Patent Act (R.S.C., 1985, c. P-4)

Administrative Matters

Marginal note:Applications, fees and documents

119 Applications, fees and documents relating to certificates of supplementary protection shall be submitted to the Minister.

Marginal note:Inspection by public

• 120 (1) The Minister shall ensure that the prescribed contents of all certificates of supplementary protection and applications for a certificate are made available for public inspection under the conditions that may be prescribed.

• Marginal note:Non-application

  (2) Subsection (1) does not apply with respect to the contents of applications for a certificate that are refused, declared invalid or void, expired or withdrawn.

Marginal note:Copy in case of loss or destruction

121 The Minister may issue a certified copy of a certificate of supplementary protection to replace one that is lost or destroyed.

Marginal note:Issuance of patent under section 47

• 122 (1) If a patent set out in a certificate of supplementary protection or in a pending application for such a certificate is surrendered, and a new patent is issued, under section 47, the holder of the certificate or the applicant shall, before the end of the prescribed period that begins on the day on which the new patent is issued, provide the Minister with written notice of the number, as recorded in the Patent Office, of the new patent to which the certificate or application relates.

• Marginal note:One patent

  (2) If more than one new patent is issued under section 47, the holder of the certificate or the applicant shall provide the number for only one of the new patents.

• Marginal note:New certificate

  (3) If notice is provided under subsection (1) by a holder of a certificate, the Minister shall issue a new certificate of supplementary protection, setting out the new patent number, to replace the original certificate. The new certificate’s term is the then unexpired term of the original certificate.

• Marginal note:Effect of new certificate

  (4) The new certificate is deemed to have been issued on the day on which the new patent is issued. The original certificate and the new certificate have the same effect in law, in any action commenced after the issuance of the new certificate for any cause accruing after that issuance, as if the new patent had been set out in the original certificate; however, insofar as the claims of the new patent and the original patent are identical, the issuance of the new certificate does not affect any action pending at the time of the issuance of the new certificate or abate any cause of action that existed at that time and the new certificate constitutes a continuation of the original certificate and has effect accordingly.

• Marginal note:Application

  (5) If notice is provided under subsection (1) by an applicant for a pending application, the Minister shall

  • (a) amend the application to set out the new patent number; and

  • (b) provide written notice of the amendment to any other applicant referred to in section 109 with respect to the application.

• Marginal note:Effect of amendment to application

  (6) The amended application has the same effect, for the purposes of sections 106 to 113, as if the pending application had been originally filed in its amended form.

Use of Certificates of Supplementary Protection by Government

Marginal note:Application

123 Sections 19 to 19.2 apply with respect to certificates of supplementary protection, with

• (a) any reference to “patented invention” to be read, with any grammatical adaptations, as a reference to “invention protected by a certificate of supplementary protection”; and

• (b) any reference to “patentee” to be read as a reference to “holder of the certificate of supplementary protection”.

Legal Proceedings in Respect of Certificates of Supplementary Protection

Marginal note:Admissible in evidence

123.1 A written communication, or any part of such a communication, that is admissible under section 53.1 in respect of a patent set out in a certificate of supplementary protection may be admitted into evidence to any action or proceeding respecting the certificate of supplementary protection to rebut any representation made by the holder of the certificate of supplementary protection in the action or proceeding as to the construction of a claim in the patent set out in the certificate of supplementary protection.

Infringement and Impeachment

Marginal note:Action for infringement

• 124 (1) An action for the infringement of a certificate of supplementary protection may be brought in the same manner as an action for the infringement of a patent, and the following provisions apply to the action:

  • (a) sections 54, 57 and 59, with any reference to “patent” to be read as a reference to “certificate of supplementary protection”;

  • (b) subsection 55(1), and subsection 55(3) as it applies to that subsection (1), with any reference to “patent” to be read as a reference to “certificate of supplementary protection”, any reference to “patentee” to be read as a reference to “holder of the certificate of supplementary protection” and any reference to “grant” to be read as a reference to “taking of effect”;

  • (c) section 55.01;

  • (d) section 55.1, with any reference to “patent” to be read as a reference to “certificate of supplementary protection” and any reference to “patented process” to be read as a reference to “process protected by the certificate of supplementary protection”;

  • (e) subsections 55.2(1) and (6), with any reference to “patent” to be read as a reference to “certificate of supplementary protection” and any reference to “patented invention” to be read as a reference to “invention protected by the certificate of supplementary protection”;

  • (f) subsection 55.3(1), with any reference to “patent” to be read as a reference to “certificate of supplementary protection”;

  • (g) section 58, with the reference to “a patent that contains two or more claims” to be read as a reference to a “two or more claims in a patent that is set out in a certificate of supplementary protection” and with the reference to “the patent as if it” to be read as a reference to “the certificate as if the patent set out in it”.

