Patent Act
(R.S.C. , 1985, c. P-4)
(as amended up to December 13, 2018)
An Act respecting patents of invention
Short Title
Short title
1 This Act may be cited as the Patent Act.
R.S., c. P-4, s. 1.
Interpretation
Definitions
2 In this Act, except as otherwise provided,
applicant includes an inventor and the legal representatives of an applicant or
inventor; (demandeur)
certificate of supplementary protection means a certificate issued by the Minister
of Health under section 113; (certificat de protection supplémentaire)
claim date means the date of a claim in an application for a patent in Canada, as
determined in accordance with section 28.1;
Commissioner means the Commissioner of Patents; (commissaire)
country includes a WTO Member, as defined in subsection 2(1) of the World Trade
Organization Agreement Implementation Act; (pays)
filing date means, in relation to an application for a patent in Canada, the date on
which the application is filed, as determined in accordance with section 28; (date de
dépôt)
holder means, with respect to a certificate of supplementary protection, the person
for the time being that is entitled to the benefit of the certificate; (titulaire)
invention means any new and useful art, process, machine, manufacture or
composition of matter, or any new and useful improvement in any art, process,
machine, manufacture or composition of matter; (invention)
legal representatives includes heirs, executors, administrators of the estate,
liquidators of the succession, guardians, curators, tutors, transferees and all other
persons claiming through applicants for patents and patentees of inventions or
through holders of certificates of supplementary protection; (représentants légaux)
Minister means the Minister of Industry or such other member of the Queen’s Privy
Council for Canada as is designated by the Governor in Council as the Minister for
the purposes of this Act; (ministre)
patent means letters patent for an invention; (brevet)
patentee means the person for the time being entitled to the benefit of a patent;
(breveté ou titulaire d’un brevet)
predecessor in title includes any person through whom an applicant for a patent in
Canada claims the right to the patent; (prédécesseur en droit)
prescribed means prescribed by rules or regulations of the Governor in Council
and, in the case of a fee, includes a fee determined in the manner prescribed;
(réglementaire)
prescribed fee [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 1]
priority date [Repealed, 1993, c. 15, s. 26]
regulation includes a rule or form; (règlement)
regulation and rule [Repealed, 2017, c. 6, s. 32]
request for priority means a request under section 28.4; (demande de priorité)
rule includes a regulation or form. (règle)
work on a commercial scale [Repealed, 1993, c. 44, s. 189]
R.S., 1985, c. P-4, s. 2; R.S., 1985, c. 33 (3rd Supp.), s. 1; 1992, c. 1, s. 145(F); 1993, c. 2, s. 2, c. 15,
s. 26, c. 44, s. 189; 1994, c. 47, s. 141; 1995, c. 1, s. 62; 2017, c. 6, s. 32.
Her Majesty
Binding on Her Majesty
2.1 This Act is binding on Her Majesty in right of Canada or a province.
1993, c. 44, s. 190.
Patent Office and Officers
Patent Office
3 There shall be attached to the Department of Industry, or to such other department
of the Government of Canada as may be determined by the Governor in Council, an
office called the Patent Office.
R.S., 1985, c. P-4, s. 3; 1992, c. 1, s. 145(F); 1995, c. 1, s. 63.
Commissioner of Patents
4 (1) The Governor in Council may appoint a Commissioner of Patents who shall,
under the direction of the Minister, exercise the powers and perform the duties
conferred and imposed on that officer by or pursuant to this Act.
Duties of Commissioner
(2) The Commissioner shall receive all applications, fees, papers, documents and
models for patents, shall perform and do all acts and things requisite for the granting
and issuing of patents of invention, shall have the charge and custody of the books,
records, papers, models, machines and other things belonging to the Patent Office
and shall have, for the purposes of this Act, all the powers that are or may be given
by the Inquiries Act to a commissioner appointed under Part II of that Act.
Tenure of office and salary
(3) The Commissioner holds office during pleasure and shall be paid such annual
salary as may be determined by the Governor in Council.
Delegation
(4) The Commissioner may, after consultation with the Minister, delegate to any
person he deems qualified any of his powers, duties and functions under this Act,
except the power to delegate under this subsection.
Appeal
(5) Any decision under this Act of a person authorized to make the decision pursuant
to subsection (4) may be appealed in the like manner and subject to the like
conditions as a decision of the Commissioner under this Act.
R.S., c. P-4, s. 4; 1984, c. 40, s. 57.
Assistant Commissioner
5 (1) An Assistant Commissioner of Patents may be appointed in the manner
authorized by law and shall be a technical officer experienced in the administration of
the Patent Office.
Absence or inability to act
(2) When the Commissioner is absent or unable to act, the Assistant Commissioner,
or, if he also is at the same time absent or unable to act, another officer designated
by the Minister, may exercise the powers and shall perform the duties of the
Commissioner.
R.S., c. P-4, s. 5.
Staff
6 There may be appointed in the manner authorized by law such principal
examiners, examiners, associate examiners and assistant examiners, clerks,
stenographers and other assistants as are necessary for the administration of this
Act.
R.S., c. P-4, s. 6.
Officers of Patent Office not to deal in patents, etc.
7 (1) No officer or employee of the Patent Office shall buy, sell, acquire or traffic in
any invention, patent, right to a patent, certificate of supplementary protection or right
to such a certificate, or any interest in any of them, and every purchase, sale,
acquisition or transfer of any of them, or of any interest in any of them, made by or to
such an officer or employee is void or, in Quebec, null.
Restriction
(2) Subsection (1) does not apply to a sale by an original inventor or to an acquisition
under the last will, or by the intestacy, of a deceased person.
R.S., 1985, c. P-4, s. 7; 2017, c. 6, s. 33.
Clerical errors
8 Clerical errors in any instrument of record in the Patent Office do not invalidate the
instrument, but they may be corrected under the authority of the Commissioner.
R.S., 1985, c. P-4, s. 8; 1993, c. 15, s. 27.
Electronic or other submission of documents, information or fees
8.1 (1) Subject to the regulations, any document, information or fee that is authorized
or required to be submitted to the Commissioner under this Act may be submitted in
electronic or other form in any manner specified by the Commissioner.
Time of receipt
(2) For the purposes of this Act, any document, information or fee submitted in
accordance with subsection (1) is deemed to be received by the Commissioner at
the time provided by the regulations.
1993, c. 15, s. 27.
Storage of documents or information in electronic or other form
8.2 Subject to the regulations, any document or information received by the
Commissioner under this Act in electronic or other form may be entered or recorded
by any information storage device, including any system of mechanical or electronic
data processing, that is capable of reproducing stored documents or information in
intelligible form within a reasonable time.
1993, c. 15, s. 27.
Destroyed or lost patents
9 If any patent is destroyed or lost, a certified copy may be issued in lieu thereof on
payment of the prescribed fee.
R.S., c. P-4, s. 9.
Inspection by the public
10 (1) Subject to subsections (2) to (6) and section 20, all patents, applications for
patents and documents relating to patents or applications for patents that are in the
possession of the Patent Office shall be open to public inspection at the Patent
Office, under any conditions that may be prescribed.
Confidentiality period
(2) Except with the approval of the applicant, an application for a patent, or a
document relating to the application, shall not be open to public inspection before a
confidentiality period of 18 months has expired.
Beginning of confidentiality period
(3) The confidentiality period begins on the filing date of the application or, where a
request for priority has been made in respect of the application, it begins on the
earliest filing date of any previously regularly filed application on which the request is
based.
Withdrawal of request
(4) Where a request for priority is withdrawn on or before the prescribed date, it shall,
for the purposes of subsection (3) and to the extent that it is withdrawn, be
considered never to have been made.
Withdrawn applications
(5) An application shall not be open to public inspection if it is withdrawn in
accordance with the regulations on or before the prescribed date.
Prescribed date
(6) A prescribed date referred to in subsection (4) or (5) must be no later than the
date on which the confidentiality period expires.
R.S., 1985, c. P-4, s. 10; R.S., 1985, c. 33 (3rd Supp.), s. 2; 1993, c. 15, s. 28; 2018, c. 27, s. 187.
Patents issued out of Canada
11 Notwithstanding the exception in section 10, the Commissioner, on the request of
any person who states in writing the name of the inventor, if available, the title of the
invention and the number and date of a patent said to have been granted in a named
country other than Canada, and who pays or tenders the prescribed fee, shall inform
that person whether an application for a patent of the same invention is or is not
pending in Canada.
R.S., c. P-4, s. 11.
Rules and Regulations
Rules and regulations
12 (1) The Governor in Council may make rules or regulations
(a) respecting the form and contents of applications for patents;
(b) respecting the form of the Register of Patents and of the indexes thereto;
(c) respecting the registration of assignments, transmissions, disclaimers,
judgments or other documents relating to any patent;
(d) respecting the form and contents of any certificate issued pursuant to this Act;
(e) prescribing the fees or the manner of determining the fees that may be
charged in respect of the filing of applications for patents or the taking of other
proceedings under this Act or under any rule or regulation made pursuant to this
Act, or in respect of any services or the use of any facilities provided thereunder
by the Commissioner or any person employed in the Patent Office;
(f) prescribing the fees or the manner of determining the fees that shall be paid to
maintain in effect an application for a patent or to maintain the rights accorded by
a patent;
(g) respecting the payment of any prescribed fees including the time when and
the manner in which such fees shall be paid, the additional fees that may be
charged for the late payment of such fees and the circumstances in which any
fees previously paid may be refunded in whole or in part;
(h) for carrying into effect the terms of any treaty, convention, arrangement or
engagement that subsists between Canada and any other country;
(i) for carrying into effect, notwithstanding anything in this Act, the Patent
Cooperation Treaty done at Washington on June 19, 1970, including any
amendments, modifications and revisions made from time to time to which
Canada is a party;
(j) respecting the entry on, the maintenance of and the removal from the register
of patent agents of the names of persons and firms, including the qualifications
that must be met and the conditions that must be fulfilled by a person or firm
before the name of the person or firm is entered thereon and to maintain the
name of the person or firm on the register;
(j.001) respecting the submission, including in electronic form and by electronic
means, of documents and information to the Commissioner or the Patent Office,
including the time at which they are deemed to be received by the Commissioner
or the Patent Office;
(j.002) respecting communications between the Commissioner and any other
person;
(j.1) respecting the submission of documents, information or fees under section
8.1, including
(i) the documents, information or fees that may be submitted in electronic or
other form under that section,
(ii) the persons or classes of persons by whom they may be submitted, and
(iii) the time at which they are deemed to be received by the Commissioner;
(j.2) respecting the entering or recording of any document or information under
section 8.2;
(j.3) prescribing the manner in which an application for a patent may be
withdrawn and, for the purposes of subsections 10(4) and (5), prescribing the
date, or the manner of determining the date, on or before which a request for
priority or an application for a patent must be withdrawn;
(j.4) respecting requests for priority, including
(i) the period within which priority must be requested,
(ii) the manner in which and period within which the Commissioner must be
informed of the matters referred to in subsection 28.4(2),
(iii) the documentation that must be filed in support of requests for priority,
and
(iv) the withdrawal of requests for priority;
(j.5) respecting the time within which requests for examination must be made and
prescribed fees must be paid under subsection 35(1);
(j.6) respecting the deposit of biological material for the purposes of section 38.1;
(j.7) respecting the manner in which amendments may be made to specifications
or drawings furnished as part of an application for a patent;
(j.8) authorizing the Commissioner to extend, subject to any prescribed terms and
conditions, the time fixed by or under this Act in respect of any business before
the Patent Office for doing anything where the Commissioner is satisfied that the
circumstances justify the extension;
(k) prescribing any other matter that by any provision of this Act is to be
prescribed; and
(l) generally, for carrying into effect the objects and purposes of this Act or for
ensuring the due administration thereof by the Commissioner and other officers
and employees of the Patent Office.
Effect
(2) Any rule or regulation made by the Governor in Council has the same force and
effect as if it had been enacted herein.
R.S., 1985, c. P-4, s. 12; R.S., 1985, c. 33 (3rd Supp.), s. 3; 1993, c. 15, s. 29; 2017, c. 6, s. 34; 2018,
c. 27, s. 250.
Seal
Seal of office
13 (1) The Commissioner shall cause a seal to be made for the purposes of this Act
and may cause to be sealed therewith every patent and other instrument and copy
thereof issuing from the Patent Office.
Seal to be evidence
(2) Every court, judge and person shall take notice of the seal of the Patent Office,
shall admit the impressions thereof in evidence in like manner as the impressions of
the Great Seal are admitted in evidence and shall take notice of and admit in
evidence, without further proof and without production of the originals, all copies or
extracts certified under the seal of the Patent Office to be copies of or extracts from
documents deposited in that Office.
R.S., c. P-4, s. 13.
Proof of Patents
Certified copies of patents as evidence
14 In any action or proceeding respecting a patent authorized to be had or taken in
Canada under this Act, a copy of any patent granted in any other country, or any
official document connected therewith, purporting to be certified under the hand of
the proper officer of the government of the country in which the patent has been
obtained, may be produced before the court or a judge thereof, and the copy of the
patent or document purporting to be so certified may be admitted in evidence without
production of the original and without proof of the signature or official character of the
person appearing to have signed it.
R.S., c. P-4, s. 14.
Patent Agents
Register of patent agents
15 A register of patent agents shall be kept in the Patent Office on which shall be
entered the names of all persons and firms entitled to represent applicants in the
presentation and prosecution of applications for patents or in other business before
the Patent Office.
R.S., 1985, c. P-4, s. 15; R.S., 1985, c. 33 (3rd Supp.), s. 4.
Misconduct
16 For gross misconduct or any other cause that he may deem sufficient, the
Commissioner may refuse to recognize any person as a patent agent or attorney
either generally or in any particular case.
R.S., c. P-4, s. 16.
Privileged communication
16.1 (1) A communication that meets the following conditions is privileged in the
same way as a communication that is subject to solicitor-client privilege or, in civil
law, to professional secrecy of advocates and notaries and no person shall be
required to disclose, or give testimony on, the communication in a civil, criminal or
administrative action or proceeding:
(a) it is between an individual whose name is entered on the register of patent
agents and that individual’s client;
(b) it is intended to be confidential; and
(c) it is made for the purpose of seeking or giving advice with respect to any
matter relating to the protection of an invention.
Waiver
(2) Subsection (1) does not apply if the client expressly or implicitly waives the
privilege.
Exceptions
(3) Exceptions to solicitor-client privilege or, in civil law, to professional secrecy of
advocates and notaries apply to a communication that meets the conditions set out
in paragraphs (1)(a) to (c).
Patent agents — country other than Canada
(4) A communication between an individual who is authorized to act as a patent
agent under the law of a country other than Canada and that individual’s client that is
privileged under the law of that other country and that would be privileged under
subsection (1) had it been made between an individual whose name is entered on
the register of patent agents and that individual’s client is deemed to be a
communication that meets the conditions set out in paragraphs (1)(a) to (c).
Individual acting on behalf of patent agent or client
(5) For the purposes of this section, an individual whose name is entered on the
register of patent agents or an individual who is authorized to act as a patent agent
under the law of a country other than Canada includes an individual acting on their
behalf and a client includes an individual acting on the client’s behalf.
Application
(6) This section applies to communications that are made before the day on which
this section comes into force if they are still confidential on that day and to
communications that are made after that day. However, this section does not apply
in respect of an action or proceeding commenced before that day.
2015, c. 36, s. 54.
Appeals
Practice on appeals
17 In all cases where an appeal is provided from the decision of the Commissioner to
the Federal Court under this Act, the appeal shall be had and taken pursuant to the
Federal Courts Act and the rules and practice of that Court.
R.S., 1985, c. P-4, s. 17; 2002, c. 8, s. 182.
Notice on appeal
18 (1) Whenever an appeal to the Federal Court from the decision of the
Commissioner is permitted under this Act, notice of the decision shall be mailed by
the Commissioner by registered letter addressed to the interested parties or their
respective agents.
Time for taking appeal
(2) The appeal shall be taken within three months after the date of mailing of the
notice, unless otherwise provided by or under this Act.
R.S., 1985, c. P-4, s. 18; 1993, c. 15, s. 30.
Use of Patents by Government
Government may apply to use patented invention
19 (1) Subject to section 19.1, the Commissioner may, on application by the
Government of Canada or the government of a province, authorize the use of a
patented invention by that government.
