In the last issue of InBrief, some of the significant differences between Canadian and American patent law were briefly discussed.There are others and some of these will be summarily canvassed below.

Canadian Prosecution Strategies

Unlike in the United States, examination is not automatic in Canada. A separate Request for Examination, along with the requisite fee, must be submitted, and this Request may be delayed for up to five years from the filing date of the application. By delaying examination, the results from the prosecution of the U.S., or other priority applications can be integrated into the prosecution of the Canadian application which may lead to the Canadian application being allowed without any objections from an Examiner.

On the other hand, it may be useful for the applicant to have the examination of the Canadian application proceed at an accelerated pace so as to have an early-issued Canadian patent. Typically, the patent application will be examined and issued within a year, often even faster than that.

These two approaches allow the applicant to control the time of issue of the Canadian patent to maximize its usefulness.

As of January 28 of this year, a one-year pilot project for a Patent Prosecution Highway ("PPH") between Canada and the U.S. was initiated. Under the PPH, when a first-filed application is allowed in one of the two countries, a second-filed application in the other country that claims priority over the first-filed application can be expedited for allowance in the second country. Given that expedited examination is more easily available in Canada than in the U.S., the introduction of the PPH creates a new factor to be considered by patent applicants when developing a prosecution and examination strategy for Canada and the U.S.

Amending a Canadian Application

There is no doctrine of file wrapper estoppel in Canada. Nor does Canada have an equivalent of the U.S. Festo decision. In litigation, reference to the prosecution history and statements made during prosecution is not permitted for the purpose of construing claims. Therefore, amendments and arguments may be made with very little, if any, consequence, and should be used to overcome rejections where possible.

However, in Canada there are no continuation or continuation-in-part applications or their equivalents. Therefore, amendments should be carefully considered to avoid deleting important claims and new subject matter may only be added by filing a new application. If the original application has been published, it can act as prior art against the potential new application, possibly rendering it obvious.

Examination and Issue

Once examination of a Canadian application has been requested, it typically takes about two to three years before the first office action is issued, although shorter response times do occur in some technology areas. The deadline for responding to the office action is usually six months from its mailing date, and an application will become abandoned if a response is not filed in a timely manner. As noted below, it is possible to reinstate an application up to one year after it is abandoned by paying the requisite fee and filing a satisfactory response to the office action.

One may schedule a telephone or personal interview with an Examiner to discuss a response to an office action and it is not unusual to receive two or three office actions before a final rejection is issued. Such a rejection may be appealed to the Patent Appeal Board and its decision may be further appealed to the Federal Court, the Court of Appeal and, with leave, to the Supreme Court of Canada. But appeals beyond the Patent Appeal Board are quite rare.

As in the U.S., if all substantive and technical objections are overcome, the Canadian Patent Office will allow the application and requisition the payment of the issue fee within six months thereafter.

While no substantive changes may be made to an application once it has been allowed, it is possible to allow the application to become abandoned by not paying the issue fee, but it can be reinstated and the application amended and, thereby, returned to examination.

Reissue and Disclaimer

An application for the reissue of a Canadian patent must be filed within four years of the date the patent was issued. Unlike the U.S., there is no distinction made between a reissue that enlarges, rather than narrows, the scope of the patent. Therefore, it may be possible to apply for a reissue of a Canadian patent to expand its scope even after the deadline for doing so in the U.S. has passed, provided the original narrower scope was the result of an error, accident or mistake.

It is also possible to amend the claims after issue by way of disclaimer. A disclaimer is simply filed; there is no review of it by the Patent Office.

Re-examination

Either a patent owner or third party may institute re-examination proceedings, and these are similar to the ex parte re-examination process in the U.S. Canada has no equivalent to the U.S. inter partes re-examination procedure. In a re-examination, a patentee may amend claims, but not to increase their scope.

Opposition

In Canada, there is no formal method for opposing a pending patent application. As in the U.S., a third party is permitted to file prior art against a pending application, along with an explanation of its relevance. However, other than an acknowledgment of receipt of its submissions, there is no further notification to the third party of any action taken by an Examiner as a consequence of the submitted materials, nor is there an apparent requirement to cite the prior art against the application or to otherwise consider it.

Given the lack of participation for the protesting party, as well as the discretion an Examiner has in considering whether to rely on the submitting material, protests are rarely filed in Canada.

Infringement

Any making, using, selling or offering for sale in Canada of a claimed invention constitutes infringement, and inducing others to infringe is also actionable. Infringement may occur by selling a non-patented product in Canada that was made outside Canada using a process or product that is covered by a Canadian patent. There is a six-year limitation period for infringement.

Patent Litigation

While the overall concept of patent infringement is similar between Canada and the U.S., the actual litigation process is quite different.

The majority of patent cases are heard by the Federal Court that sits throughout Canada with traveling judges, so that forum shopping is not a significant issue. Provincial courts have concurrent jurisdiction for most matters, but their decisions are only binding in their particular province and between the specific parties, and so they are used infrequently. On the other hand, if a patent action is intertwined with issues outside the jurisdiction of the Federal Court, resort must be made to the Provincial courts. There are no jury trials for patent cases; all patent cases are before a judge alone.

Not only the patentee, but also a licensee (even a non-exclusive licensee) may assert a claim for infringement.

Pleadings in Canadian patent actions are generally more detailed than in the U.S., but documentary disclosure is much less extensive. Interlocutory injunctions are very rare in Canada, as irreparable harm must be proven.

In Canada, there is both documentary and oral pre-trial discovery, but in practice such discovery is more limited than in the U.S. Typically, a representative of each party is examined and the inventors may be examined, but there is no general deposition of witnesses without leave and such leave is rarely granted by most courts. There is no pre-trial deposition of expert witnesses. Expert evidence is provided to the other party in affidavit form before trial and experts may be cross-examined at trial.

There is no equivalent of a Markman hearing in Canada.

Remedies include either the damages suffered by the plaintiff or the profits made by the defendant, although the latter remedy is at the discretion of the court. However, there is no trebling of damages for wilful infringement. Punitive damages are fairly rare and, when awarded, are relatively modest.

The unsuccessful party in Canadian litigation typically bears one-third or more of the legal costs of the successful party, and there are very few contingency patent litigation cases.

Conclusion

While Canadian and American patent law share many similarities, there are several key differences that justify involving a Canadian patent lawyer or agent to conduct a review of an American application before it is filed as a corresponding Canadian application. Such counsel and advice is likely to result in broader claims, fewer rejections and faster approvals during prosecution, and more efficient litigation, thereby saving the client time, aggravation and expense.