First to Invent
Disclosure Requirements
Examination
Prosecution History
Means Plus Function Claims
Continuation
Law on Novelty
Maintenance Fees
Jury Trials
Depositions
Recovery for Infringement
Prior Rights
While the patent laws of Canada bear many similarities to those of the United States, there are also important differences.
Where there are two independent inventors in Canada, a patent is awarded to the first to file. The 'filing date' is considered to be the earliest of:
- the actual Canadian filing date;
- the filing date of a priority application; or
- the international filing date in respect of a Patent Cooperation Treaty application, from which the Canadian application derives.
In contrast, in the United States a patent is awarded to the first to invent (subject to certain limitations).
In contrast to the United States, there is no obligation on Canadian patent applicants to disclose voluntarily all known material prior art to the Canadian Patent Office.
In Canada and the United States, a patent application must be scrutinized by an examiner in order for a patent to be issued. In Canada, examination must be explicitly requested and a government examination fee is payable. Examination may be deferred for up to five years from the Canadian filing date. In the United States, examination of an application commences automatically.
The Supreme Court of Canada recently confirmed that, unlike the situation in the United States, the prosecution history of a patent application cannot be used in construing the claims of a patent.
In Canada 'means plus function' claims are construed according to 'purposive construction' principles. These principles permit a construction that is literal, or that may be either broader or narrower than literal. In the United States, such claims are subject to the 35 USC 112(6) provision, which has been interpreted by the US courts as limiting the scope of such claims to the means disclosed.
While it is possible to file a continuation (CIP) or CIP-type application in Canada and claim internal priority from an earlier Canadian parent application, there are certain limitations. Any continuation or CIP-type application is entitled to internal priority only if it is filed within one year of the filing date of the earliest parent application or the priority filing date, whichever is earlier. In addition, any applicant-derived public disclosure made more than one year prior to filing the continuation or CIP-type application will be considered to be prior art.
US procedure allows for the filing of a CIP application which claims internal priority from a parent application at any time up to the date when the parent application is issued.
While both Canada and the United States have a one-year grace period from public disclosure of an invention, Canada's grace period applies only to applicant-derived disclosures. The US grace period applies to all public disclosures. Moreover, the Canadian grace period begins to run when there is a public disclosure anywhere in the world, while the US grace period begins only when disclosure occurs in the United States.
Annual Canadian maintenance fees are payable during the life of a Canadian patent, commencing on the second anniversary of the Canadian filing date. US maintenance fees are payable only three times during the life of a US patent.
The Federal Court of Canada hears almost all Canadian patent infringement cases, whereas jury trial for a patent matter is available as of right in the United States.
In most Canadian courts (including the Federal Court), an oral examination for discovery may occur as of right of only one representative of each party and the inventor. In US litigation, depositions may be taken from a wider group of individuals, including potential witnesses.
US laws give the courts discretion to award triple damages and attorneys fees in cases of wilful infringement. Canada has no such provision. However, the Canadian courts may award punitive damages in egregious cases and, while an award of costs is at the court's discretion, costs are typically awarded to the successful party.
In the United States, damages are available from the date of notice of infringement. Notice can be given constructively through patent marking. No such notice is required in Canada. Further, there are no provisions for patent marking. Thus, in Canada, damages are available from the first date of infringement, subject to the statutory limitation period of six years. Where infringement is proven, the patentee may be given the choice between an award of damages or an accounting of all of the profits made by the infringer as a result of the infringement. The 'accounting of profits' remedy is no longer available in US law.
In Canada, if an individual acquires an invention before the priority date of the patent, he or she may use and sell to others the specific article acquired free of the patent. This provision protects those who secretly make and use an invention before the priority date of a patent on it. Secret use does not destroy a patent's novelty, but the advantage of a patent is that the individual is free to use or sell the invention after it is issued.
Recent amendments to the US patent laws have added a similar provision, but it applies only to methods of conducting business.
For further information on this topic please contact Ron Faggetter at Smart & Biggar by telephone (+1 416 593 5514) or by fax (+1 416 591 1690) or by email ([email protected]).