Terms of use
(2) Subject to section 19.1, the use of the patented invention may be authorized for
such purpose, for such period and on such other terms as the Commissioner
considers expedient but the Commissioner shall settle those terms in accordance
with the following principles:
(a) the scope and duration of the use shall be limited to the purpose for which the
use is authorized;
(b) the use authorized shall be non-exclusive; and
(c) any use shall be authorized predominantly to supply the domestic market.
Notice
(3) The Commissioner shall notify the patentee of any use of the patented invention
that is authorized under this section.
Payment of remuneration
(4) Where the use of the patented invention is authorized, the authorized user shall
pay to the patentee such amount as the Commissioner considers to be adequate
remuneration in the circumstances, taking into account the economic value of the
authorization.
Termination of authorization
(5) The Commissioner may, on application by the patentee and after giving all
concerned parties an opportunity to be heard, terminate the authorization if the
Commissioner is satisfied that the circumstances that led to the granting of the
authorization have ceased to exist and are unlikely to recur, subject to such
conditions as the Commissioner deems appropriate to protect the legitimate interests
of the authorized user.
Authorization not transferable
(6) An authorization granted under this section is not transferable.
R.S., 1985, c. P-4, s. 19; 1993, c. 44, s. 191.
Conditions for authorizing use
19.1 (1) The Commissioner may not authorize the use of a patented invention under
section 19 unless the applicant establishes that
(a) it has made efforts to obtain from the patentee on reasonable commercial
terms and conditions the authority to use the patented invention; and
(b) its efforts have not been successful within a reasonable period.
Exception
(2) Subsection (1) does not apply in cases of national emergency or extreme
urgency or where the use for which the authorization is sought is a public non-
commercial use.
Prescribed uses
(3) The Commissioner may not, under section 19, authorize any use that is a
prescribed use unless the proposed user complies with the prescribed conditions.
Limitation on use of semi-conductor technology
(4) The Commissioner may not, under section 19, authorize any use of semi-
conductor technology other than a public non-commercial use.
1993, c. 44, s. 191; 1994, c. 47, s. 142.
Appeal
19.2 Any decision made by the Commissioner under section 19 or 19.1 is subject to
appeal to the Federal Court.
1993, c. 44, s. 191.
Regulations
19.3 (1) The Governor in Council may make regulations for the purpose of
implementing, in relation to patents, Article 1720 of the Agreement.
Definition of Agreement
(2) In subsection (1), Agreement has the same meaning as in subsection 2(1) of the
North American Free Trade Agreement Implementation Act.
1993, c. 44, s. 191.
Government Owned Patents
Assignment to Minister of National Defence
20 (1) Any officer, servant or employee of the Crown or of a corporation that is an
agent or servant of the Crown, who, acting within the scope of his duties and
employment, invents any invention in instruments or munitions of war shall, if so
required by the Minister of National Defence, assign to that Minister on behalf of Her
Majesty all the benefits of the invention and of any patent obtained or to be obtained
for the invention.
Idem
(2) Any person other than a person described in subsection (1) who invents an
invention described in that subsection may assign to the Minister of National Defence
on behalf of Her Majesty all the benefits of the invention and of any patent obtained
or to be obtained for the invention.
Inventor entitled to compensation
(3) An inventor described in subsection (2) is entitled to compensation for an
assignment to the Minister of National Defence under this Act and in the event that
the consideration to be paid for the assignment is not agreed on, it is the duty of the
Commissioner to determine the amount of the consideration, which decision is
subject to appeal to the Federal Court.
Proceedings before Federal Court
(4) Proceedings before the Federal Court under subsection (3) shall be held in
camera on request made to the court by any party to the proceedings.
Vesting on assignment
(5) An assignment to the Minister of National Defence under this Act effectually vests
the benefits of the invention and patent in the Minister of National Defence on behalf
of Her Majesty, and all covenants and agreements therein contained for keeping the
invention secret and otherwise are valid and effectual, notwithstanding any want of
valuable consideration, and may be enforced accordingly by the Minister of National
Defence.
Person making assignment and person having knowledge thereof
(6) Any person who has made an assignment to the Minister of National Defence
under this section, in respect of any covenants and agreements contained in such
assignment for keeping the invention secret and otherwise in respect of all matters
relating to that invention, and any other person who has knowledge of such
assignment and of such covenants and agreements, shall be, for the purposes of the
Security of Information Act, deemed to be persons having in their possession or
control information respecting those matters that has been entrusted to them in
confidence by any person holding office under Her Majesty, and the communication
of any of that information by the first mentioned persons to any person other than
one to whom they are authorized to communicate with, by or on behalf of the
Minister of National Defence, is an offence under section 4 of the Security of
Information Act.
Minister may submit application for patent
(7) Where any agreement for an assignment to the Minister of National Defence
under this Act has been made, the Minister of National Defence may submit an
application for patent for the invention to the Commissioner, with the request that it
be examined for patentability, and if the application is found allowable may, before
the grant of any patent thereon, certify to the Commissioner that, in the public
interest, the particulars of the invention and of the manner in which it is to be worked
are to be kept secret.
Secret application
(8) If the Minister of National Defence so certifies, the application and specification,
with the drawing, if any, and any amendment of the application, and any copies of
those documents and the drawing and the patent granted thereon shall be placed in
a packet sealed by the Commissioner under authority of the Minister of National
Defence.
Custody of secret application
(9) The packet described in subsection (8) shall, until the expiration of the term
during which a patent for the invention may be in force, be kept sealed by the
Commissioner, and shall not be opened except under the authority of an order of the
Minister of National Defence.
Delivery of secret application
(10) The packet described in subsection (8) shall be delivered at any time during the
continuance of the patent to any person authorized by the Minister of National
Defence to receive it, and shall, if returned to the Commissioner, be kept sealed by
him.
Delivery to Minister
(11) On the expiration of the term of the patent, the packet described in subsection
(8) shall be delivered to the Minister of National Defence.
Revocation
(12) No proceeding by petition or otherwise lies to have declared invalid or void a
patent granted for an invention in relation to which a certificate has been given by the
Minister of National Defence under subsection (7), except by permission of the
Minister.
Prohibition of publication and inspection
(13) No copy of any specification or other document or drawing in respect of an
invention and patent, by this section required to be placed in a sealed packet, shall in
any manner whatever be published or open to the inspection of the public, but,
except as otherwise provided in this section, this Act shall apply in respect of the
invention and patent.
Waiver by Minister
(14) The Minister of National Defence may at any time waive the benefit of this
section with respect to any particular invention, and the specification, documents and
drawing relating thereto shall thereafter be kept and dealt with in the regular way.
Rights protected
(15) No claim shall be allowed in respect of any infringement of a patent that
occurred in good faith during the time that the patent was kept secret under this
section, and any person who, before the publication of the patent, had in good faith
done any act that, but for this subsection would have given rise to a claim, is entitled,
after the publication, to obtain a licence to manufacture, use and sell the patented
invention on such terms as may, in the absence of agreement between the parties,
be settled by the Commissioner or by the Federal Court on appeal from the
Commissioner.
Communication to Minister
(16) The communication of any invention for any improvement in munitions of war to
the Minister of National Defence, or to any person or persons authorized by the
Minister of National Defence to investigate the invention or the merits thereof, shall
not, nor shall anything done for the purposes of the investigation, be deemed use or
publication of the invention so as to prejudice the grant or validity of any patent for
the invention.
Order to keep non-assigned application secret
(17) The Governor in Council, if satisfied that an invention relating to any instrument
or munition of war, described in any specified application for patent not assigned to
the Minister of National Defence, is vital to the defence of Canada and that the
publication of a patent therefor should be prevented in order to preserve the safety of
the State, may order that the invention and application and all the documents relating
thereto shall be treated for all purposes of this section as if the invention had been
assigned or agreed to be assigned to the Minister of National Defence.
Rules
(18) The Governor in Council may make rules for the purpose of ensuring secrecy
with respect to applications and patents to which this section applies and generally to
give effect to the purpose and intent thereof.
R.S., 1985, c. P-4, s. 20; 2001, c. 41, s. 36.
Agreement between Canada and other government
21 Where by any agreement between the Government of Canada and any other
government it is provided that the Government of Canada will apply section 20 to
inventions disclosed in any application for a patent assigned or agreed to be
assigned by the inventor to that other government, and the Commissioner is notified
by any minister of the Crown that the agreement extends to an invention in a
specified application, the application and all the documents relating thereto shall be
dealt with as provided in section 20, except subsections (3) and (4), as if the
invention had been assigned or agreed to be assigned to the Minister of National
Defence.
R.S., c. P-4, s. 21.
Use of Patents for International Humanitarian Purposes to Address Public Health Problems
Purpose
21.01 The purpose of sections 21.02 to 21.2 is to give effect to Canada’s and Jean
Chrétien’s pledge to Africa by facilitating access to pharmaceutical products to
address public health problems afflicting many developing and least-developed
countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and other
epidemics.
2004, c. 23, s. 1.
Definitions
21.02 The definitions in this section apply in this section and in sections 21.03 to
21.19.
authorization means an authorization granted under subsection 21.04(1), and
includes an authorization renewed under subsection 21.12(1). (autorisation)
General Council means the General Council of the WTO established by paragraph
2 of Article IV of the Agreement Establishing the World Trade Organization, signed at
Marrakesh on April 15, 1994. (Conseil général)
General Council Decision means the decision of the General Council of August 30,
2003 respecting Article 31 of the TRIPS Agreement, including the interpretation of
that decision in the General Council Chairperson’s statement of that date. (décision
du Conseil général)
patented product means a product the making, constructing, using or selling of
which in Canada would infringe a patent in the absence of the consent of the
patentee. (produit breveté)
pharmaceutical product means any patented product listed in Schedule 1 in, if
applicable, the dosage form, the strength and the route of administration specified in
that Schedule in relation to the product. (produit pharmaceutique)
TRIPS Agreement means the Agreement on Trade-Related Aspects of Intellectual
Property Rights, being Annex 1C of the Agreement Establishing the World Trade
Organization, signed at Marrakesh on April 15, 1994. (Accord sur les ADPIC)
TRIPS Council means the council referred to in the TRIPS Agreement. (Conseil
des ADPIC)
WTO means the World Trade Organization established by Article I of the Agreement
Establishing the World Trade Organization, signed at Marrakesh on April 15, 1994.
(OMC)
2004, c. 23, s. 1.
Amending Schedules
21.03 (1) The Governor in Council may, by order,
(a) on the recommendation of the Minister and the Minister of Health, amend
Schedule 1
(i) by adding the name of any patented product that may be used to address
public health problems afflicting many developing and least-developed
countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and
other epidemics and, if the Governor in Council considers it appropriate to do
so, by adding one or more of the following in respect of the patented product,
namely, a dosage form, a strength and a route of administration, and
(ii) by removing any entry listed in it;
(b) on the recommendation of the Minister of Foreign Affairs, the Minister for
International Trade and the Minister for International Development, amend
Schedule 2 by adding the name of any country recognized by the United Nations
as being a least-developed country that has,
(i) if it is a WTO Member, provided the TRIPS Council with a notice in writing
stating that the country intends to import, in accordance with the General
Council Decision, pharmaceutical products, as defined in paragraph 1(a) of
that decision, and
(ii) if it is not a WTO Member, provided the Government of Canada with a
notice in writing through diplomatic channels stating that the country intends to
import pharmaceutical products, as defined in paragraph 1(a) of the General
Council Decision, that it agrees that those products will not be used for
commercial purposes and that it undertakes to adopt the measures referred to
in Article 4 of that decision;
(c) on the recommendation of the Minister of Foreign Affairs, the Minister for
International Trade and the Minister for International Development, amend
Schedule 3 by adding the name of any WTO Member not listed in Schedule 2
that has provided the TRIPS Council with a notice in writing stating that the WTO
Member intends to import, in accordance with the General Council Decision,
pharmaceutical products, as defined in paragraph 1(a) of that decision; and
(d) on the recommendation of the Minister of Foreign Affairs, the Minister for
International Trade and the Minister for International Development, amend
Schedule 4 by adding the name of
(i) any WTO Member not listed in Schedule 2 or 3 that has provided the
TRIPS Council with a notice in writing stating that the WTO Member intends to
import, in accordance with the General Council Decision, pharmaceutical
products, as defined in paragraph 1(a) of that decision, or
(ii) any country that is not a WTO Member and that is named on the
Organization for Economic Co-operation and Development’s list of countries
that are eligible for official development assistance and that has provided the
Government of Canada with a notice in writing through diplomatic channels
(A) stating that it is faced with a national emergency or other
circumstances of extreme urgency,
(B) specifying the name of the pharmaceutical product, as defined in
paragraph 1(a) of the General Council Decision, and the quantity of that
product, needed by the country to deal with the emergency or other
urgency,
(C) stating that it has no, or insufficient, pharmaceutical capacity to
manufacture that product, and
(D) stating that it agrees that that product will not be used for commercial
purposes and that it undertakes to adopt the measures referred to in
Article 4 of the General Council Decision.
Restriction - Schedule 3
(2) The Governor in Council may not add to Schedule 3 the name of any WTO
Member that has notified the TRIPS Council that it will import, in accordance with the
General Council Decision, pharmaceutical products, as defined in paragraph 1(a) of
that decision, only if faced with a national emergency or other circumstances of
extreme urgency.
Removal from Schedules 2 to 4
(3) The Governor in Council may, by order, on the recommendation of the Minister of
Foreign Affairs, the Minister for International Trade and the Minister for International
Development, amend any of Schedules 2 to 4 to remove the name of any country or
WTO Member if
(a) in the case of a country or WTO Member listed in Schedule 2, the country or
WTO Member has ceased to be recognized by the United Nations as being a
least-developed country or, in the case of a country that is not a WTO Member,
the country has permitted any product imported into that country under an
authorization to be used for commercial purposes or has failed to adopt the
measures referred to in Article 4 of the General Council Decision;
(b) in the case of a WTO Member listed in Schedule 3, the WTO Member has
notified the TRIPS Council that it will import, in accordance with the General
Council Decision, pharmaceutical products, as defined in paragraph 1(a) of that
decision, only if faced with a national emergency or other circumstances of
extreme urgency;
(c) in the case of a WTO Member listed in Schedule 4, the WTO Member has
revoked any notification it has given to the TRIPS Council that it will import
pharmaceutical products, as defined in paragraph 1(a) of the General Council
Decision, only if faced with a national emergency or other circumstances of
extreme urgency;
(d) in the case of a country listed in Schedule 4 that is not a WTO Member,
(i) the name of the country is no longer on the Organization for Economic Co-
operation and Development’s list of countries that are eligible for official
development assistance,
(ii) the country no longer faces a national emergency or other circumstances
of extreme urgency,
(iii) the country has permitted any product imported into that country under an
authorization to be used for commercial purposes, or
(iv) the country has failed to adopt the measures referred to in Article 4 of the
General Council Decision;
(e) in the case of any country or WTO Member listed in Schedule 3 or 4, the
country or WTO Member has become recognized by the United Nations as a
least-developed country; and
(f) in the case of any country or WTO Member listed in any of Schedules 2 to 4,
the country has notified the Government of Canada, or the WTO Member has
notified the TRIPS Council, that it will not import pharmaceutical products, as
defined in paragraph 1(a) of the General Council Decision.
Timeliness of orders
(4) An order under this section shall be made in a timely manner.
2004, c. 23, s. 1; 2013, c. 33, s. 196.
Authorization
21.04 (1) Subject to subsection (3), the Commissioner shall, on the application of any
person and on the payment of the prescribed fee, authorize the person to make,
construct and use a patented invention solely for purposes directly related to the
manufacture of the pharmaceutical product named in the application and to sell it for
export to a country or WTO Member that is listed in any of Schedules 2 to 4 and that
is named in the application.
Contents of application
(2) The application must be in the prescribed form and set out
(a) the name of the pharmaceutical product to be manufactured and sold for
export under the authorization;
(b) prescribed information in respect of the version of the pharmaceutical product
to be manufactured and sold for export under the authorization;
(c) the maximum quantity of the pharmaceutical product to be manufactured and
sold for export under the authorization;
(d) for each patented invention to which the application relates, the name of the
patentee of the invention and the number, as recorded in the Patent Office, of the
patent issued in respect of that invention;
(e) the name of the country or WTO Member to which the pharmaceutical product
is to be exported;
(f) the name of the governmental person or entity, or the person or entity
permitted by the government of the importing country, to which the product is to
be sold, and prescribed information, if any, concerning that person or entity; and
(g) any other information that may be prescribed.
