The implications of amendments to Canada’s patent law at the end of 2018 remain unclear, but patent owners and those considering patent strategies in Canada should take note.
Overview of Legislative Changes
On December 13, 2018, Bill C-86, known as the Budget Implementation Act, received royal assent, bringing several alterations to Canadian patent law. These changes pertain to the adjudication of patent and trademark infringement cases in Canadian courts and introduce licensing requirements for professionals in this field.
Standard-Essential Patents (SEPs)
The amendments extend licensing obligations for SEPs, binding subsequent owners to the original licensing terms. This extends to SEPs listed in certificates of supplementary protection (CSP) for pharmaceutical formulations.
Claim Construction and Prosecution History
Written communication with the Canadian Intellectual Property Office (CIPO) during patent prosecution is now admissible as evidence in patent infringement proceedings. This includes correspondence related to patent applications, disclaimers, and requests for reconsideration.
Exceptions to Infringement
The new law introduces exceptions for acts conducted for experimental purposes related to a patent’s subject matter. It also provides exemptions for acts not considered patent infringement, including prior user rights and sales in good faith before the patent’s filing date.
A significant change involves written demand letters for infringement. Non-compliant letters can result in legal action, and officers and directors of a corporation may be held liable. The legislation allows the Federal Court to grant relief, including damages, injunctions, and cost awards.
Expert Perspective and Future Developments
David Schwartz, Partner at Smith and Biggar/Fetherstonhaugh, suggests that these changes may limit the scope of patent protection in Canada. However, certain terms, such as “licensing duty” and “SEP,” await further definition through regulation. Schwartz also highlights the positive development of establishing a College for Patent Agents and Trade-mark Agents, addressing concerns in the legal profession.
In conclusion, while the impact of the 2018 amendments on patent strategies in Canada is still unfolding, these changes mark a significant evolution in the country’s patent law landscape. The alterations ushered in by these amendments have introduced nuanced shifts that necessitate a keen understanding of patent law dynamics, thereby shaping the strategies and approaches employed within Canada’s intellectual property framework.