INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - CANADA
Assignee or personal representatives
49. (1) A patent may be granted to any person to whom an inventor,
under this Act to obtain a patent, has assigned in writing or bequeathed by his
last will his right to obtain it, and, in the absence of an assignment or
bequest, the patent may be granted to the personal representatives of the estate
of the deceased inventor.
Assignees may object
(2) Where an applicant for a patent has, after filing the application,
his right to obtain the patent, or where the applicant has either before or
after filing the application assigned in writing the whole or part of his
property or interest in the invention, the assignee may register the assignment
in the Patent Office in such manner as may be determined by the Commissioner,
and no application for a patent may be withdrawn without the consent in writing
of every such registered assignee.
(3) No assignment shall be registered in the Patent Office unless it is
accompanied by the affidavit of a subscribing witness or established by other
proof to the satisfaction of the Commissioner that the assignment has been
signed and executed by the assignor.
R.S., 1985, c. P-4, s. 49; R.S., 1985, c. 33 (3rd Supp.), s. 19.
Patents to be assignable
50. (1) Every patent issued for an invention is assignable in law,
either as to
the whole interest or as to any part thereof, by an instrument in writing.
(2) Every assignment of a patent, and every grant and conveyance of any
exclusive right to make and use and to grant to others the right to make and use
the invention patented, within and throughout Canada or any part thereof, shall
be registered in the Patent Office in the manner determined by the Commissioner.
(3) No assignment, grant or conveyance shall be registered in the Patent
unless it is accompanied by the affidavit of a subscribing witness or
established by other proof to the satisfaction of the Commissioner that the
assignment, grant or conveyance has been signed and executed by the assignor and
by every other party thereto.
R.S., 1985, c. P-4, s. 50; R.S., 1985, c. 33 (3rd Supp.), s. 20.
When assignment void
51. Every assignment affecting a patent for invention, whether it is one
referred to in section 49 or 50, is void against any subsequent assignee, unless
the assignment is registered as prescribed by those sections, before the
registration of the instrument under which the subsequent assignee claims.
R.S., c. P-4, s. 53.
Jurisdiction of Federal Court
52. The Federal Court has jurisdiction, on the application of the
or of any person interested, to order that any entry in the records of the
Patent Office relating to the title to a patent be varied or expunged.
R.S., c. P-4, s. 54; R.S., c. 10(2nd Supp.), s. 64.
LEGAL PROCEEDINGS IN
RESPECT OF PATENTS
Void in certain cases, or valid only for parts
53. (1) A patent is void if any material allegation in the petition of
applicant in respect of the patent is untrue, or if the specification and
drawings contain more or less than is necessary for obtaining the end for which
they purport to be made, and the omission or addition is wilfully made for the
purpose of misleading.
(2) Where it appears to a court that the omission or addition referred
subsection (1) was an involuntary error and it is proved that the patentee is
entitled to the remainder of his patent, the court shall render a judgment in
accordance with the facts, and shall determine the costs, and the patent shall
be held valid for that part of the invention described to which the patentee is
so found to be entitled.
Copies of judgment
(3) Two office copies of the judgment rendered under subsection (1)
furnished to the Patent Office by the patentee, one of which shall be registered
and remain of record in the Office and the other attached to the patent and made
a part of it by a reference thereto.
R.S., c. P-4, s. 55.
Jurisdiction of courts
54. (1) An action for the infringement of a patent may be brought in
of record that, in the province in which the infringement is said to have
occurred, has jurisdiction, pecuniarily, to the amount of the damages claimed
and that, with relation to the other courts of the province, holds its sittings
nearest to the place of residence or of business of the defendant, and that
court shall decide the case and determine the costs, and assumption of
jurisdiction by the court is of itself sufficient proof of jurisdiction.
Jurisdiction of Federal Court
(2) Nothing in this section impairs the jurisdiction of the Federal
section 20 of the Federal Court Act or otherwise.
R.S., c. P-4, s. 56; R.S., c. 10(2nd Supp.), s. 65.