Conditions for granting of authorization
(3) The Commissioner shall authorize the use of the patented invention only if
(a) the applicant has complied with the prescribed requirements, if any;
(b) the Minister of Health has notified the Commissioner that the version of the
pharmaceutical product that is named in the application meets the requirements
of the Food and Drugs Act and its regulations, including the requirements under
those regulations relating to the marking, embossing, labelling and packaging that
identify that version of the product as having been manufactured
(i) in Canada as permitted by the General Council Decision, and
(ii) in a manner that distinguishes it from the version of the pharmaceutical
product sold in Canada by, or with the consent of, the patentee or patentees,
as the case may be;
(c) the applicant provides the Commissioner with a solemn or statutory
declaration in the prescribed form stating that the applicant had, at least thirty
days before filing the application,
(i) sought from the patentee or, if there is more than one, from each of the
patentees, by certified or registered mail, a licence to manufacture and sell the
pharmaceutical product for export to the country or WTO Member named in
the application on reasonable terms and conditions and that such efforts have
not been successful, and
(ii) provided the patentee, or each of the patentees, as the case may be, by
certified or registered mail, in the written request for a licence, with the
information that is in all material respects identical to the information referred
to in paragraphs (2)(a) to (g); and
(d) the applicant also provides the Commissioner with
(i) if the application relates to a WTO Member listed in Schedule 2, a certified
copy of the notice in writing that the WTO Member has provided to the TRIPS
Council specifying the name of the pharmaceutical product, as defined in
paragraph 1(a) of the General Council Decision, and the quantity of that
product, needed by the WTO Member, and
(A) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is the product specified in the notice and that the product is not
patented in that WTO Member, or
(B) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is the product specified in the notice and a certified copy of the
notice in writing that the WTO Member has provided to the TRIPS Council
confirming that the WTO Member has, in accordance with Article 31 of the
TRIPS Agreement and the provisions of the General Council Decision,
granted or intends to grant a compulsory licence to use the invention
pertaining to the product,
(ii) if the application relates to a country listed in Schedule 2 that is not a WTO
Member, a certified copy of the notice in writing that the country has provided
to the Government of Canada through diplomatic channels specifying the
name of the pharmaceutical product, as defined in paragraph 1(a) of the
General Council Decision, and the quantity of that product, needed by the
country, and
(A) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is the product specified in the notice and that the product is not
patented in that country, or
(B) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is the product specified in the notice and a certified copy of the
notice in writing that the country has provided to the Government of
Canada through diplomatic channels confirming that the country has
granted or intends to grant a compulsory licence to use the invention
pertaining to the product,
(iii) if the application relates to a WTO Member listed in Schedule 3, a certified
copy of the notice in writing that the WTO Member has provided to the TRIPS
Council specifying the name of the pharmaceutical product, as defined in
paragraph 1(a) of the General Council Decision, and the quantity of that
product, needed by the WTO Member, and stating that the WTO Member has
insufficient or no pharmaceutical manufacturing capacity for the production of
the product to which the application relates, and
(A) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is not patented in that WTO Member, or
(B) a certified copy of the notice in writing that the WTO Member has
provided to the TRIPS Council confirming that the WTO Member has, in
accordance with Article 31 of the TRIPS Agreement and the provisions of
the General Council Decision, granted or intends to grant a compulsory
licence to use the invention pertaining to the product,
(iv) if the application relates to a WTO Member listed in Schedule 4, a certified
copy of the notice in writing that the WTO Member has provided to the TRIPS
Council specifying the name of the pharmaceutical product, as defined in
paragraph 1(a) of the General Council Decision, and the quantity of that
product, needed by the WTO Member, and stating that the WTO Member is
faced with a national emergency or other circumstances of extreme urgency
and that it has insufficient or no pharmaceutical manufacturing capacity for the
production of the product to which the application relates, and
(A) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is not patented in that WTO Member, or
(B) a certified copy of the notice in writing that the WTO Member has
provided to the TRIPS Council confirming that the WTO Member has, in
accordance with Article 31 of the TRIPS Agreement and the provisions of
the General Council Decision, granted or intends to grant a compulsory
licence to use the invention pertaining to the product, or
(v) if the application relates to a country listed in Schedule 4 that is not a WTO
Member, a certified copy of the notice in writing that the country has provided
to the Government of Canada through diplomatic channels specifying the
name of the pharmaceutical product, as defined in paragraph 1(a) of the
General Council Decision, and the quantity of that product, needed by the
country, and stating that it is faced with a national emergency or other
circumstances of extreme urgency, that it has insufficient or no
pharmaceutical manufacturing capacity for the production of the product to
which the application relates, that it agrees that product will not be used for
commercial purposes and that it undertakes to adopt the measures referred to
in Article 4 of the General Council Decision, and
(A) a solemn or statutory declaration in the prescribed form by the person
filing the application stating that the product to which the application
relates is not patented in that country, or
(B) a certified copy of the notice in writing that the country has provided to
the Government of Canada through diplomatic channels confirming that
the country has granted or intends to grant a compulsory licence to use the
invention pertaining to the product.
2004, c. 23, s. 1.
Form and content of authorization
21.05 (1) The authorization must be in the prescribed form and, subject to subsection
(2), contain the prescribed information.
Quantity
(2) The quantity of the product authorized to be manufactured by an authorization
may not be more than the lesser of
(a) the maximum quantity set out in the application for the authorization, and
(b) the quantity set out in the notice referred to in any of subparagraphs 21.04(3)
(d)(i) to (v), whichever is applicable.
2004, c. 23, s. 1.
Disclosure of information on website
21.06 (1) Before exporting a product manufactured under an authorization, the
holder of the authorization must establish a website on which is disclosed the
prescribed information respecting the name of the product, the name of the country
or WTO Member to which it is to be exported, the quantity that is authorized to be
manufactured and sold for export and the distinguishing features of the product, and
of its label and packaging, as required by regulations made under the Food and
Drugs Act, as well as information identifying every known party that will be handling
the product while it is in transit from Canada to the country or WTO Member to which
it is to be exported.
Obligation to maintain
(2) The holder must maintain the website during the entire period during which the
authorization is valid.
Links to other websites
(3) The Commissioner shall post and maintain on the website of the Canadian
Intellectual Property Office a link to each website required to be maintained by the
holder of an authorization under subsection (1).
Posting on the website
(4) The Commissioner shall, within seven days of receipt, post on the website of the
Canadian Intellectual Property Office each application for authorization filed under
subsection 21.04(1).
2004, c. 23, s. 1.
Export notice
21.07 Before each shipment of any quantity of a product manufactured under an
authorization, the holder of the authorization must, within fifteen days before the
product is exported, provide to each of the following a notice, by certified or
registered mail, specifying the quantity to be exported, as well as every known party
that will be handling the product while it is in transit from Canada to the country or
WTO Member to which it is to be exported:
(a) the patentee or each of the patentees, as the case may be;
(b) the country or WTO Member named in the authorization; and
(c) the person or entity that purchased the product to which the authorization
relates.
2004, c. 23, s. 1.
Royalty
21.08 (1) Subject to subsections (3) and (4), on the occurrence of a prescribed
event, the holder of an authorization is required to pay to the patentee or each
patentee, as the case may be, a royalty determined in the prescribed manner.
Factors to consider when making regulations
(2) In making regulations for the purposes of subsection (1), the Governor in Council
must consider the humanitarian and non-commercial reasons underlying the
issuance of authorizations under subsection 21.04(1).
Time for payment
(3) The royalties payable under this section must be paid within the prescribed time.
Federal Court may determine royalty
(4) The Federal Court may, in relation to any authorization, make an order providing
for the payment of a royalty that is greater than the royalty that would otherwise be
required to be paid under subsection (1).
Application and notice
(5) An order may be made only on the application of the patentee, or one of the
patentees, as the case may be, and on notice of the application being given by the
applicant to the holder of the authorization.
Contents of order
(6) An order may provide for a royalty of a fixed amount or for a royalty to be
determined as specified in the order, and the order may be subject to any terms that
the Federal Court considers appropriate.
Conditions for making of order
(7) The Federal Court may make an order only if it is satisfied that the royalty
otherwise required to be paid is not adequate remuneration for the use of the
invention or inventions to which the authorization relates, taking into account
(a) the humanitarian and non-commercial reasons underlying the issuance of the
authorization; and
(b) the economic value of the use of the invention or inventions to the country or
WTO Member.
2004, c. 23, s. 1.
Duration
21.09 An authorization granted under subsection 21.04(1) is valid for a period of two
years beginning on the day on which the authorization is granted.
2004, c. 23, s. 1.
Use is non-exclusive
21.1 The use of a patented invention under an authorization is non-exclusive.
2004, c. 23, s. 1.
Authorization is non-transferable
21.11 An authorization is non-transferable, other than where the authorization is an
asset of a corporation or enterprise and the part of the corporation or enterprise that
enjoys the use of the authorization is sold, assigned or otherwise transferred.
2004, c. 23, s. 1.
Renewal
21.12 (1) The Commissioner shall, on the application of the person to whom an
authorization was granted and on the payment of the prescribed fee, renew the
authorization if the person certifies under oath in the renewal application that the
quantities of the pharmaceutical product authorized to be exported were not exported
before the authorization ceases to be valid and that the person has complied with the
terms of the authorization and the requirements of sections 21.06 to 21.08.
One renewal
(2) An authorization may be renewed only once.
When application must be made
(3) The application for renewal must be made within the 30 days immediately before
the authorization ceases to be valid.
Duration
(4) An authorization that is renewed is valid for a period of two years beginning on
the day immediately following the day of the expiry of the period referred to in section
21.09 in respect of the authorization.
Prescribed form
(5) Applications for renewal and renewed authorizations issued under subsection (1)
must be in the prescribed form.
2004, c. 23, s. 1.
Termination
21.13 Subject to section 21.14, an authorization ceases to be valid on the earliest of
(a) the expiry of the period referred to in section 21.09 in respect of the
authorization, or the expiry of the period referred to in subsection 21.12(4) if the
authorization has been renewed, as the case may be,
(b) the day on which the Commissioner sends, by registered mail, to the holder of
the authorization a copy of a notice sent by the Minister of Health notifying the
Commissioner that the Minister of Health is of the opinion that the pharmaceutical
product referred to in paragraph 21. 04(3)(b) has ceased to meet the
requirements of the Food and Drugs Act and its regulations,
(c) the day on which the last of the pharmaceutical product authorized by the
authorization to be exported is actually exported,
(d) thirty days after the day on which
(i) the name of the pharmaceutical product authorized to be exported by the
authorization is removed from Schedule 1, or
(ii) the name of the country or WTO Member to which the pharmaceutical
product was, or is to be, exported is removed from Schedule 2, 3 or 4, as the
case may be, and not added to any other of those Schedules, and
(e) on any other day that is prescribed.
2004, c. 23, s. 1.
Termination by Federal Court
21.14 On the application of a patentee, and on notice given by the patentee to the
person to whom an authorization was granted, the Federal Court may make an
order, on any terms that it considers appropriate, terminating the authorization if the
patentee establishes that
(a) the application for the authorization or any of the documents provided to the
Commissioner in relation to the application contained any material information
that is inaccurate;
(b) the holder of the authorization has failed to establish a website as required by
section 21.06, has failed to disclose on that website the information required to be
disclosed by that section or has failed to maintain the website as required by that
section;
(c) the holder of the authorization has failed to provide a notice required to be
given under section 21.07;
(d) the holder of the authorization has failed to pay, within the required time, any
royalty required to be paid as a result of the authorization;
(e) the holder of the authorization has failed to comply with subsection 21.16(2);
(f) the product exported to the country or WTO Member, as the case may be,
under the authorization has been, with the knowledge of the holder of the
authorization, re-exported in a manner that is contrary to the General Council
Decision;
(g) the product was exported, other than in the normal course of transit, to a
country or WTO Member other than the country or WTO Member named in the
authorization;
(h) the product was exported in a quantity greater than the quantity authorized to
be manufactured; or
(i) if the product was exported to a country that is not a WTO Member, the
country has permitted the product to be used for commercial purposes or has
failed to adopt the measures referred to in Article 4 of the General Council
Decision.
2004, c. 23, s. 1.
Notice to patentee
21.15 The Commissioner shall, without delay, notify the patentee, or each of the
patentees, as the case may be, in writing of any authorization granted in respect of
the patentee’s invention.
2004, c. 23, s. 1.
Obligation to provide copy of agreement
21.16 (1) Within fifteen days after the later of the day on which the authorization was
granted and the day on which the agreement for the sale of the product to which the
authorization relates was entered into, the holder of an authorization must provide by
certified or registered mail, the Commissioner and the patentee, or each patentee, as
the case may be, with
(a) a copy of the agreement it has reached with the person or entity referred to in
paragraph 21.04(2)(f) for the supply of the product authorized to be manufactured
and sold, which agreement must incorporate information that is in all material
respects identical to the information referred to in paragraphs 21.04(2)(a), (b), (e)
and (f); and
(b) a solemn or statutory declaration in the prescribed form setting out
(i) the total monetary value of the agreement as it relates to the product
authorized to be manufactured and sold, expressed in Canadian currency,
and
(ii) the number of units of the product to be sold under the terms of the
agreement.
Prohibition
(2) The holder of an authorization may not export any product to which the
authorization relates until after the holder has complied with subsection (1).
2004, c. 23, s. 1.
Application when agreement is commercial in nature
21.17 (1) If the average price of the product to be manufactured under an
authorization is equal to or greater than 25 per cent of the average price in Canada
of the equivalent product sold by or with the consent of the patentee, the patentee
may, on notice given by the patentee to the person to whom an authorization was
granted, apply to the Federal Court for an order under subsection (3) on the grounds
that the essence of the agreement under which the product is to be sold is
commercial in nature.
Factors for determining whether agreement is commercial in nature
(2) In determining whether the agreement is commercial in nature, the Federal Court
must take into account
(a) the need for the holder of the authorization to make a reasonable return
sufficient to sustain a continued participation in humanitarian initiatives;
(b) the ordinary levels of profitability, in Canada, of commercial agreements
involving pharmaceutical products, as defined in paragraph 1(a) of the General
Council Decision; and
(c) international trends in prices as reported by the United Nations for the supply
of such products for humanitarian purposes.
Order
(3) If the Federal Court determines that the agreement is commercial in nature, it
may make an order, on any terms that it considers appropriate,
(a) terminating the authorization; or
(b) requiring the holder to pay, in addition to the royalty otherwise required to be
paid, an amount that the Federal Court considers adequate to compensate the
patentee for the commercial use of the patent.
Additional order
(4) If the Federal Court makes an order terminating the authorization, the Federal
Court may also, if it considers it appropriate to do so, make an order, on any terms
that it considers appropriate,
(a) requiring the holder to deliver to the patentee any of the product to which the
authorization relates remaining in the holder’s possession as though the holder
had been determined to have been infringing a patent; or
(b) with the consent of the patentee, requiring the holder to export any of the
product to which the authorization relates remaining in the holder’s possession to
the country or WTO Member named in the authorization.
Restriction
(5) The Federal Court may not make an order under subsection (3) if, under the
protection of a confidentiality order made by the Court, the holder of the authorization
submits to a Court-supervised audit and that audit establishes that the average price
of the product manufactured under the authorization does not exceed an amount
equal to the direct supply cost of the product plus 15 per cent of that direct supply
cost.
Definitions
(6) The following definitions apply in this section.
average price means
(a) in relation to a product to be manufactured under an authorization, the total
monetary value of the agreement under which the product is to be sold,
expressed in Canadian currency, divided by the number of units of the product to
be sold under the terms of the agreement; and
(b) in relation to an equivalent product sold by or with the consent of the
patentee, the average of the prices in Canada of that product as those prices are
reported in prescribed publications on the day on which the application for the
authorization was filed. (prix moyen)
direct supply cost, in relation to a product to be manufactured under an
authorization, means the cost of the materials and of the labour, and any other
manufacturing costs, directly related to the production of the quantity of the product
that is to be manufactured under the authorization. (coût direct de fourniture)
unit, in relation to any product, means a single tablet, capsule or other individual
dosage form of the product, and if applicable, in a particular strength. (unité)
2004, c. 23, s. 1.