• Marginal note:Regulations — subsection 55.2(4)

  (2) The Governor in Council may make regulations respecting the infringement of any certificate of supplementary protection that, directly or indirectly, could result or results from the making, construction, use or sale of a patented invention or invention protected by a certificate of supplementary protection in accordance with subsection 55.2(1), including regulations described in paragraphs 55.2(4)(a) to (k), with

  • (a) any reference in those paragraphs to a “patent” to be read as a reference to a “certificate of supplementary protection”; and

  • (b) the reference in paragraph 55.2(4)(k) to “subsection 60(1)” to be read as a reference to “subsection 125(1)”.

• Marginal note:Regulations

  (2.1) The Governor in Council may make regulations respecting

  • (a) factors that the court may consider, must consider or is not permitted to consider in determining whether an act is, or is not, committed for the purpose of experimentation relating to the subject-matter of the certificate of supplementary protection; and

  • (b) circumstances in which an act is, or is not, committed for the purpose of experimentation relating to the subject-matter of the certificate of supplementary protection.

• Marginal note:Inconsistency or conflict

  (3) In the event of an inconsistency or conflict between regulations made under subsection (2) and any Act of Parliament or regulations made under such an Act, the regulations made under subsection (2) prevail to the extent of the inconsistency or conflict.

Marginal note:Impeachment

• 125 (1) A certificate of supplementary protection, or any claim in the patent set out in such a certificate, may be declared invalid or void — including on the basis that the certificate was issued despite non-compliance with any of the requirements, as they existed at the time that the certificate was issued, of subsection 106(1) or that the patent set out in the certificate no longer complies with the requirements, as they existed at that time, set out in paragraph 106(1)(c) — by the Federal Court at the instance of the Attorney General of Canada or any interested person.

• Marginal note:Application

  (2) Subsections 60(2) and (3) apply with respect to a certificate of supplementary protection, with any reference to “patentee” to be read as a reference to “holder of a certificate of supplementary protection” and any reference to “patent” to be read as a reference to “certificate of supplementary protection”.

Marginal note:Judgment voiding certificate or claim

• 126 (1) A certificate of supplementary protection, or a claim in the patent set out in such a certificate, 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 subsection (2).

• Marginal note:Appeal

  (2) Every judgment voiding a certificate of supplementary protection or any claim in the patent set out in such a certificate, and every judgment refusing to do so, is subject to appeal to any court having appellate jurisdiction in other cases decided by the court by which the judgment was rendered.

Abuse of Rights

Marginal note:Abuse of patent rights

• 127 (1) The Commissioner may, in respect of application under section 65, exercise any of the powers under any of paragraphs 66(1)(a), (d) and (e) with respect to an issued certificate of supplementary protection if he or she is satisfied that a case of abuse of the exclusive rights under the patent that is set out in the certificate has been established.

• Marginal note:Abuse — application to Commissioner

  (2) The Attorney General of Canada or an interested person may, at any time after a certificate of supplementary protection takes effect and after the expiry of three years from the date of the grant of the patent set out in the certificate, apply to the Commissioner alleging that there has been an abuse of the exclusive rights granted under a certificate of supplementary protection issued with respect to that patent and asking for relief under this Act.

• Marginal note:What amounts to abuse

  (3) The exclusive rights under a certificate of supplementary protection are abused in any of the following circumstances:

  • (a) the demand in Canada for a drug that contains the medicinal ingredient or a combination of the medicinal ingredients set out in the certificate is not being met to an adequate extent and on reasonable terms;

  • (b) by reason of the refusal of the certificate’s holder 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;

  • (c) any trade or industry in Canada, or any person or class of persons engaged in such a trade or industry, is unfairly prejudiced by the conditions attached by the certificate’s holder to the purchase, hire, licence, use or working of the invention protected by the certificate.