Liability for patent infringement
55. (1) A person who infringes a patent is liable to the patentee and to
persons claiming under the patentee for all damage sustained by the patentee or
by any such person, after the grant of the patent, by reason of the
Liability damage before patent is granted
(2) A person is liable to pay reasonable compensation to a patentee and
persons claiming under the patentee for any damage sustained by the patentee or
by any of those persons by reason of any act on the part of that person, after
the application for the patent became open to public inspection under section 10
and before the grant of the patent, that would have constituted an infringement
of the patent if the patent had been granted on the day the application became
open to public inspection under that section.
Patentee to be a party
(3) Unless otherwise expressly provided, the patentee shall be or be
party to any proceeding under subsection (1) or (2).
Deemed action for infringement
(4) For the purposes of this section and sections 54 and 55.01 to 59,
proceeding under subsection (2) is deemed to be an action for the infringement
of a patent and the act on which that proceeding is based is deemed to be an act
of infringement of the patent.
R.S., 1985, c. P-4, s. 55; R.S., 1985, c. 33 (3rd Supp.), s. 21; 1993,
c. 15, s.
55.01 No remedy may be awarded for an act of infringement committed more
six years before the commencement of the action for infringement.
1993, c. 15, s. 48.
Burden of proof for patented process
55.1 In an action for infringement of a patent granted for a process for
obtaining a new product, any product that is the same as the new product shall,
in the absence of proof to the contrary, be considered to have been produced by
the patented process.
1993, c. 2, s. 4, c. 44, s. 193.
55.2 (1) It is not an infringement of a patent for any person to make,
construct, use or sell the patented invention solely for uses reasonably related
to the development and submission of information required under any law of
Canada, a province or a country other than Canada that regulates the
manufacture, construction, use or sale of any product.
(2) It is not an infringement of a patent for any person who makes,
uses or sells a patented invention in accordance with subsection (1) to make,
construct or use the invention, during the applicable period provided for by the
regulations, for the manufacture and storage of articles intended for sale after
the date on which the term of the patent expires.
(3) The Governor in Council may make regulations for the purposes of
(2), but any period provided for by the regulations must terminate immediately
preceding the date on which the term of the patent expires.
(4) The Governor in Council may make such regulations as the Governor in
considers necessary for preventing the infringement of a patent by any person
who makes, constructs, uses or sells a patented invention in accordance with
subsection (1) or (2) including, without limiting the generality of the
(a) respecting the conditions that must be fulfilled before a notice,
certificate, permit or other document concerning any product to which a patent
may relate may be issued to a patentee or other person under any Act of
Parliament that regulates the manufacture, construction, use or sale of that
product, in addition to any conditions provided for by or under that Act;
(b) respecting the earliest date on which a notice, certificate, permit
document referred to in paragraph (a) that is issued or to be issued to a person
other than the patentee may take effect and respecting the manner in which that
date is to be determined;
(c) governing the resolution of disputes between a patentee or former
and any person who applies for a notice, certificate, permit or other document
referred to in paragraph (a) as to the date on which that notice, certificate,
permit or other document may be issued or take effect;
(d) conferring rights of action in any court of competent jurisdiction
respect to any disputes referred to in paragraph (c) and respecting the remedies
that may be sought in the court, the procedure of the court in the matter and
the decisions and orders it may make; and
(e) generally governing the issue of a notice, certificate, permit or
document referred to in paragraph (a) in circumstances where the issue of that
notice, certificate, permit or other document might result directly or
indirectly in the infringement of a patent.
Inconsistency or conflict
(5) In the event of any inconsistency or conflict between
(a) this section or any regulations made under this section, and
(b) any Act of Parliament or any regulations made thereunder,
this section or the regulations made under this section shall prevail to
extent of the inconsistency or conflict.
For greater certainty
(6) For greater certainty, subsection (1) does not affect any exception
exclusive property or privilege granted by a patent that exists at law in
respect of acts done privately and on a non-commercial scale or for a
non-commercial purpose or in respect of any use, manufacture, construction or
sale of the patented invention solely for the purpose of experiments that relate
to the subject-matter of the patent.