Advisory committee
21.18 (1) The Minister and the Minister of Health shall establish, within three years
after the day this section comes into force, an advisory committee to advise them on
the recommendations that they may make to the Governor in Council respecting the
amendment of Schedule 1.
Standing committee
(2) The standing committee of each House of Parliament that normally considers
matters related to industry shall assess all candidates for appointment to the
advisory committee and make recommendations to the Minister and the Minister of
Health on the eligibility and qualifications of those candidates.
2004, c. 23, s. 1; 2005, c. 18, s. 1.
Website for notices to Canada
21.19 The person designated by the Governor in Council for the purpose of this
section must maintain a website on which is set out a copy of every notice referred to
in subparagraphs 21.04(3)(d)(ii) and (v) that is provided to the Government of
Canada through diplomatic channels by a country that is not a WTO Member. The
copy must be added to the website as soon as possible after the notice has been
provided to the Government of Canada.
2004, c. 23, s. 1.
Review
21.2 (1) A review of sections 21.01 to 21.19 and their application must be completed
by the Minister two years after this section comes into force.
Tabling of report
(2) The Minister must cause a report of the results of the review to be laid before
each House of Parliament on any of the first fifteen days on which that House is
sitting after the report has been completed.
2004, c. 23, s. 1.
Patents Relating to Nuclear Energy
Communication to Canadian Nuclear Safety Commission
22 Any application for a patent for an invention that, in the opinion of the
Commissioner, relates to the production, application or use of nuclear energy shall,
before it is dealt with by an examiner appointed pursuant to section 6 or is open to
inspection by the public under section 10, be communicated by the Commissioner to
the Canadian Nuclear Safety Commission.
R.S., 1985, c. P-4, s. 22; R.S., 1985, c. 33 (3rd Supp.), s. 5; 1997, c. 9, s. 111.
General
Patented invention in vessels, aircraft, etc., of any country
23 No patent shall extend to prevent the use of any invention in any ship, vessel,
aircraft or land vehicle of any country entering Canada temporarily or accidentally, if
the invention is employed exclusively for the needs of the ship, vessel, aircraft or
land vehicle, and not so used for the manufacture of any goods to be sold within or
exported from Canada.
R.S., c. P-4, s. 23.
24 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 6]
Cost of proceedings before the court
25 In all proceedings before any court under this Act, the costs of the Commissioner
are in the discretion of the court, but the Commissioner shall not be ordered to pay
the costs of any other of the parties.
R.S., c. P-4, s. 25.
Annual report
26 The Commissioner shall, in each year, cause to be prepared and laid before each
House of Parliament a report of the Commissioner’s activities under this Act.
R.S., 1985, c. P-4, s. 26; R.S., 1985, c. 33 (3rd Supp.), s. 7; 2017, c. 6, s. 35.
Publication of list of patents
26.1 (1) The Commissioner shall, at least once in each year, publish a list of all
patents issued in the year.
Publication and printing of documents
(2) The Commissioner may publish any document open to the inspection of the
public under section 10 and may print or cause to be printed, for distribution or sale,
any such document.
R.S., 1985, c. 33 (3rd Supp.), s. 7.
Application for Patents
Commissioner may grant patents
27 (1) The Commissioner shall grant a patent for an invention to the inventor or the
inventor’s legal representative if an application for the patent in Canada is filed in
accordance with this Act and all other requirements for the issuance of a patent
under this Act are met.
Application requirements
(2) The prescribed application fee must be paid and the application must be filed in
accordance with the regulations by the inventor or the inventor’s legal representative
and the application must contain a petition and a specification of the invention.
Specification
(3) The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as
contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing,
making, compounding or using a machine, manufacture or composition of matter,
in such full, clear, concise and exact terms as to enable any person skilled in the
art or science to which it pertains, or with which it is most closely connected, to
make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best
mode in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the
various steps, so as to distinguish the invention from other inventions.
Claims
(4) The specification must end with a claim or claims defining distinctly and in explicit
terms the subject-matter of the invention for which an exclusive privilege or property
is claimed.
Separate claims
(5) For greater certainty, if a claim defines the subject-matter of an invention in the
alternative, each alternative is a separate claim for the purposes of sections 2, 28.1
to 28.3, 56 and 78.3.
When application to be completed
(6) Where an application does not completely meet the requirements of subsection
(2) on its filing date, the Commissioner shall, by notice to the applicant, require the
application to be completed on or before the date specified in the notice.
Specified period
(7) The specified date must be at least three months after the date of the notice and
at least twelve months after the filing date of the application.
What may not be patented
(8) No patent shall be granted for any mere scientific principle or abstract theorem.
R.S., 1985, c. P-4, s. 27; R.S., 1985, c. 33 (3rd Supp.), s. 8; 1993, c. 15, s. 31, c. 44, s. 192; 2018, c.
27, s. 188.
Maintenance fees
27.1 (1) An applicant for a patent shall, to maintain the application in effect, pay to
the Commissioner such fees, in respect of such periods, as may be prescribed.
(2) and (3) [Repealed, 1993, c. 15, s. 32]
R.S., 1985, c. 33 (3rd Supp.), s. 9; 1993, c. 15, s. 32.
Filing date
28 (1) The filing date of an application for a patent in Canada is the date on which
the Commissioner receives the documents, information and fees prescribed for the
purposes of this section or, if they are received on different dates, the last date.
Deemed date of receipt of fees
(2) The Commissioner may, for the purposes of this section, deem prescribed fees to
have been received on a date earlier than the date of their receipt if the
Commissioner considers it just to do so.
R.S., 1985, c. P-4, s. 28; R.S., 1985, c. 33 (3rd Supp.), s. 10; 1993, c. 15, s. 33.
Claim date
28.1 (1) The date of a claim in an application for a patent in Canada (the “pending
application”) is the filing date of the application, unless
(a) the pending application is filed by
(i) a person who has, or whose agent, legal representative or predecessor in
title has, previously regularly filed in or for Canada an application for a patent
disclosing the subject-matter defined by the claim, or
(ii) a person who is entitled to protection under the terms of any treaty or
convention relating to patents to which Canada is a party and who has, or
whose agent, legal representative or predecessor in title has, previously
regularly filed in or for any other country that by treaty, convention or law
affords similar protection to citizens of Canada an application for a patent
disclosing the subject-matter defined by the claim;
(b) the filing date of the pending application is within twelve months after the filing
date of the previously regularly filed application; and
(c) the applicant has made a request for priority on the basis of the previously
regularly filed application.
Claims based on previously regularly filed applications
(2) In the circumstances described in paragraphs (1)(a) to (c), the claim date is the
filing date of the previously regularly filed application.
1993, c. 15, s. 33.
Subject-matter of claim must not be previously disclosed
28.2 (1) The subject-matter defined by a claim in an application for a patent in
Canada (the “pending application”) must not have been disclosed
(a) more than one year before the filing date by the applicant, or by a person who
obtained knowledge, directly or indirectly, from the applicant, in such a manner
that the subject-matter became available to the public in Canada or elsewhere;
(b) before the claim date by a person not mentioned in paragraph (a) in such a
manner that the subject-matter became available to the public in Canada or
elsewhere;
(c) in an application for a patent that is filed in Canada by a person other than the
applicant, and has a filing date that is before the claim date; or
(d) in an application (the “co-pending application”) for a patent that is filed in
Canada by a person other than the applicant and has a filing date that is on or
after the claim date if
(i) the co-pending application is filed by
(A) a person who has, or whose agent, legal representative or
predecessor in title has, previously regularly filed in or for Canada an
application for a patent disclosing the subject-matter defined by the claim,
or
(B) a person who is entitled to protection under the terms of any treaty or
convention relating to patents to which Canada is a party and who has, or
whose agent, legal representative or predecessor in title has, previously
regularly filed in or for any other country that by treaty, convention or law
affords similar protection to citizens of Canada an application for a patent
disclosing the subject-matter defined by the claim,
(ii) the filing date of the previously regularly filed application is before the
claim date of the pending application,
(iii) the filing date of the co-pending application is within twelve months after
the filing date of the previously regularly filed application, and
(iv) the applicant has, in respect of the co-pending application, made a
request for priority on the basis of the previously regularly filed application.
Withdrawal of application
(2) An application mentioned in paragraph (1)(c) or a co-pending application
mentioned in paragraph (1)(d) that is withdrawn before it is open to public inspection
shall, for the purposes of this section, be considered never to have been filed.
1993, c. 15, s. 33.
Invention must not be obvious
28.3 The subject-matter defined by a claim in an application for a patent in Canada
must be subject-matter that would not have been obvious on the claim date to a
person skilled in the art or science to which it pertains, having regard to
(a) information disclosed more than one year before the filing date by the
applicant, or by a person who obtained knowledge, directly or indirectly, from the
applicant in such a manner that the information became available to the public in
Canada or elsewhere; and
(b) information disclosed before the claim date by a person not mentioned in
paragraph (a) in such a manner that the information became available to the
public in Canada or elsewhere.
1993, c. 15, s. 33.
Request for priority
28.4 (1) For the purposes of sections 28.1, 28.2 and 78.3, an applicant for a patent in
Canada may request priority in respect of the application on the basis of one or more
previously regularly filed applications.
Requirements governing request
(2) The request for priority must be made in accordance with the regulations and the
applicant must inform the Commissioner of the filing date, country or office of filing
and number of each previously regularly filed application on which the request is
based.
Withdrawal of request
(3) An applicant may, in accordance with the regulations, withdraw a request for
priority, either entirely or with respect to one or more previously regularly filed
applications.
Multiple previously regularly filed applications
(4) Where two or more applications have been previously regularly filed as described
in paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph 78.3(1)(a) or (2)(a),
either in the same country or in different countries,
(a) paragraph 28.1(1)(b), subparagraph 28.2(1)(d)(iii) or paragraph 78.3(1)(b) or
(2)(b), as the case may be, shall be applied using the earliest filing date of the
previously regularly filed applications; and
(b) subsection 28.1(2), subparagraph 28.2(1)(d)(ii) or paragraph 78.3(1)(d) or (2)
(d), as the case may be, shall be applied using the earliest filing date of the
previously regularly filed applications on the basis of which a request for priority is
made.
Withdrawal, etc., of previously regularly filed applications
(5) A previously regularly filed application mentioned in section 28.1 or 28.2 or
subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be
considered never to have been filed if
(a) it was filed more than twelve months before the filing date of
(i) the pending application, in the case of section 28.1,
(ii) the co-pending application, in the case of section 28.2,
(iii) the later application, in the case of subsection 78.3(1), or
(iv) the earlier application, in the case of subsection 78.3(2);
(b) before the filing date referred to in paragraph (a), another application
(i) is filed by the person who filed the previously regularly filed application or
by the agent, legal representative or predecessor in title of that person,
(ii) is filed in or for the country where the previously regularly filed application
was filed, and
(iii) discloses the subject-matter defined by the claim in the application
mentioned in paragraph (a); and
(c) on the filing date of the other application mentioned in paragraph (b) or, if
there is more than one such application, on the earliest of their filing dates, the
previously regularly filed application
(i) has been withdrawn, abandoned or refused without having been opened to
public inspection and without leaving any rights outstanding, and
(ii) has not served as a basis for a request for priority in any country, including
Canada.
1993, c. 15, s. 33; 2001, c. 34, s. 63.
29 [Repealed, 2017, c. 6, s. 36]
30 [Repealed, 1993, c. 15, s. 35]
Joint Applications
Effect of refusal of a joint inventor to proceed
31 (1) Where an invention is made by two or more inventors and one of them refuses
to make application for a patent or his whereabouts cannot be ascertained after
diligent inquiry, the other inventors or their legal representatives may make
application, and a patent may be granted in the name of the inventors who make the
application, on satisfying the Commissioner that the joint inventor has refused to
make application or that his whereabouts cannot be ascertained after diligent inquiry.
Powers of Commissioner
(2) In any case where
(a) an applicant has agreed in writing to assign a patent, when granted, to
another person or to a joint applicant and refuses to proceed with the application,
or
(b) disputes arise between joint applicants with respect to proceeding with an
application,
the Commissioner, on proof of the agreement to his satisfaction, or if satisfied that
one or more of the joint applicants ought to be allowed to proceed alone, may allow
that other person or joint applicant to proceed with the application, and may grant a
patent to him in such manner that all persons interested are entitled to be heard
before the Commissioner after such notice as he may deem requisite and sufficient.
Procedure when one joint applicant retires
(3) Where an application is filed by joint applicants and it subsequently appears that
one or more of them has had no part in the invention, the prosecution of the
application may be carried on by the remaining applicant or applicants on satisfying
the Commissioner by affidavit that the remaining applicant or applicants is or are the
sole inventor or inventors.
Joining applicants
(4) Where an application is filed by one or more applicants and it subsequently
appears that one or more further applicants should have been joined, the further
applicant or applicants may be joined on satisfying the Commissioner that he or they
should be so joined, and that the omission of the further applicant or applicants had
been by inadvertence or mistake and was not for the purpose of delay.
To whom granted
(5) Subject to this section, in cases of joint applications, the patent shall be granted
in the names of all the applicants.
Appeal
(6) An appeal lies to the Federal Court from the decision of the Commissioner under
this section.
R.S., c. P-4, s. 33; R.S., c. 10(2nd Supp.), s. 64.
Improvements
Improvements
32 Any person who has invented any improvement on any patented invention may
obtain a patent for the improvement, but he does not thereby obtain the right of
making, vending or using the original invention, nor does the patent for the original
invention confer the right of making, vending or using the patented improvement.
R.S., c. P-4, s. 34.
33 and 34 [Repealed, 1993, c. 15, s. 36]
Filing of Prior Art
Filing
34.1 (1) Any person may file with the Commissioner prior art, consisting of patents,
applications for patents open to public inspection and printed publications, that the
person believes has a bearing on the patentability of any claim in an application for a
patent.
Pertinency
(2) A person who files prior art with the Commissioner under subsection (1) shall
explain the pertinency of the prior art.
R.S., 1985, c. 33 (3rd Supp.), s. 11; 1993, c. 15, s. 37.
Examination
Request for examination
35 (1) The Commissioner shall, on the request of any person made in such manner
as may be prescribed and on payment of a prescribed fee, cause an application for a
patent to be examined by competent examiners to be employed in the Patent Office
for that purpose.
Required examination
(2) The Commissioner may by notice require an applicant for a patent to make a
request for examination pursuant to subsection (1) or to pay the prescribed fee within
the time specified in the notice, but the specified time may not exceed the time
provided by the regulations for making the request and paying the fee.
(3) and (4) [Repealed, 1993, c. 15, s. 38]
R.S., 1985, c. P-4, s. 35; R.S., 1985, c. 33 (3rd Supp.), s. 12; 1993, c. 15, s. 38.
Divisional Applications
Patent for one invention only
36 (1) A patent shall be granted for one invention only but in an action or other
proceeding a patent shall not be deemed to be invalid by reason only that it has been
granted for more than one invention.
Limitation of claims by applicant
(2) Where an application (the “original application”) describes more than one
invention, the applicant may limit the claims to one invention only, and any other
invention disclosed may be made the subject of a divisional application, if the
divisional application is filed before the issue of a patent on the original application.
Limitation of claims on direction of Commissioner
(2.1) Where an application (the “original application”) describes and claims more
than one invention, the applicant shall, on the direction of the Commissioner, limit the
claims to one invention only, and any other invention disclosed may be made the
subject of a divisional application, if the divisional application is filed before the issue
of a patent on the original application.
Original application abandoned
(3) If an original application mentioned in subsection (2) or (2.1) becomes
abandoned, the time for filing a divisional application terminates with the expiration of
the time for reinstating the original application under this Act.
Separate applications
(4) A divisional application shall be deemed to be a separate and distinct application
under this Act, to which its provisions apply as fully as may be, and separate fees
shall be paid on the divisional application and it shall have the same filing date as the
original application.
R.S., 1985, c. P-4, s. 36; 1993, c. 15, s. 39.
