Area of Law: Intellectual Property
Answer # 302
Patent infringement
Region: Ontario Answer # 302There are two types of patent infringement found in the Patent Act in Canada:
- Direct infringement
- Induced infringement
Direct patent infringement occurs when someone makes, constructs, uses or sells a patented invention without the permission of the owner. Generally speaking, for a patent infringement to occur, someone must make, use, or sell the invention in a country where the inventor holds a patent, without the direct or indirect permission of the owner.
Induced infringement occurs when an inducer actively does something leading a direct infringer to infringe. For example, a seller [the inducer] provides parts of a patented invention to a third party [the infringer] with instructions on how to assemble those parts into a patented invention, and the third party assembles those parts into the patented invention.
You cannot import inventions into a country where they are patented, even if they are manufactured elsewhere. Therefore, you still risk being sued for infringement if you import products into a country where the process used to make those products is patented. Limitations in licensing contracts must also be respected, and failure to do so may constitute infringement or, in certain cases, a breach of the license agreement.
The Patent Office at the Canadian Intellectual Property Office (CIPO) will not prevent other people from infringing on your patent. It is up to the owner of a patented invention to ensure that no one else uses it.
Your invention is also protected for a period after the patent application is filed but before the patent is granted. This protection is only available for inventions that are successfully patented. If you receive a patent, you can sue someone for an infringement on your patent that may have occurred anytime after the day your application was published. If you can prove that people infringed your patent, the court can order them to stop using your invention and to pay you compensation.
All actions for infringement must be brought within 6 years of the act of infringement.
Who can sue for patent infringement
- The owner of the patent
- Exclusive and non-exclusive licensees (which may include purchasers in some cases).
What you need to claim infringement
To claim that patent rights have been infringed, you need the following:
- a granted patent
- sufficient evidence that 1 party has either directly infringed the patent or induced another to infringe the patent
What to do if someone infringes your patent
If someone infringes your patent and you wish to pursue legal action, you should contact a lawyer. Whether the court agrees that an infringement has occurred will largely depend on the wording you used to define the invention in your patent application. This is why it is so important to clearly define your invention when you file the application.
Also, it is important to be aware that patents are always open to re-examination or other forms of attack. This means that the person who infringes your patent may well argue that your patent is invalid.
Information on enforcing your patent rights can be found from CIPO here.
Amendments to the Patent Act – Intervening Rights of Third Parties
On October 30, 2019, new Rules and Amendments to the Patent Act came into force, which make it consistent with international Patent law and include provisions to patent infringement and the protection and intervening rights of third parties.
Protection of a third party against charges of infringement only apply under certain circumstances and where there is a “prescribed period” established under the Patent Regulations. As of October 30, 2019, protections may apply when the following has occurred:
1. A failure to pay maintenance fees for pending applications
- If the application is deemed to be abandoned: The starting period of third party rights begins six months after non-payment of maintenance fees, and ends when the application is reinstated or the patent is granted, whichever is earlier, and it was shown that due care was taken regarding action on both.
- If the application is deemed not to be abandoned: The starting period begins six months after non-payment of maintenance fees, and ends on the date the required fees are paid or the patent is granted, whichever is earlier.
2. A failure to pay maintenance fees for granted patents
- If the patent is deemed to be expired: The starting period of third party rights begins six months after non-payment of maintenance fees, and ends on the date the required fees are paid and it was shown that due care was taken to pay fees.
- If the patent is deemed not to be expired: The starting period begins six months after non-payment of maintenance fees, and ends on the date the required fees are paid.
3. A failure to request examination
- If the application was deemed to be abandoned: The starting period of third party rights begins six months after the prescribed time to request examination during the application process, and ends on the date the application is reinstated or the patent was granted, whichever is earlier, and it was shown that due care was taken regarding action on both.
- If the application was deemed not to be abandoned: The starting period begins six months after the prescribed time to request examination, and ends on the date the request was being made and all required fees were paid, or the patent was granted, whichever is earlier.
Section 55.11(2) of the Patent Act states that if a person, in good faith, committed an act under these circumstances that would otherwise constitute an infringement of that patent, that act is not an infringement of the patent. Therefore, the person may continue to commit the act even after the patent application is reinstated or the patent is granted.
For help
You should contact a patent lawyer for advice if someone has made, used, or sold your patented invention without your permission.
For more information about patents, refer to the Canadian Intellectual Property Office.
To conduct an investigation regarding intellectual property infringement, and for other investigation services, contact our preferred Investigators, MADPI GLOBAL .
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