1993, c. 2, s. 4.
Patent not to affect previous purchaser
56. (1) Every person who, before the claim date of a claim in a patent
purchased, constructed or acquired the subject matter defined by the claim, has
the right to use and sell to others the specific article, machine, manufacture
or composition of matter patented and so purchased, constructed or acquired
without being liable to the patentee or the legal representatives of the
patentee for so doing.
(2) Subsection (1) does not apply in respect of a purchase, construction
acquisition referred to in subsection (3) or (4).
(3) Section 56 of the Patent Act, as it read immediately before the day
subsection (1) came into force, applies in respect of a purchase, construction
or acquisition made before that day of an invention for which a patent is issued
on the basis of an application filed after October 1, 1989 and before the day on
which subsection (1) came into force.
(4) Section 56 of the Patent Act, as it read immediately before October
applies in respect of a purchase, construction or acquisition made before the
day on which subsection (1) came into force of an invention for which a patent
is issued before October 1, 1989 or is issued after October 1, 1989 on the basis
of an application filed before October 1, 1989.
R.S., 1985, c. P-4, s. 56; R.S., 1985, c. 33 (3rd Supp.), s. 22; 1993,
ss. 194, 199.
Injunction may issue
57. (1) In any action for infringement of a patent, the court, or any
thereof, may, on the application of the plaintiff or defendant, make such order
as the court or judge sees fit,
(a) restraining or enjoining the opposite party from further use,
sale of the subject-matter of the patent, and for his punishment in the event of
disobedience of that order, or
(b) for and respecting inspection or account,
and generally, respecting the proceedings in the action.
(2) An appeal lies from any order made under subsection (1) in the same
circumstances and to the same court as from other judgments or orders of the
court in which the order is made.
R.S., c. P-4, s. 59.
Invalid claims not to affect valid claims
58. When, in any action or proceeding respecting a patent that contains
more claims, one or more of those claims is or are held to be valid but another
or others is or are held to be invalid or void, effect shall be given to the
patent as if it contained only the valid claim or claims.
R.S., c. P-4, s. 60.
59. The defendant, in any action for infringement of a patent may plead
matter of defence any fact or default which by this Act or by law renders the
patent void, and the court shall take cognizance of that pleading and of the
relevant facts and decide accordingly.
R.S., c. P-4, s. 61.
Impeachment of patents or claims
60. (1) A patent or any claim in a patent may be declared invalid or
void by the
Federal Court at the instance of the Attorney General of Canada or at the
instance of any interested person.
Declaration as to infringement
(2) Where any person has reasonable cause to believe that any process
proposed to be used or any article made, used or sold or proposed to be made,
used or sold by him might be alleged by any patentee to constitute an
infringement of an exclusive property or privilege granted thereby, he may bring
an action in the Federal Court against the patentee for a declaration that the
process or article does not or would not constitute an infringement of the
exclusive property or privilege.
Security for costs
(3) With the exception of the Attorney General of Canada or the attorney
of a province, the plaintiff in any action under this section shall, before
proceeding therein, give security for the costs of the patentee in such sum as
the Federal Court may direct, but a defendant in any action for the infringement
of a patent is entitled to obtain a declaration under this section without being
required to furnish any security.
R.S., c. P-4, s. 62; R.S., c. 10(2nd Supp.), s. 64.
61. [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 23]
Judgment voiding patent
62. A certificate of a judgment voiding in whole or in part any patent
the request of any person filing it to make it a record in the Patent Office, be
registered in the Patent Office, and the patent, or such part as is voided,
shall thereupon be and be held to have been void and of no effect, unless the
judgment is reversed on appeal as provided in section 63.
R.S., 1985, c. P-4, s. 62; 1993, c. 15, s. 49.
63. Every judgment voiding in whole or in part or refusing to void in
in part any patent is subject to appeal to any court having appellate
jurisdiction in other cases decided by the court by which the judgment was
R.S., c. P-4, s. 65.
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