Drawings, Models and Biological Materials
Drawings
37 (1) In the case of a machine, or in any other case in which an invention admits of
illustration by means of drawings, the applicant shall, as part of the application,
furnish drawings of the invention that clearly show all parts of the invention.
Particulars
(2) Each drawing must include references corresponding with the specification, and
the Commissioner may require further drawings or dispense with any of them as the
Commissioner sees fit.
R.S., 1985, c. P-4, s. 37; 1993, c. 15, s. 40.
Models and specimens
38 (1) In all cases in which an invention admits of representation by model, the
applicant, if required by the Commissioner, shall furnish a model of convenient size
exhibiting its several parts in due proportion, and when an invention is a composition
of matter, the applicant, if required by the Commissioner, shall furnish specimens of
the ingredients, and of the composition, sufficient in quantity for the purpose of
experiment.
Dangerous substances
(2) If the ingredients or composition referred to in subsection (1) are of an explosive
or dangerous character, they shall be furnished with such precautions as are
specified in the requisition therefor.
R.S., 1985, c. P-4, s. 38; R.S., 1985, c. 33 (3rd Supp.), s. 13.
Biological material may be deposited
38.1 (1) Where a specification refers to a deposit of biological material and the
deposit is in accordance with the regulations, the deposit shall be considered part of
the specification and, to the extent that subsection 27(3) cannot otherwise
reasonably be complied with, the deposit shall be taken into consideration in
determining whether the specification complies with that subsection.
Deposit not required
(2) For greater certainty, a reference to a deposit of biological material in a
specification does not create a presumption that the deposit is required for the
purpose of complying with subsection 27(3).
1993, c. 15, s. 41.
Amendments to Specifications and Drawings
Amendments to specifications and drawings
38.2 (1) Subject to subsections (2) and (3) and the regulations, the specification and
any drawings furnished as part of an application for a patent in Canada may be
amended before the patent is issued.
Restriction on amendments to specifications
(2) The specification may not be amended to describe matter not reasonably to be
inferred from the specification or drawings as originally filed, except in so far as it is
admitted in the specification that the matter is prior art with respect to the application.
Restriction on amendments to drawings
(3) Drawings may not be amended to add matter not reasonably to be inferred from
the specification or drawings as originally filed, except in so far as it is admitted in the
specification that the matter is prior art with respect to the application.
1993, c. 15, s. 41.
39 to 39.26 [Repealed, 1993, c. 2, s. 3]
Refusal of Patents
Refusal by Commissioner
40 Whenever the Commissioner is satisfied that an applicant is not by law entitled to
be granted a patent, he shall refuse the application and, by registered letter
addressed to the applicant or his registered agent, notify the applicant of the refusal
and of the ground or reason therefor.
R.S., c. P-4, s. 42.
Appeal to Federal Court
41 Every person who has failed to obtain a patent by reason of a refusal of the
Commissioner to grant it may, at any time within six months after notice as provided
for in section 40 has been mailed, appeal from the decision of the Commissioner to
the Federal Court and that Court has exclusive jurisdiction to hear and determine the
appeal.
R.S., 1985, c. P-4, s. 41; R.S., 1985, c. 33 (3rd Supp.), s. 16.
Grant of Patents
Contents of patent
42 Every patent granted under this Act shall contain the title or name of the
invention, with a reference to the specification, and shall, subject to this Act, grant to
the patentee and the patentee’s legal representatives for the term of the patent, from
the granting of the patent, the exclusive right, privilege and liberty of making,
constructing and using the invention and selling it to others to be used, subject to
adjudication in respect thereof before any court of competent jurisdiction.
R.S., 1985, c. P-4, s. 42; R.S., 1985, c. 33 (3rd Supp.), s. 16.
Form and Term of Patents
Form and duration of patents
43 (1) Subject to section 46, every patent granted under this Act shall be issued
under the seal of the Patent Office, and shall bear on its face the filing date of the
application for the patent, the date on which the application became open to public
inspection under section 10, the date on which the patent is granted and issued and
any prescribed information.
Validity of patent
(2) After the patent is issued, it shall, in the absence of any evidence to the contrary,
be valid and avail the patentee and the legal representatives of the patentee for the
term mentioned in section 44 or 45, whichever is applicable.
R.S., 1985, c. P-4, s. 43; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s. 42.
Term of patents based on applications filed on or after October 1, 1989
44 Subject to section 46, where an application for a patent is filed under this Act on
or after October 1, 1989, the term limited for the duration of the patent is twenty
years from the filing date.
R.S., 1985, c. P-4, s. 44; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s. 42.
Term of patents based on applications filed before October 1, 1989
45 (1) Subject to section 46, where an application for a patent is filed under this Act
before October 1, 1989, the term limited for the duration of the patent is seventeen
years from the date on which the patent is issued.
Term from date of issue or filing
(2) Where the term limited for the duration of a patent referred to in subsection (1)
had not expired before the day on which this section came into force, the term is
seventeen years from the date on which the patent is issued or twenty years from the
filing date, whichever term expires later.
R.S., 1985, c. P-4, s. 45; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s. 42; 2001, c. 10, s. 1.
Maintenance fees
46 (1) A patentee of a patent issued by the Patent Office under this Act after the
coming into force of this section shall, to maintain the rights accorded by the patent,
pay to the Commissioner such fees, in respect of such periods, as may be
prescribed.
Lapse of term if maintenance fees not paid
(2) Where the fees payable under subsection (1) are not paid within the time
provided by the regulations, the term limited for the duration of the patent shall be
deemed to have expired at the end of that time.
R.S., 1985, c. P-4, s. 46; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s. 43.
Reissue of Patents
Issue of new or amended patents
47 (1) Whenever any patent is deemed defective or inoperative by reason of
insufficient description and specification, or by reason of the patentee’s claiming
more or less than he had a right to claim as new, but at the same time it appears that
the error arose from inadvertence, accident or mistake, without any fraudulent or
deceptive intention, the Commissioner may, on the surrender of the patent within
four years from its date and the payment of a further prescribed fee, cause a new
patent, in accordance with an amended description and specification made by the
patentee, to be issued to him for the same invention for the then unexpired term for
which the original patent was granted.
Certificate of supplementary protection
(1.1) Subsection (1) also applies in the case where the original patent is set out in a
certificate of supplementary protection and the original patent’s term has expired,
except that in that case the issuance of the new patent, whose term remains expired,
is for the purpose of establishing the rights, privileges and liberties granted under the
certificate.
Effect of new patent
(2) The surrender referred to in subsection (1) takes effect only on the issue of the
new patent, and the new patent and the amended description and specification have
the same effect in law, on the trial of any action thereafter commenced for any cause
subsequently accruing, as if the amended description and specification had been
originally filed in their corrected form before the issue of the original patent, but, in so
far as the claims of the original and reissued patents are identical, the surrender
does not affect any action pending at the time of reissue or abate any cause of action
then existing, and the reissued patent to the extent that its claims are identical with
the original patent constitutes a continuation thereof and has effect continuously from
the date of the original patent.
Separate patents for separate parts
(3) The Commissioner may entertain separate applications and cause patents to be
issued for distinct and separate parts of the invention patented, on payment of the
fee for a reissue for each of the reissued patents.
R.S., 1985, c. P-4, s. 47; 2017, c. 6, s. 37.
Disclaimers
Patentee may disclaim anything included in patent by mistake
48 (1) Whenever, by any mistake, accident or inadvertence, and without any wilful
intent to defraud or mislead the public, a patentee has
(a) made a specification too broad, claiming more than that of which the patentee
or the person through whom the patentee claims was the inventor, or
(b) in the specification, claimed that the patentee or the person through whom the
patentee claims was the inventor of any material or substantial part of the
invention patented of which the patentee was not the inventor, and to which the
patentee had no lawful right,
the patentee may, on payment of a prescribed fee, make a disclaimer of such parts
as the patentee does not claim to hold by virtue of the patent or the assignment
thereof.
Form and attestation of disclaimer
(2) A disclaimer shall be filed in the prescribed form and manner.
(3) [Repealed, 1993, c. 15, s. 44]
Pending suits not affected
(4) No disclaimer affects any action pending at the time when it is made, unless there
is unreasonable neglect or delay in making it.
Death of patentee
(5) In case of the death of an original patentee or of his having assigned the patent, a
like right to disclaim vests in his legal representatives, any of whom may exercise it.
Effect of disclaimer
(6) A patent shall, after disclaimer as provided in this section, be deemed to be valid
for such material and substantial part of the invention, definitely distinguished from
other parts thereof claimed without right, as is not disclaimed and is truly the
invention of the disclaimant, and the disclaimant is entitled to maintain an action or
suit in respect of that part accordingly.
R.S., 1985, c. P-4, s. 48; R.S., 1985, c. 33 (3rd Supp.), s. 17; 1993, c. 15, s. 44.
Re-examination
Request for re-examination
48.1 (1) Any person may request a re-examination of any claim of a patent by filing
with the Commissioner prior art, consisting of patents, applications for patents open
to public inspection and printed publications, and by paying a prescribed fee.
Pertinency of request
(2) A request for re-examination under subsection (1) shall set forth the pertinency of
the prior art and the manner of applying the prior art to the claim for which re-
examination is requested.
Notice to patentee
(3) Forthwith after receipt of a request for re-examination under subsection (1), the
Commissioner shall send a copy of the request to the patentee of the patent in
respect of which the request is made, unless the patentee is the person who made
the request.
R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 45.
Establishment of re-examination board
48.2 (1) Forthwith after receipt of a request for re-examination under subsection 48.1
(1), the Commissioner shall establish a re-examination board consisting of not fewer
than three persons, at least two of whom shall be employees of the Patent Office, to
which the request shall be referred for determination.
Determination to be made by board
(2) A re-examination board shall, within three months following its establishment,
determine whether a substantial new question of patentability affecting any claim of
the patent concerned is raised by the request for re-examination.
Notice
(3) Where a re-examination board has determined that a request for re-examination
does not raise a substantial new question affecting the patentability of a claim of the
patent concerned, the board shall so notify the person who filed the request and the
decision of the board is final for all purposes and is not subject to appeal or to review
by any court.
Idem
(4) Where a re-examination board has determined that a request for re-examination
raises a substantial new question affecting the patentability of a claim of the patent
concerned, the board shall notify the patentee of the determination and the reasons
therefor.
Filing of reply
(5) A patentee who receives notice under subsection (4) may, within three months of
the date of the notice, submit to the re-examination board a reply to the notice setting
out submissions on the question of the patentability of the claim of the patent in
respect of which the notice was given.
R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 46(F).
Re-examination proceeding
48.3 (1) On receipt of a reply under subsection 48.2(5) or in the absence of any reply
within three months after notice is given under subsection 48.2(4), a re-examination
board shall forthwith cause a re-examination to be made of the claim of the patent in
respect of which the request for re-examination was submitted.
Patentee may submit amendments
(2) In any re-examination proceeding under subsection (1), the patentee may
propose any amendment to the patent or any new claims in relation thereto but no
proposed amendment or new claim enlarging the scope of a claim of the patent shall
be permitted.
Time limitation
(3) A re-examination proceeding in respect of a claim of a patent shall be completed
within twelve months of the commencement of the proceedings under subsection (1).
R.S., 1985, c. 33 (3rd Supp.), s. 18.
Certificate of board
48.4 (1) On conclusion of a re-examination proceeding in respect of a claim of a
patent, the re-examination board shall issue a certificate
(a) cancelling any claim of the patent determined to be unpatentable;
(b) confirming any claim of the patent determined to be patentable; or
(c) incorporating in the patent any proposed amended or new claim determined to
be patentable.
Certificate attached to patent
(2) A certificate issued in respect of a patent under subsection (1) shall be attached
to the patent and made part thereof by reference, and a copy of the certificate shall
be sent by registered mail to the patentee.
Effect of certificate
(3) For the purposes of this Act, where a certificate issued in respect of a patent
under subsection (1)
(a) cancels any claim but not all claims of the patent, the patent shall be deemed
to have been issued, from the date of grant, in the corrected form;
(b) cancels all claims of the patent, the patent shall be deemed never to have
been issued; or
(c) amends any claim of the patent or incorporates a new claim in the patent, the
amended claim or new claim shall be effective, from the date of the certificate, for
the unexpired term of the patent.
Appeals
(4) Subsection (3) does not apply until the time for taking an appeal has expired
under subsection 48.5(2) and, if an appeal is taken, subsection (3) applies only to the
extent provided in the final judgment on the appeal.
R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 47.
Appeals
48.5 (1) Any decision of a re-examination board set out in a certificate issued under
subsection 48.4(1) is subject to appeal by the patentee to the Federal Court.
Limitation
(2) No appeal may be taken under subsection (1) after three months from the date a
copy of the certificate is sent by registered mail to the patentee.
R.S., 1985, c. 33 (3rd Supp.), s. 18.
Assignments and Devolutions
Assignee or personal representatives
49 (1) A patent may be granted to any person to whom an inventor, entitled under
this Act to obtain a patent, has assigned in writing or bequeathed by his last will his
right to obtain it, and, in the absence of an assignment or bequest, the patent may be
granted to the personal representatives of the estate of the deceased inventor.
Assignees may object
(2) Where an applicant for a patent has, after filing the application, assigned his right
to obtain the patent, or where the applicant has either before or after filing the
application assigned in writing the whole or part of his property or interest in the
invention, the assignee may register the assignment in the Patent Office in such
manner as may be determined by the Commissioner, and no application for a patent
may be withdrawn without the consent in writing of every such registered assignee.
Attestation
(3) No assignment shall be registered in the Patent Office unless it is accompanied
by the affidavit of a subscribing witness or established by other proof to the
satisfaction of the Commissioner that the assignment has been signed and executed
by the assignor.
R.S., 1985, c. P-4, s. 49; R.S., 1985, c. 33 (3rd Supp.), s. 19.
Patents to be assignable
50 (1) Every patent issued for an invention is assignable in law, either as to the
whole interest or as to any part thereof, by an instrument in writing.
Registration
(2) Every assignment of a patent, and every grant and conveyance of any exclusive
right to make and use and to grant to others the right to make and use the invention
patented, within and throughout Canada or any part thereof, shall be registered in
the Patent Office in the manner determined by the Commissioner.
Attestation
(3) No assignment, grant or conveyance shall be registered in the Patent Office
unless it is accompanied by the affidavit of a subscribing witness or established by
other proof to the satisfaction of the Commissioner that the assignment, grant or
conveyance has been signed and executed by the assignor and by every other party
thereto.
R.S., 1985, c. P-4, s. 50; R.S., 1985, c. 33 (3rd Supp.), s. 20.
When assignment void
51 Every assignment affecting a patent for invention, whether it is one referred to in
section 49 or 50, is void against any subsequent assignee, unless the assignment is
registered as prescribed by those sections, before the registration of the instrument
under which the subsequent assignee claims.
R.S., c. P-4, s. 53.
Jurisdiction of Federal Court
52 The Federal Court has jurisdiction, on the application of the Commissioner or of
any person interested, to order that any entry in the records of the Patent Office
relating to the title to a patent be varied or expunged.
R.S., c. P-4, s. 54; R.S., c. 10(2nd Supp.), s. 64.
Standard-Essential Patents
Subsequent patentee or holder bound
52.1 (1) A licensing commitment in respect of a standard-essential patent that binds
the patentee, binds any subsequent patentee and any holder of any certificate of
supplementary protection that sets out that patent.
Subsequent holder bound
(2) If a certificate of supplementary protection sets out a standard-essential patent, a
licensing commitment that binds the holder of that certificate of supplementary
protection, binds any subsequent holder of the certificate of supplementary
protection.
Application
(3) Subsections (1) and (2) apply despite any other Act of Parliament and any
decision or order made under such an Act.
2018, c. 27, s. 190.
Regulations
52.2 The Governor in Council may make regulations, for the purposes of section
52.1, respecting what constitutes, or does not constitute, a licensing commitment or
a standard-essential patent.
2018, c. 27, s. 190.
Legal Proceedings in Respect of Patents
Void in certain cases, or valid only for parts
53 (1) A patent is void if any material allegation in the petition of the applicant in
respect of the patent is untrue, or if the specification and drawings contain more or
less than is necessary for obtaining the end for which they purport to be made, and
the omission or addition is wilfully made for the purpose of misleading.
