercise any rights in relation to the patent or certificate.