Infringement, Validity Challenges and Remedies
This domain tests the litigation side: what constitutes infringement under s. 42 and s. 55, how validity is challenged, and what remedies are available. Questions often present a commercial scenario and ask whether infringement lies or which defence applies.
Infringement
- Section 42: the patent grants the exclusive right to make, construct, use and sell the invention.
- Section 55: infringement includes making, constructing, using or selling the patented invention without authorization; s. 55(2) extends to inducement and s. 55(3) to contributory infringement.
- Purposive construction (Free World Trust, Whirlpool) determines scope; essential elements cannot be substituted.
- Defences: experimental use, regulatory review (s. 55.2), prior use (s. 56), and invalidity.
Validity challenges
- Impeachment under s. 60: any person may plead invalidity in defence or counterclaim.
- Grounds: lack of novelty (s. 28.1), obviousness (s. 28.2), lack of utility (s. 28.3), insufficient disclosure (s. 27(3)), double patenting (s. 28.4), and ineligible subject matter (s. 2).
- Burden: the patent is presumed valid; the challenger bears the burden on a balance of probabilities.
Remedies
- Section 57: injunction, damages, accounting of profits, delivery up, and declaration.
- Section 55.1: damages may be awarded for infringement occurring after publication of the application, subject to the patent issuing.
- Limitation period: s. 55.1 and provincial limitation statutes; the federal 6-year limitation under the Federal Courts Act applies to proceedings in the Federal Court.
- Costs: solicitor-client costs may be awarded for egregious conduct.
Worked example
A competitor sells a generic version of a patented drug. The patentee sues in the Federal Court. The competitor counterclaims for invalidity based on an allegedly anticipating disclosure. Analysis: the patentee bears the burden of proving infringement on a balance of probabilities; the competitor bears the burden of proving invalidity. If the prior art was published more than 12 months before the claim date and was not by the inventor, novelty fails. If the prior art was by the inventor within 12 months, the grace period applies. Remedies if infringement is found: injunction, damages or accounting of profits, and possibly delivery up.
Traps
- Confusing the burden of proof for infringement (patentee) with invalidity (challenger).
- Forgetting the s. 55.2 regulatory review defence for generic manufacturers.
- Treating the grace period as applying to third-party disclosures not derived from the inventor.
- Missing the 6-year limitation period in Federal Court.