Exception
(2) Where it appears to a court that the omission or addition referred to in subsection
(1) was an involuntary error and it is proved that the patentee is entitled to the
remainder of his patent, the court shall render a judgment in accordance with the
facts, and shall determine the costs, and the patent shall be held valid for that part of
the invention described to which the patentee is so found to be entitled.
(3) [Repealed, 2017, c. 6, s. 38]
R.S., 1985, c. P-4, s. 53; 2017, c. 6, s. 38.
Admissible in evidence
53.1 (1) In any action or proceeding respecting a patent, a written communication, or
any part of such a communication, may be admitted into evidence to rebut any
representation made by the patentee in the action or proceeding as to the
construction of a claim in the patent if
(a) it is prepared in respect of
(i) the prosecution of the application for the patent,
(ii) a disclaimer made in respect of the patent, or
(iii) a request for re-examination, or a re-examination proceeding, in respect
of the patent; and
(b) it is between
(i) the applicant for the patent or the patentee; and
(ii) the Commissioner, an officer or employee of the Patent Office or a
member of a re-examination board.
Divisional application
(2) For the purposes of this section, the prosecution of a divisional application is
deemed to include the prosecution of the original application before that divisional
application is filed.
Reissued patent
(3) For the purposes of this section, a written communication is deemed to be
prepared in respect of the prosecution of the application for a reissued patent if it is
prepared in respect of
(a) the prosecution of the application for the patent that was surrendered and
from which the reissued patent results; or
(b) the application for reissuance.
2018, c. 27, s. 191.
Infringement
Jurisdiction of courts
54 (1) An action for the infringement of a patent may be brought in that court of
record that, in the province in which the infringement is said to have occurred, has
jurisdiction, pecuniarily, to the amount of the damages claimed and that, with relation
to the other courts of the province, holds its sittings nearest to the place of residence
or of business of the defendant, and that court shall decide the case and determine
the costs, and assumption of jurisdiction by the court is of itself sufficient proof of
jurisdiction.
Jurisdiction of Federal Court
(2) Nothing in this section impairs the jurisdiction of the Federal Court under section
20 of the Federal Courts Act or otherwise.
R.S., 1985, c. P-4, s. 54; 2002, c. 8, s. 182.
Liability for patent infringement
55 (1) A person who infringes a patent is liable to the patentee and to all persons
claiming under the patentee for all damage sustained by the patentee or by any such
person, after the grant of the patent, by reason of the infringement.
Liability damage before patent is granted
(2) A person is liable to pay reasonable compensation to a patentee and to all
persons claiming under the patentee for any damage sustained by the patentee or by
any of those persons by reason of any act on the part of that person, after the
application for the patent became open to public inspection under section 10 and
before the grant of the patent, that would have constituted an infringement of the
patent if the patent had been granted on the day the application became open to
public inspection under that section.
Patentee to be a party
(3) Unless otherwise expressly provided, the patentee shall be or be made a party to
any proceeding under subsection (1) or (2).
Deemed action for infringement
(4) For the purposes of this section and sections 54 and 55.01 to 59, any proceeding
under subsection (2) is deemed to be an action for the infringement of a patent and
the act on which that proceeding is based is deemed to be an act of infringement of
the patent.
R.S., 1985, c. P-4, s. 55; R.S., 1985, c. 33 (3rd Supp.), s. 21; 1993, c. 15, s. 48.
Limitation
55.01 No remedy may be awarded for an act of infringement committed more than
six years before the commencement of the action for infringement.
1993, c. 15, s. 48.
Burden of proof for patented process
55.1 In an action for infringement of a patent granted for a process for obtaining a
new product, any product that is the same as the new product shall, in the absence
of proof to the contrary, be considered to have been produced by the patented
process.
1993, c. 2, s. 4, c. 44, s. 193.
Exception
55.2 (1) It is not an infringement of a patent for any person to make, construct, use or
sell the patented invention solely for uses reasonably related to the development and
submission of information required under any law of Canada, a province or a country
other than Canada that regulates the manufacture, construction, use or sale of any
product.
(2) and (3) [Repealed, 2001, c. 10, s. 2]
Regulations
(4) The Governor in Council may make regulations respecting the infringement of
any patent that, directly or indirectly, could result or results from the making,
construction, use or sale of a patented invention in accordance with subsection (1),
including regulations
(a) respecting the conditions that must be fulfilled before a document — including
a notice, certificate or permit — concerning any product to which a patent may
relate may be issued to any person under any Act of Parliament that regulates
the manufacture, construction, use or sale of that product, in addition to any
conditions provided for by or under that Act;
(b) respecting the earliest day on which such a document may be issued to a
person and the earliest day on which it may take effect, and respecting the
manner in which each day is to be determined;
(c) respecting the issuance, suspension or revocation of such a document in
circumstances where, directly or indirectly, the document’s issuance could result
or results in the infringement of a patent;
(d) respecting the prevention and resolution of disputes with respect to the day on
which such a document may be issued or take effect;
(e) respecting the prevention and resolution of disputes with respect to the
infringement of a patent that could result directly or indirectly from the
manufacture, construction, use or sale of a product referred to in paragraph (a);
(f) respecting the resolution of disputes with respect to the infringement of a
patent that results directly or indirectly from the manufacture, construction, use or
sale of such a product;
(g) conferring rights of action with respect to disputes referred to in any of
paragraphs (d) to (f);
(h) restricting or excluding the application of other rights of action under this Act
or another Act of Parliament to disputes referred to in any of paragraphs (d) to (f);
(i) designating the court of competent jurisdiction in which a proceeding with
respect to rights of action referred to in paragraph (g) is to be heard;
(j) respecting such proceedings, including the procedure of the court in the
matter, the defences that may be pleaded, the remedies that may be sought, the
joinder of parties and of rights of action and the consolidation of other
proceedings, the decisions and orders the court may make and any appeals from
those decisions and orders; and
(k) specifying who may be an interested person for the purposes of subsection 60
(1) with respect to disputes referred to in paragraph (e).
Inconsistency or conflict
(5) In the event of any inconsistency or conflict between
(a) this section or any regulations made under this section, and
(b) any Act of Parliament or any regulations made thereunder,
this section or the regulations made under this section shall prevail to the extent of
the inconsistency or conflict.
For greater certainty
(6) For greater certainty, subsection (1) does not affect any exception to the
exclusive property or privilege granted by a patent that exists at law in respect of acts
done privately and on a non-commercial scale or for a non-commercial purpose.
1993, c. 2, s. 4; 2001, c. 10, s. 2; 2017, c. 6, s. 39; 2018, c. 27, s. 192.
Exception — experimentation
55.3 (1) An act committed for the purpose of experimentation relating to the subject-
matter of a patent is not an infringement of the patent.
Regulations
(2) The Governor in Council may make regulations respecting
(a) factors that the court may consider, must consider or is not permitted to
consider in determining whether an act is, or is not, committed for the purpose set
out in subsection (1); and
(b) circumstances in which an act is, or is not, committed for the purpose set out
in subsection (1).
2018, c. 27, s. 193.
Exception — prior use
56 (1) Subject to subsection (2), if — before the claim date of a claim in a patent — a
person, in good faith, committed an act that would otherwise constitute an
infringement of the patent in respect of that claim, or made serious and effective
preparations to commit such an act, it is not an infringement of the patent or any
certificate of supplementary protection that sets out the patent, in respect of that
claim, if the person commits the same act on or after that claim date.
Transfer
(2) If the act referred to in subsection (1) is committed or the preparations to commit
it are made in the course of a business and that business, or the part of that
business in the course of which the act was committed or the preparations were
made, is subsequently transferred,
(a) subsection (1) or paragraph (b), as the case may be, does not apply to an act
committed by the transferor after the transfer; and
(b) it is not an infringement of the patent or any certificate of supplementary
protection that sets out the patent, in respect of the claim, if the transferee
commits the act after the transfer.
Exception — use or sale of article
(3) The use or sale of an article is not an infringement of a patent or any certificate of
supplementary protection that sets out the patent if that article was acquired, directly
or indirectly, from a person who, at the time they disposed of it, could sell it without
infringing the patent or the certificate
(a) because the person, before the claim date of a claim in the patent, in good
faith, committed an act that would otherwise constitute an infringement of the
patent in respect of that claim and they disposed of the article before that claim
date; or
(b) under subsection (1) or paragraph (2)(b).
Exception — use of service
(4) The use of a service is not an infringement of a patent if the service is provided
by a person who, under subsection (1) or paragraph (2)(b), is able to provide it
without infringing the patent.
Non-application
(5) Subsection (1) or paragraph (3)(a) does not apply if the person referred to in that
subsection or that paragraph was able, as the case may be, to commit the act or
make the preparations to commit the act only because they obtained knowledge of
the subject-matter defined by the claim, directly or indirectly, from the applicant of the
application on the basis of which the patent was granted and they knew that the
applicant was the source of the knowledge.
Exception — use of article
(6) Subject to subsection (7), the use of an article is not an infringement of a patent
or any certificate of supplementary protection that sets out the patent, in respect of a
claim, if the article was acquired, directly or indirectly, from a person who, before the
claim date of that claim, in good faith, made or sold, or made serious and effective
preparations to make or sell, an article that is substantially the same as the one
used, for that use.
Transfer
(7) If the making or selling referred to in subsection (6) was done or the preparations
to do so were made in the course of a business and that business, or the part of that
business in the course of which the making or selling was done or the preparations
were made, is subsequently transferred, then
(a) subsection (6) or paragraph (b), as the case may be, does not apply in
respect of an article that is made or sold by the transferor after the transfer; and
(b) it is not an infringement of the patent or any certificate of supplementary
protection that sets out the patent, in respect of a claim referred to in subsection
(6), to use an article for the use referred to in that subsection if it was made or
sold for that use by the transferee after the transfer.
Non-application
(8) Subsection (6) does not apply if the person referred to in that subsection was
able to make or sell, or to make the preparations to make or sell, the article only
because they obtained knowledge of the use defined by the claim, directly or
indirectly, from the applicant of the application on the basis of which the patent was
granted and they knew that the applicant was the source of the knowledge.
Exception — use of service
(9) Subject to subsection (10), the use of a service is not an infringement of a patent
in respect of a claim if the service is provided by a person who, before the claim date
of that claim, in good faith, provided, or made serious and effective preparations to
provide, a service that is substantially the same as the one used, for that use.
Transfer
(10) If the service referred to in subsection (9) was provided or the preparations to
provide it were made in the course of a business and that business, or the part of
that business in the course of which the service was provided or the preparations to
do so were made, is subsequently transferred, then, after the transfer
(a) the transferor is deemed to no longer be the person referred to in subsection
(9) for the purposes of that subsection; and
(b) the transferee is deemed to be the person who provided the service for the
purposes of subsection (9).
Non-application
(11) Subsection (9) does not apply if the person referred to in that subsection was
able to provide the service or make the preparations to provide it only because they
obtained knowledge of the use defined by the claim, directly or indirectly, from the
applicant of the application on the basis of which the patent was granted and they
knew that the applicant was the source of the knowledge.
R.S., 1985, c. P-4, s. 56; R.S., 1985, c. 33 (3rd Supp.), s. 22; 1993, c. 44, ss. 194, 199; 2018, c. 27, s.
194.
Injunction may issue
57 (1) In any action for infringement of a patent, the court, or any judge thereof, may,
on the application of the plaintiff or defendant, make such order as the court or judge
sees fit,
(a) restraining or enjoining the opposite party from further use, manufacture or
sale of the subject-matter of the patent, and for his punishment in the event of
disobedience of that order, or
(b) for and respecting inspection or account,
and generally, respecting the proceedings in the action.
Appeal
(2) An appeal lies from any order made under subsection (1) in the same
circumstances and to the same court as from other judgments or orders of the court
in which the order is made.
R.S., c. P-4, s. 59.
Invalid claims not to affect valid claims
58 When, in any action or proceeding respecting a patent that contains two or more
claims, one or more of those claims is or are held to be valid but another or others is
or are held to be invalid or void, effect shall be given to the patent as if it contained
only the valid claim or claims.
R.S., c. P-4, s. 60.
Defence
59 The defendant, in any action for infringement of a patent may plead as matter of
defence any fact or default which by this Act or by law renders the patent void, and
the court shall take cognizance of that pleading and of the relevant facts and decide
accordingly.
R.S., c. P-4, s. 61.
Impeachment
Impeachment of patents or claims
60 (1) A patent or any claim in a patent may be declared invalid or void by the
Federal Court at the instance of the Attorney General of Canada or at the instance of
any interested person.
Declaration as to infringement
(2) Where any person has reasonable cause to believe that any process used or
proposed to be used or any article made, used or sold or proposed to be made, used
or sold by him might be alleged by any patentee to constitute an infringement of an
exclusive property or privilege granted thereby, he may bring an action in the Federal
Court against the patentee for a declaration that the process or article does not or
would not constitute an infringement of the exclusive property or privilege.
Security for costs
(3) With the exception of the Attorney General of Canada or the attorney general of a
province, the plaintiff in any action under this section shall, before proceeding
therein, give security for the costs of the patentee in such sum as the Federal Court
may direct, but a defendant in any action for the infringement of a patent is entitled to
obtain a declaration under this section without being required to furnish any security.
R.S., c. P-4, s. 62; R.S., c. 10(2nd Supp.), s. 64.
61 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 23]
Judgments
Judgment voiding patent
62 A patent, or part of a patent, that is voided by a judgment shall be and be held to
have been void and of no effect, unless the judgment is reversed on appeal as
provided in section 63.
R.S., 1985, c. P-4, s. 62; 1993, c. 15, s. 49; 2017, c. 6, s. 40.
Appeal
63 Every judgment voiding in whole or in part or refusing to void in whole or in part
any patent is subject to appeal to any court having appellate jurisdiction in other
cases decided by the court by which the judgment was rendered.
R.S., c. P-4, s. 65.
Conditions 64 [Repealed, 1993, c. 44, s. 195]
Abuse of rights under patents
65 (1) The Attorney General of Canada or any person interested may, at any time
after the expiration of three years from the date of the grant of a patent, apply to the
Commissioner alleging in the case of that patent that there has been an abuse of the
exclusive rights thereunder and asking for relief under this Act.
What amounts to abuse
(2) The exclusive rights under a patent shall be deemed to have been abused in any
of the following circumstances:
(a) and (b) [Repealed, 1993, c. 44, s. 196]
(c) if the demand for the patented article in Canada is not being met to an
adequate extent and on reasonable terms;
(d) if, by reason of the refusal of the patentee to grant a licence or licences on
reasonable terms, the trade or industry of Canada or the trade of any person or
class of persons trading in Canada, or the establishment of any new trade or
industry in Canada, is prejudiced, and it is in the public interest that a licence or
licences should be granted;
(e) if any trade or industry in Canada, or any person or class of persons engaged
therein, is unfairly prejudiced by the conditions attached by the patentee, whether
before or after the passing of this Act, to the purchase, hire, licence or use of the
patented article or to the using or working of the patented process; or
(f) if it is shown that the existence of the patent, being a patent for an invention
relating to a process involving the use of materials not protected by the patent or
for an invention relating to a substance produced by such a process, has been
utilized by the patentee so as unfairly to prejudice in Canada the manufacture,
use or sale of any materials.
(3) and (4) [Repealed, 1993, c. 44, s. 196]
Definition of patented article
(5) For the purposes of this section, the expression patented article includes articles
made by a patented process.
R.S., 1985, c. P-4, s. 65; 1993, c. 2, s. 5, c. 15, s. 51, c. 44, s. 196.
