The Federal Court of Canada has issued a Notice to the Profession clarifying an issue that frequently arises in Canadian patent litigation. The Notice confirms that patent litigants intending to rely at trial on testing conducted for the purpose of the litigation are required to provide the adverse party with advance notice of the testing, and an opportunity to attend.

The Notice to the Profession, issued February 27, 2014, delineates certain steps that a party to a patent infringement or validity action must take if it intends to establish any fact in issue by experimental testing conducted for the purpose of the litigation. Pursuant to the Notice, a party seeking to rely on such testing must provide the adverse party with notice of the testing no later than two months before the scheduled service of the expert report(s) in chief, and the notice must include:

  • the facts to be proven by such testing;
  • the nature of the experimental procedure to be performed;
  • when and where the adverse parties’ counsel and representative(s) can attend to watch the experiment(s); and
  • when and in what format the data and test results from such experiment(s) will be shared with the adverse parties.

Where the parties cannot agree on these matters, the Case Management Judge may resolve them at a case management conference.

If a party fails to comply with the above notice requirements, the party cannot lead evidence at the trial or hearing as to any experiments conducted for the purpose of the litigation without leave of the Court.

It is noteworthy that the Notice to the Profession is directed specifically to testing conducted by or for a party “for the purpose of the litigation.” The Notice is silent on the circumstances in which a party may be permitted to rely upon testing that does not meet the requirements of the Notice but was conducted for a different purpose.