Tuesday, February 5, 2013

Working Requirements of Patented Inventions in Canada

Tuesday, February 05, 2013
Unlike a number of other foreign jurisdictions there is no requirement in Canada to submit documentation / evidence to show working of a patented invention.  Moreover, there is no language in the Canadian Patent Act or Rules that provides for the preemptive submission of evidence or documentation demonstrating working of a patented invention. 

Sections 65 to 71 of the Canadian Patent Act relate to abuse of patent rights and includes, under abuse of patent rights, the failure to meet demand in Canada.  In particular, Section 65 specifies that the Attorney General of Canada or any interested person may, at any time after the expiration of three years from the date of the grant of a patent, apply to the Commissioner of Patents alleging that there has been an abuse of the patent rights and ask for relief.  The relief may include the grant of compulsory licenses or the patent being revoked.

Abuse of patent right is defined in the statute and includes:
  • demand for the patented article in Canada not being met to an adequate extent and on reasonable terms;
  • 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;
  • 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, to the purchase, hire, licence or use of the patented article or to the using or working of the patented process; or
  • 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.
If a request for relief is submitted by a third party, the patentee has an opportunity to oppose the granting of such relief.  In particular, the Canadian Patent Act provides for the submission of a counter statement verified by a statutory declaration fully setting out the grounds on which the application for relief is to be opposed.  If necessary, there is also an opportunity for a hearing with the Commissioner and finally appeal to the Federal Court.

By: Kay Palmer