Powers of Commissioner in cases of abuse
66 (1) On being satisfied that a case of abuse of the exclusive rights under a patent
has been established, the Commissioner may exercise any of the following powers
as he may deem expedient in the circumstances:
(a) he may order the grant to the applicant of a licence on such terms as the
Commissioner may think expedient, including a term precluding the licensee from
importing into Canada any goods the importation of which, if made by persons
other than the patentee or persons claiming under him, would be an infringement
of the patent, and in that case the patentee and all licensees for the time being
shall be deemed to have mutually covenanted against that importation;
(b) [Repealed, 1993, c. 44, s. 197]
(c) if the Commissioner is satisfied that the exclusive rights have been abused in
the circumstances specified in paragraph 65(2)(f), he may order the grant of
licences to the applicant and to such of his customers, and containing such
terms, as the Commissioner may think expedient;
(d) if the Commissioner is satisfied that the objects of this section and section 65
cannot be attained by the exercise of any of the foregoing powers, the
Commissioner shall order the patent to be revoked, either forthwith or after such
reasonable interval as may be specified in the order, unless in the meantime such
conditions as may be specified in the order with a view to attaining the objects of
this section and section 65 are fulfilled, and the Commissioner may, on
reasonable cause shown in any case, by subsequent order extend the interval so
specified, but the Commissioner shall not make an order for revocation which is
at variance with any treaty, convention, arrangement, or engagement with any
other country to which Canada is a party; or
(e) if the Commissioner is of opinion that the objects of this section and section
65 will be best attained by not making an order under the provisions of this
section, he may make an order refusing the application and dispose of any
question as to costs thereon as he thinks just.
Proceedings to prevent infringement
(2) A licensee under paragraph (1)(a) is entitled to call on the patentee to take
proceedings to prevent infringement of the patent, and if the patentee refuses or
neglects to do so within two months after being so called on, the licensee may
institute proceedings for infringement in his own name as though he were the
patentee, making the patentee a defendant, but a patentee added as defendant is
not liable for any costs unless he enters an appearance and takes part in the
proceedings.
(3) [Repealed, 2017, c. 6, s. 41]
Considerations by which Commissioner to be guided
(4) In settling the terms of a licence under paragraph (1)(a), the Commissioner shall
be guided as far as possible by the following considerations:
(a) he shall endeavour to secure the widest possible use of the invention in
Canada consistent with the patentee deriving a reasonable advantage from his
patent rights;
(b) he shall endeavour to secure to the patentee the maximum advantage
consistent with the invention being worked by the licensee at a reasonable profit
in Canada; and
(c) he shall endeavour to secure equality of advantage among the several
licensees, and for this purpose may, on due cause being shown, reduce the
royalties or other payments accruing to the patentee under any licence previously
granted.
R.S., 1985, c. P-4, s. 66; R.S., 1985, c. 33 (3rd Supp.), s. 24; 1993, c. 44, s. 197; 2017, c. 6, s. 41.
67 [Repealed, 1993, c. 44, s. 198]
Contents of applications
68 (1) Every application presented to the Commissioner under section 65 or 66 shall
(a) set out fully the nature of the applicant’s interest, the facts on which the
applicant bases his case and the relief that he seeks; and
(b) be accompanied by statutory declarations verifying the applicant’s interest
and the facts set out in the application.
Service
(2) The Commissioner shall consider the matters alleged in the application and
declarations referred to in subsection (1) and, if satisfied that the applicant has a
bona fide interest and that a case for relief has been made, the Commissioner shall
direct the applicant to serve copies of the application and declarations on the
patentee and on any other persons appearing from the records of the Patent Office
to be interested in the patent, and the applicant shall advertise the application both
(a) in the Canada Gazette; and
(b) on the website of the Canadian Intellectual Property Office or in any other
prescribed location.
R.S., 1985, c. P-4, s. 68; 2017, c. 6, s. 42.
Opposition and counter statement
69 (1) If the patentee or any person is desirous of opposing the granting of any relief
under sections 65 to 70, he shall, within such time as may be prescribed or within
such extended time as the Commissioner may on application further allow, deliver to
the Commissioner a counter statement verified by a statutory declaration fully setting
out the grounds on which the application is to be opposed.
Attendance for cross-examination
(2) The Commissioner shall consider the counter statement and declaration referred
to in subsection (1) and may thereupon dismiss the application if satisfied that the
allegations in the application have been adequately answered, unless any of the
parties demands a hearing or unless the Commissioner himself appoints a hearing,
and in any case the Commissioner may require the attendance before him of any of
the declarants to be cross-examined or further examined on matters relevant to the
issues raised in the application and counter statement, and he may, subject to due
precautions against disclosure of information to rivals in trade, require the production
before him of books and documents relating to the matter in issue.
Reference to Federal Court
(3) In any case where the Commissioner does not dismiss an application as provided
in subsection (2), and
(a) if the parties interested consent, or
(b) if the proceedings require any prolonged examination of documents or any
scientific or local investigation that cannot in the opinion of the Commissioner
conveniently be made before him,
the Commissioner, with the approval in writing of the Minister, may order the whole
proceedings or any issue of fact arising thereunder to be referred to the Federal
Court, which has jurisdiction in the premises.
Idem
(4) Where the whole proceedings are referred under subsection (1), the judgment,
decision or order of the Federal Court is final, and where a question or issue of fact is
referred under that subsection, the Court shall report its findings to the
Commissioner.
R.S., c. P-4, s. 71; R.S., c. 10(2nd Supp.), s. 64.
Licence deemed to be by deed
70 Any order for the grant of a licence under this Act, without prejudice to any other
method of enforcement, operates as if it were embodied in a deed granting a licence
executed by the patentee and all other necessary parties.
R.S., c. P-4, s. 72.
Appeal to Federal Court
71 All orders and decisions of the Commissioner under sections 65 to 70 are subject
to appeal to the Federal Court, and on any such appeal the Attorney General of
Canada or such counsel as he may appoint is entitled to appear and be heard.
R.S., c. P-4, s. 73; R.S., c. 10(2nd Supp.), s. 64.
72 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 25]
Abandonment and Reinstatement of Applications
Deemed abandonment of applications
73 (1) An application for a patent in Canada shall be deemed to be abandoned if the
applicant does not
(a) reply in good faith to any requisition made by an examiner in connection with
an examination, within six months after the requisition is made or within any
shorter period established by the Commissioner;
(b) comply with a notice given pursuant to subsection 27(6);
(c) pay the fees payable under section 27.1, within the time provided by the
regulations;
(d) make a request for examination or pay the prescribed fee under subsection
35(1) within the time provided by the regulations;
(e) comply with a notice given under subsection 35(2); or
(f) pay the prescribed fees stated to be payable in a notice of allowance of patent
within six months after the date of the notice.
Deemed abandonment in prescribed circumstances
(2) An application shall also be deemed to be abandoned in any other circumstances
that are prescribed.
Reinstatement
(3) An application deemed to be abandoned under this section shall be reinstated if
the applicant
(a) makes a request for reinstatement to the Commissioner within the prescribed
period;
(b) takes the action that should have been taken in order to avoid the
abandonment; and
(c) pays the prescribed fee before the expiration of the prescribed period.
Amendment and re-examination
(4) An application that has been abandoned pursuant to paragraph (1)(f) and
reinstated is subject to amendment and further examination.
Original filing date
(5) An application that is reinstated retains its original filing date.
R.S., 1985, c. P-4, s. 73; 1993, c. 15, s. 52; 2015, c. 3, s. 138(F).
Offences and Punishment 74 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 26]
Offences
75 (1) Every person is guilty of an indictable offence and is liable to a fine of not
more than $200 or to imprisonment for a term of not more than three months, or to
both, who
(a) without the consent of the patentee, marks in any way on anything made or
sold by the person, and for the sole making or selling of which they are not the
patentee, the name or any imitation of the name of any patentee for the sole
making or selling of that thing;
(b) without the consent of the patentee, marks in any way on anything not
purchased from the patentee, the words “Patent”, “Letters Patent”, “Queen’s (or
King’s) Patent”, “Patented” or any word or words with a similar meaning, with the
intent of counterfeiting or imitating the stamp, mark or device of the patentee, or
of deceiving the public and inducing them to believe that the thing in question was
made or sold by or with the patentee’s consent; or
(c) with intent to deceive the public, offers for sale as patented in Canada any
article that is neither patented in Canada nor protected by a certificate of
supplementary protection in Canada.
Certificate of supplementary protection
(2) Every person is guilty of an indictable offence and is liable to a fine of not more
than $200 or to imprisonment for a term of not more than three months, or to both,
who
(a) during the term of a certificate of supplementary protection, without the
consent of the certificate’s holder, marks in any way on anything made or sold by
the person, and for the sole making or selling of which they are not the holder of a
certificate of supplementary protection, the name or any imitation of the name of
any holder of a certificate of supplementary protection for the sole making or
selling of that thing;
(b) after a certificate of supplementary protection has been issued and before the
end of its term, without the consent of the certificate’s holder, marks in any way
on anything not purchased from that holder the words “Certificate of
Supplementary Protection”, “Protected by a Certificate of Supplementary
Protection” or any words with a similar meaning, with the intent of counterfeiting
or imitating that holder’s stamp, mark or device, or of deceiving the public and
inducing them to believe that the thing in question was made or sold by or with
that holder’s consent; or
(c) with the intent to deceive the public, offers for sale as protected by a
certificate of supplementary protection in Canada any article that
(i) is neither patented in Canada nor protected by a certificate of
supplementary protection in Canada, or
(ii) is patented in Canada but for which no certificate of supplementary
protection has been issued.
R.S., 1985, c. P-4, s. 75; 2017, c. 6, s. 43.
False representations, false entries, etc.
76 Every person who, in relation to the purposes of this Act and knowing it to be
false,
(a) makes any false representation,
(b) makes or causes to be made any false entry in any register or book,
(b.1) submits or causes to be submitted, in an electronic form, any false
document, false information or document containing false information,
(c) makes or causes to be made any false document or alters the form of a copy
of any document, or
(d) produces or tenders any document containing false information,
is guilty of an indictable offence and liable on conviction to a fine not exceeding five
hundred dollars or to imprisonment for a term not exceeding six months or to both.
R.S., 1985, c. P-4, s. 76; 1993, c. 15, s. 53.
Offence respecting patented medicines
76.1 (1) Every person who contravenes or fails to comply with section 80, 81, 82 or
88 or any order made thereunder is guilty of an offence punishable on summary
conviction and liable
(a) in the case of an individual, to a fine not exceeding five thousand dollars or to
imprisonment for a term not exceeding six months or to both; and
(b) in the case of a corporation, to a fine not exceeding twenty-five thousand
dollars.
Idem
(2) Every person who contravenes or fails to comply with section 84 or any order
made under section 83 is guilty of an offence punishable on summary conviction and
liable
(a) in the case of an individual, to a fine not exceeding twenty-five thousand
dollars or to imprisonment for a term not exceeding one year or to both; and
(b) in the case of a corporation, to a fine not exceeding one hundred thousand
dollars.
Limitation period
(3) Proceedings for an offence under subsection (1) or (2) may be commenced
within, but not later than, two years after the time when the subject-matter of the
proceedings arose.
Continuing offence
(4) Where an offence under subsection (1) or (2) is committed or continued on more
than one day, the person who committed the offence is liable to be convicted for a
separate offence for each day on which the offence is committed or continued.
1993, c. 2, s. 6.
Written Demands
Requirements
76.2 (1) Any written demand received by a person in Canada, that relates to an
invention that is patented in Canada or elsewhere or that is protected by a certificate
of supplementary protection in Canada or by analogous rights granted elsewhere,
must comply with the prescribed requirements.
Federal Court
(2) Any person who receives a written demand that does not comply with the
prescribed requirements, and any person who is aggrieved as a result of the receipt
by another person of such a written demand, may bring a proceeding in the Federal
Court.
Relief
(3) If the Federal Court is satisfied that the written demand does not comply with the
prescribed requirements, it may grant any relief that it considers appropriate,
including by way of recovery of damages, punitive damages, an injunction, a
declaration or an award of costs.
Liability — special case
(4) If a corporation sends a written demand that does not comply with the prescribed
requirements, is notified of those requirements and of the demand’s defects in
respect of those requirements and does not, within a reasonable time after receiving
the notice of those defects, remedy them, the corporation’s officers, directors, agents
or mandataries are jointly and severally, or solidarily, liable with the corporation if
they directed, authorized, assented to, acquiesced in or participated in the sending of
the demand.
Due diligence
(5) A person is not to be found liable under subsection (4) if they establish that they
exercised due diligence to ensure that the written demand complies with the
prescribed requirements.
2018, c. 27, s. 195.
Regulations
76.3 The Governor in Council may make regulations for the purposes of section
76.2, including regulations
(a) respecting what constitutes a written demand or an aggrievement;
(b) respecting the requirements with which a written demand must comply;
(c) respecting factors that the Federal Court may consider, must consider or is
not permitted to consider in making an order under subsection 76.2(3); and
(d) respecting the circumstances in which a defendant is not to be found liable in
a proceeding brought under subsection 76.2(2).
2018, c. 27, s. 195.
Miscellaneous Matters 77 [Repealed, 1993, c. 15, s. 54]
Time period extended
78 (1) If a time period fixed under this Act, in respect of any business before the
Patent Office, for doing anything ends on a prescribed day or a day that is
designated by the Commissioner, that time period is extended to the next day that is
not a prescribed day or a designated day.
Power to designate day
(2) The Commissioner may, on account of unforeseen circumstances and if the
Commissioner is satisfied that it is in the public interest to do so, designate any day
for the purposes of subsection (1). If a day is designated, the Commissioner shall
inform the public of that fact on the website of the Canadian Intellectual Property
Office.
R.S., 1985, c. P-4, s. 78; 2015, c. 36, s. 63; 2017, c. 6, ss. 44, 136.
Transitional Provisions
Patent applications filed before October 1, 1989
78.1 Applications for patents in Canada filed before October 1, 1989 shall be dealt
with and disposed of in accordance with section 38.1 and with the provisions of this
Act as they read immediately before October 1, 1989.
1993, c. 15, s. 55; 2001, c. 10, s. 3.
Special case
78.2 (1) Subject to subsections (2) and (3), any matter arising on or after the day on
which this subsection comes into force in respect of a patent issued on the basis of
an application whose filing date is before October 1, 1989 shall be dealt with and
disposed of in accordance with sections 38.1, 45, 46 and 48.1 to 48.5 and with the
provisions of this Act, other than sections 46 and 56, as they read immediately
before October 1, 1989.
Application of amendments to Act
(2) The provisions of this Act that apply as provided in subsection (1) shall be read
subject to any amendments to this Act, other than the amendments that came into
force on October 1, 1989 or October 1, 1996 or that were made by sections 188,
189, and 195 of the Budget Implementation Act, 2018, No 2.
October 1, 1996
(3) Section 56 of the Patent Act, as it read immediately before October 1, 1989,
applies in respect of a purchase, construction or acquisition made before October 1,
1996 of an invention for which a patent is issued on the basis of an application filed
before October 1, 1989.
1993, c. 15, s. 55; 2001, c. 10, s. 3; 2018, c. 27, s. 196.
Previous version of section 43 applies
78.3 (1) Where a conflict, as defined in section 43 as it read immediately before
October 1, 1989, exists between an application for a patent in Canada filed before
October 1, 1989 (the “earlier application”) and an application for a patent in Canada
filed on or after that date (the “later application”) and
(a) the later application is filed by a person who is entitled to protection under the
terms of any treaty or convention relating to patents to which Canada is a party
and who has previously regularly filed in or for any other country that by treaty,
convention or law affords similar protection to citizens of Canada an application
for a patent describing the same invention,
(b) the later application is filed within twelve months after the filing of the
previously regularly filed application,
(c) the applicant in the later application has made a request for priority in respect
of that application on the basis of the previously regularly filed application, and
(d) the earlier application is filed after the filing of the previously regularly filed
application,
the applicant having the earlier date of invention shall be entitled to a patent and the
applications shall be dealt with and disposed of in accordance with section 43, as it
read immediately before October 1, 1989.
Exception
(2) Subsection (1) does not apply if
(a) the earlier application is filed by a person who is entitled to protection under
the terms of any treaty or convention relating to patents to which Canada is a
party and who has previously regularly filed in or for any other country that by
treaty, convention or law affords similar protection to citizens of Canada an
application for a patent describing the same invention;
(b) the earlier application is filed within twelve months after the filing of the
previously regularly filed application mentioned in paragraph (a);
(c) the applicant in the earlier application has made a request for priority in
respect of that application on the basis of the previously regularly filed application
mentioned in paragraph (a); and
(d) the previously regularly filed application mentioned in paragraph (a) was filed
before the filing of the previously regularly filed application mentioned in
subsection (1).
1993, c. 15, s. 55.
Patent applications filed on or after October 1, 1989
78.4 Applications for patents in Canada filed on or after October 1, 1989, but before
October 1, 1996, shall be dealt with and disposed of in accordance with subsection
27(2) as it read immediately before October 1, 1996 and with the provisions of this
Act as they read on October 1, 1996.
