With close physical proximity and business ties to the USA, Canada is often accustomed to parallel IP litigation between the two neighbouring countries. While there are many similarities between the two litigation environments, there are also key differences to bear in mind during prosecution and any subsequent enforcement of IP portfolios.

  • Trials and expert witnesses

Canadian IP trials in the Federal Court are presented to a judge alone, which is often viewed as beneficial when compared to a jury trial, especially in a technical patent matter. When preparing a case for a jury trial in the USA, it is important to focus the issues for a straightforward and coherent presentation to the jury. Many US counsel recommend and implement a mock jury presentation to obtain feedback from people that would make up the typical jury pool. While mock jury presentations are not as prevalent in Canada, preparing a focused presentation is just as important before a judge alone.   When retaining and working with expert witnesses, the time commitment for a case is sometimes a key issue for experts with many professional demands. In the USA experts must be available for depositions on their expert reports before trial, but these expert witness depositions or examinations do not occur in Canada. Expert witnesses are still cross-examined at trial, but a second appearance by way of pre-trial examination does not occur.

  • File history estoppel

Parties are usually familiar with “file wrapper estoppel” or “prosecution history estoppel” in US patent matters, which is the general concept that an applicant cannot resile from amendments during prosecution that narrow the scope of the claims. In Canada, though, statements made during prosecution of patent applications before the Canadian Patent Office, or elsewhere, are not admissible for the purpose of construing claims. Parties are therefore typically able to avoid the expense and distraction of any discovery or arguments that wander into the file history for this purpose. However, it is wise to always assume that any statements made during prosecution could end up being disclosed in future litigation, as there is always potential for arguing that statements made during prosecution can be explored and be potentially admissible at trial for a purpose other than interpreting the scope of the claims

  • Double patenting

Double patenting refers to an objection during prosecution, or as the basis for a validity attack on an issued patent, when a claim of a later filed application has identical scope to a claim in an earlier filed application. The “obviousness” type of double patenting occurs if a claim of the later filed application is not patentably distinct from a claim of the earlier filed application. In the USA, terminal disclaimers are typically filed to overcome this type of objection but Canada does not have a terminal disclaimer practice. For this reason, voluntary divisional applications are often discouraged due to the risk associated with potential double patenting issues. While prosecuting Canadian applications it is therefore important to keep the claims of interest as broad as possible at the outset and be aware of similar applications filed by the same applicant.

  • Jurisdiction

One feature that is encountered in US litigation is personal jurisdiction. In order to sue a party in a particular US Federal District Court, the Court must have personal jurisdiction over the defendant. This involves an inquiry to determine if the defendant has sufficient contacts with the forum state to require them to defend a lawsuit in that jurisdiction. This analysis often leads to a pre-suit analysis of trying to select a district that is seen as being more favourable to the plaintiff than the defendant. In addition, parties will frequently retain their IP counsel and then engage local counsel in the jurisdiction. In Canada, the Federal Court is a single Court that hears cases throughout Canada. If a defendant only sells its product in one province, the plaintiff can still sue in Federal Court by filing its case in any province and a remedy that is ultimately granted will be effective throughout the country. This unified approach to the Court can remove the extra layer of strategy and expense that may be present in US litigation.   This brief outline of differences associated with Canadian prosecution and enforcement also highlights features of IP development generally, since it is always worthwhile to consider these points at the early stages of IP prosecution in any country.