Marginal note:Provisions that apply

128 Sections 66 to 71, other than paragraph 66(1)(c), apply for the purposes of section 127, with

• (a) any reference to “patent”, other than with respect to the Patent Office, to be read as a reference to “certificate of supplementary protection”;

• (b) any reference to “patentee” to be read as a reference to “holder of the certificate of supplementary protection”;

• (c) any reference in paragraphs 66(1)(d) and (e) and subsection 68(1) to “section 65” to be read as a reference to “section 127”;

• (d) any reference in subsection 69(1) or section 71 to “sections 65 to 70” to be read as a reference to “sections 66 to 70 and 127”; and

• (e) the reference in subsection 69(3) to “the Minister” to be read as a reference to “the Minister of Industry”.

General

Marginal note:Electronic form and means

• 129 (1) Subject to the regulations, any document, information or fee that is submitted to the Minister under this Act may be submitted in any electronic form, and by any electronic means, that is specified by the Minister.

• Marginal note:Collection, storage, etc.

  (2) Subject to the regulations, the Minister may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information under sections 106 to 134.

• Marginal note:Definition

  (3) In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means.

Marginal note:Certified copies as evidence

130 In any action or proceeding respecting a certificate of supplementary protection authorized to be had or taken in Canada under this Act, a copy purporting to be certified by the Minister of any such certificate, or of any other document that is made by or filed with the Minister and is connected to such a certificate, may be produced before the court or other tribunal, or a judge or member of the court or tribunal, and the copy purporting to be so certified may be admitted in evidence without production of the original and without proof of the Minister’s certification.

Marginal note:Costs of proceedings

131 In all proceedings before any court under this Act, including, for greater certainty, an application for judicial review of a decision of the Minister under this Act, the costs of the Minister are in the discretion of the court, but the Minister shall not be ordered to pay the costs of any other of the parties.

Marginal note:Time limit deemed extended

• 132 (1) If any time period fixed under any of sections 106 to 134 in respect of dealings with the Minister ends on a prescribed day or a day that is designated by the Minister, that time period is extended to the next day that is not a prescribed day or a designated day.

• Marginal note:Power to designate day

  (2) The Minister may, on account of unforeseen circumstances and if the Minister is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Minister shall inform the public of that fact on the Department of Health’s website.

Marginal note:Service Fees Act

133 The Service Fees Act does not apply in respect of the fees referred to in section 106 or 134.

Marginal note:Regulations

• 134 (1) The Governor in Council may make rules or regulations

  • (a) defining the term authorization for sale;

  • (b) respecting the form and contents of applications for certificates of supplementary protection;

  • (c) respecting the processing of such applications;

  • (d) respecting the determination of when, for the purpose of paragraph 106(1)(f), an application for an authorization for sale was filed and, for the purpose of subsection 106(3), an application for a certificate of supplementary protection is filed;

  • (e) prescribing the fees or the manner of determining the fees that may be charged in respect of the filing of applications for certificates of supplementary protection, the issuance of such certificates or the taking of other proceedings under sections 106 to 133 or under any rule or regulation made under this section, or in respect of any services or the use of any facilities provided by the Minister under those sections or such a rule or regulation;

  • (f) respecting the circumstances in which any patentee or holder of a certificate of supplementary protection may or must be represented by another person in respect of a certificate of supplementary protection or an application for such a certificate;

  • (g) respecting the submission, including in electronic form and by electronic means, of documents and information to the Minister, including the time at which they are deemed to be received by the Minister;

  • (h) respecting the use of electronic means for the purposes of subsection 129(2), including requiring the use of those electronic means;

  • (i) respecting the withdrawal of an application for a certificate of supplementary protection;

  • (j) respecting communications between the Minister and any other person;

  • (k) respecting the correction of obvious errors in documents submitted to the Minister, in certificates of supplementary protection or in other documents issued under sections 106 to 133, including

    • (i) the determination by the Minister of what constitutes an obvious error, and

    • (ii) the effect of the correction; and

  • (l) generally, for carrying into effect the objects and purposes of sections 104 to 133 or for ensuring their due administration by the Minister.

• Marginal note:For greater certainty

  (2) For greater certainty, the Governor in Council may make rules or regulations under paragraphs 12(1)(d), (g), (h) and (k) for the purposes of this section and sections 104 to 133.