1993, c. 15, s. 55; 2001, c. 10, s. 4.
Patents issued on or after October 1, 1989
78.5 Any matter arising in respect of a patent issued on the basis of an application
filed on or after October 1, 1989, but before October 1, 1996, shall be dealt with and
disposed of in accordance with the provisions of this Act and with subsection 27(2)
as it read immediately before October 1, 1996.
1993, c. 15, s. 55; 2001, c. 10, s. 4.
Payment of prescribed fees
78.6 (1) If, before the day on which this section comes into force, a person has paid
a prescribed fee applicable to a small entity, within the meaning of the Patent Rules
as they read at the time of payment, but should have paid the prescribed fee
applicable to an entity other than a small entity and a payment equivalent to the
difference between the two amounts is submitted to the Commissioner in accordance
with subsection (2) either before or no later than twelve months after that day, the
payment is deemed to have been paid on the day on which the prescribed fee was
paid, regardless of whether an action or other proceeding relating to the patent or
patent application in respect of which the fee was payable has been commenced or
decided.
Information to be provided
(2) Any person who submits a payment to the Commissioner in accordance with
subsection (1) is required to provide information with respect to the service or
proceeding in respect of which the fee was paid and the patent or application in
respect of which the fee was paid.
No refund
(3) A payment submitted in accordance with subsection (1) shall not be refunded.
Action and proceedings barred
(4) No action or proceeding for any compensation or damages lies against Her
Majesty in right of Canada in respect of any direct or indirect consequence resulting
from the application of this section.
Application
(5) For greater certainty, this section also applies to applications for patents
mentioned in sections 78.1 and 78.4.
2005, c. 18, s. 2.
Patented Medicines
Interpretation
Definitions
79 (1) In this section and in sections 80 to 103,
Board means the Patented Medicine Prices Review Board continued by section 91;
(Conseil)
Consumer Price Index means the Consumer Price Index published by Statistics
Canada under the authority of the Statistics Act; (indice des prix à la consommation)
Minister means the Minister of Health or such other Member of the Queen’s Privy
Council for Canada as is designated by the Governor in Council as the Minister for
the purposes of this section and sections 80 to 103; (ministre)
patentee, in respect of an invention pertaining to a medicine, means the person for
the time being entitled to the benefit of the patent for that invention and includes,
where any other person is entitled to exercise any rights in relation to that patent
other than under a licence continued by subsection 11(1) of the Patent Act
Amendment Act, 1992, that other person in respect of those rights; (breveté ou
titulaire d’un brevet)
regulations means regulations made under section 101. (règlement)
Invention pertaining to a medicine
(2) For the purposes of subsection (1) and sections 80 to 101, an invention pertains
to a medicine if the invention is intended or capable of being used for medicine or for
the preparation or production of medicine.
1993, c. 2, s. 7; 1996, c. 8, s. 32.
Pricing Information
Pricing information, etc., required by regulations
80 (1) A patentee of an invention pertaining to a medicine shall, as required by and in
accordance with the regulations, provide the Board with such information and
documents as the regulations may specify respecting
(a) the identity of the medicine;
(b) the price at which the medicine is being or has been sold in any market in
Canada and elsewhere;
(c) the costs of making and marketing the medicine, where that information is
available to the patentee in Canada or is within the knowledge or control of the
patentee;
(d) the factors referred to in section 85; and
(e) any other related matters.
Idem
(2) Subject to subsection (3), a person who is a former patentee of an invention
pertaining to a medicine shall, as required by and in accordance with the regulations,
provide the Board with such information and documents as the regulations may
specify respecting
(a) the identity of the medicine;
(b) the price at which the medicine was sold in any market in Canada and
elsewhere during the period in which the person was a patentee of the invention;
(c) the costs of making and marketing the medicine produced during that period,
whether incurred before or after the patent was issued, where that information is
available to the person in Canada or is within the knowledge or control of the
person;
(d) the factors referred to in section 85; and
(e) any other related matters.
Limitation
(3) Subsection (2) does not apply to a person who has not been entitled to the
benefit of the patent or to exercise any rights in relation to the patent for a period of
three or more years.
1993, c. 2, s. 7.
Pricing information, etc. required by Board
81 (1) The Board may, by order, require a patentee or former patentee of an
invention pertaining to a medicine to provide the Board with information and
documents respecting
(a) in the case of a patentee, any of the matters referred to in paragraphs 80(1)(a)
to (e);
(b) in the case of a former patentee, any of the matters referred to in paragraphs
80(2)(a) to (e); and
(c) such other related matters as the Board may require.
Compliance with order
(2) A patentee or former patentee in respect of whom an order is made under
subsection (1) shall comply with the order within such time as is specified in the
order or as the Board may allow.
Limitation
(3) No order may be made under subsection (1) in respect of a former patentee who,
more than three years before the day on which the order is proposed to be made,
ceased to be entitled to the benefit of the patent or to exercise any rights in relation
to the patent.
1993, c. 2, s. 7.
Notice of introductory price
82 (1) A patentee of an invention pertaining to a medicine who intends to sell the
medicine in a market in Canada in which it has not previously been sold shall, as
soon as practicable after determining the date on which the medicine will be first
offered for sale in that market, notify the Board of its intention and of that date.
Pricing information and documents
(2) Where the Board receives a notice under subsection (1) from a patentee or
otherwise has reason to believe that a patentee of an invention pertaining to a
medicine intends to sell the medicine in a market in Canada in which the medicine
has not previously been sold, the Board may, by order, require the patentee to
provide the Board with information and documents respecting the price at which the
medicine is intended to be sold in that market.
Compliance with order
(3) Subject to subsection (4), a patentee in respect of whom an order is made under
subsection (2) shall comply with the order within such time as is specified in the
order or as the Board may allow.
Limitation
(4) No patentee shall be required to comply with an order made under subsection (2)
prior to the sixtieth day preceding the date on which the patentee intends to first offer
the medicine for sale in the relevant market.
1993, c. 2, s. 7.
Excessive Prices
Order re excessive prices
83 (1) Where the Board finds that a patentee of an invention pertaining to a medicine
is selling the medicine in any market in Canada at a price that, in the Board’s
opinion, is excessive, the Board may, by order, direct the patentee to cause the
maximum price at which the patentee sells the medicine in that market to be reduced
to such level as the Board considers not to be excessive and as is specified in the
order.
Idem
(2) Subject to subsection (4), where the Board finds that a patentee of an invention
pertaining to a medicine has, while a patentee, sold the medicine in any market in
Canada at a price that, in the Board’s opinion, was excessive, the Board may, by
order, direct the patentee to do any one or more of the following things as will, in the
Board’s opinion, offset the amount of the excess revenues estimated by it to have
been derived by the patentee from the sale of the medicine at an excessive price:
(a) reduce the price at which the patentee sells the medicine in any market in
Canada, to such extent and for such period as is specified in the order;
(b) reduce the price at which the patentee sells one other medicine to which a
patented invention of the patentee pertains in any market in Canada, to such
extent and for such period as is specified in the order; or
(c) pay to Her Majesty in right of Canada an amount specified in the order.
Idem
(3) Subject to subsection (4), where the Board finds that a former patentee of an
invention pertaining to a medicine had, while a patentee, sold the medicine in any
market in Canada at a price that, in the Board’s opinion, was excessive, the Board
may, by order, direct the former patentee to do any one or more of the following
things as will, in the Board’s opinion, offset the amount of the excess revenues
estimated by it to have been derived by the former patentee from the sale of the
medicine at an excessive price:
(a) reduce the price at which the former patentee sells a medicine to which a
patented invention of the former patentee pertains in any market in Canada, to
such extent and for such period as is specified in the order; or
(b) pay to Her Majesty in right of Canada an amount specified in the order.
Where policy to sell at excessive price
(4) Where the Board, having regard to the extent and duration of the sales of the
medicine at an excessive price, is of the opinion that the patentee or former patentee
has engaged in a policy of selling the medicine at an excessive price, the Board may,
by order, in lieu of any order it may make under subsection (2) or (3), as the case
may be, direct the patentee or former patentee to do any one or more of the things
referred to in that subsection as will, in the Board’s opinion, offset not more than
twice the amount of the excess revenues estimated by it to have been derived by the
patentee or former patentee from the sale of the medicine at an excessive price.
Excess revenues
(5) In estimating the amount of excess revenues under subsection (2), (3) or (4), the
Board shall not consider any revenues derived by a patentee or former patentee
before December 20, 1991 or any revenues derived by a former patentee after the
former patentee ceased to be entitled to the benefit of the patent or to exercise any
rights in relation to the patent.
Right to hearing
(6) Before the Board makes an order under this section, it shall provide the patentee
or former patentee with a reasonable opportunity to be heard.
Limitation period
(7) No order may be made under this section in respect of a former patentee who,
more than three years before the day on which the proceedings in the matter
commenced, ceased to be entitled to the benefit of the patent or to exercise any
rights in relation to the patent.
1993, c. 2, s. 7; 1994, c. 26, s. 54(F).
Compliance
84 (1) A patentee or former patentee who is required by any order made under
section 83 to reduce the price of a medicine shall commence compliance with the
order within one month after the date of the order or within such greater period after
that date as the Board determines is practical and reasonable, having regard to the
circumstances of the patentee or former patentee.
Idem
(2) A patentee or former patentee who is directed by any order made under section
83 to pay an amount to Her Majesty shall pay that amount within one month after the
date of the order or within such greater period after that date as the Board
determines is practical and reasonable, having regard to the circumstances of the
patentee or former patentee.
Debt due to Her Majesty
(3) An amount payable by a patentee or former patentee to Her Majesty under any
order made under section 83 constitutes a debt due to Her Majesty and may be
recovered in any court of competent jurisdiction.
1993, c. 2, s. 7.
Factors to be considered
85 (1) In determining under section 83 whether a medicine is being or has been sold
at an excessive price in any market in Canada, the Board shall take into
consideration the following factors, to the extent that information on the factors is
available to the Board:
(a) the prices at which the medicine has been sold in the relevant market;
(b) the prices at which other medicines in the same therapeutic class have been
sold in the relevant market;
(c) the prices at which the medicine and other medicines in the same therapeutic
class have been sold in countries other than Canada;
(d) changes in the Consumer Price Index; and
(e) such other factors as may be specified in any regulations made for the
purposes of this subsection.
Additional factors
(2) Where, after taking into consideration the factors referred to in subsection (1), the
Board is unable to determine whether the medicine is being or has been sold in any
market in Canada at an excessive price, the Board may take into consideration the
following factors:
(a) the costs of making and marketing the medicine; and
(b) such other factors as may be specified in any regulations made for the
purposes of this subsection or as are, in the opinion of the Board, relevant in the
circumstances.
Research costs
(3) In determining under section 83 whether a medicine is being or has been sold in
any market in Canada at an excessive price, the Board shall not take into
consideration research costs other than the Canadian portion of the world costs
related to the research that led to the invention pertaining to that medicine or to the
development and commercialization of that invention, calculated in proportion to the
ratio of sales by the patentee in Canada of that medicine to total world sales.
1993, c. 2, s. 7.
Hearings to be public
86 (1) A hearing under section 83 shall be held in public unless the Board is satisfied
on representations made by the person to whom the hearing relates that specific,
direct and substantial harm would be caused to the person by the disclosure of
information or documents at a public hearing, in which case the hearing or any part
thereof may, at the discretion of the Board, be held in private.
Notice of hearing to certain persons
(2) The Board shall give notice to the Minister of Industry or such other Minister as
may be designated by the regulations and to provincial ministers of the Crown
responsible for health of any hearing under section 83, and each of them is entitled
to appear and make representations to the Board with respect to the matter being
heard.
1993, c. 2, s. 7; 1995, c. 1, s. 62.
Information, etc., privileged
87 (1) Subject to subsection (2), any information or document provided to the Board
under section 80, 81 or 82 or in any proceeding under section 83 is privileged, and
no person who has obtained the information or document pursuant to this Act shall,
without the authorization of the person who provided the information or document,
knowingly disclose the information or document or allow it to be disclosed unless it
has been disclosed at a public hearing under section 83.
Disclosure, etc.
(2) Any information or document referred to in subsection (1)
(a) may be disclosed by the Board to any person engaged in the administration of
this Act under the direction of the Board, to the Minister of Industry or such other
Minister as may be designated by the regulations and to the provincial ministers
of the Crown responsible for health and their officials for use only for the purpose
of making representations referred to in subsection 86(2); and
(b) may be used by the Board for the purpose of the report referred to in section
100.
1993, c. 2, s. 7; 1995, c. 1, s. 62.
Sales and Expense Information
Sales and expense information, etc., to be provided
88 (1) A patentee of an invention pertaining to a medicine shall, as required by and in
accordance with the regulations, or as the Board may, by order, require, provide the
Board with such information and documents as the regulations or the order may
specify respecting
(a) the identity of the licensees in Canada of the patentee;
(b) the revenue of the patentee, and details of the source of the revenue, whether
direct or indirect, from sales of medicine in Canada; and
(c) the expenditures made by the patentee in Canada on research and
development relating to medicine.
Additional information, etc.
(2) Where the Board believes on reasonable grounds that any person has
information or documents pertaining to the value of sales of medicine in Canada by a
patentee or the expenditures made by a patentee in Canada on research and
development relating to medicine, the Board may, by order, require the person to
provide the Board with any of the information or documents that are specified in the
order, or with copies thereof.
Compliance with order
(3) A person in respect of whom an order is made under subsection (1) or (2) shall
comply with the order within such time as is specified in the order or as the Board
may allow.
Information, etc., privileged
(4) Subject to section 89, any information or document provided to the Board under
subsection (1) or (2) is privileged, and no person who has obtained the information or
document pursuant to this Act shall, without the authorization of the person who
provided the information or document, knowingly disclose the information or allow it
to be disclosed, except for the purposes of the administration of this Act.
1993, c. 2, s. 7.
Report
89 (1) The Board shall in each year submit to the Minister a report setting out
(a) the Board’s estimate of the proportion, as a percentage, that the expenditures
of each patentee in Canada in the preceding year on research and development
relating to medicine is of the revenues of those patentees from sales of medicine
in Canada in that year; and
(b) the Board’s estimate of the proportion, as a percentage, that the total of the
expenditures of patentees in Canada in the preceding year on research and
development relating to medicine is of the total of the revenues of those
patentees from sales of medicine in Canada in that year.
Basis of report
(2) The report shall be based on an analysis of information and documents provided
to the Board under subsections 88(1) and (2) and of such other information and
documents relating to the revenues and expenditures referred to in subsection 88(1)
as the Board considers relevant but, subject to subsection (3), shall not be set out in
a manner that would make it possible to identify a person who provided any
information or document under subsection 88(1) or (2).
Exception
(3) The Board shall, in the report, identify the patentees in respect of whom an
estimate referred to in subsection (1) is given in the report, and may, in the report,
identify any person who has failed to comply with subsection 88(1) or (2) at any time
in the year in respect of which the report is made.
Tabling of report
(4) The Minister shall cause a copy of the report to be laid before each House of
Parliament on any of the first thirty days on which that House is sitting after the report
is submitted to the Minister.
1993, c. 2, s. 7.
Inquiries
Inquiries
90 The Board shall inquire into any matter that the Minister refers to the Board for
inquiry and shall report to the Minister at the time and in accordance with the terms
of reference established by the Minister.
1993, c. 2, s. 7.
Patented Medicine Prices Review Board
Establishment
91 (1) The Patented Medicine Prices Review Board is hereby continued, and shall
consist of not more than five members to be appointed by the Governor in Council.
Tenure
(2) Each member of the Board shall hold office during good behaviour for a period of
five years, but may be removed at any time by the Governor in Council for cause.
Reappointment
(3) A member of the Board, on the expiration of a first term of office, is eligible to be
reappointed for one further term.
Acting after expiration of appointment
(4) A person may continue to act as a member of the Board after the expiration of the
person’s term of appointment in respect of any matter in which the person became
engaged during the term of appointment.
Remuneration and expenses
(5) The members of the Board shall be paid such remuneration as may be fixed by
the Governor in Council and are entitled to be paid reasonable travel and living
expenses incurred by them in the course of their duties under this Act while absent
from their ordinary place of residence.
1993, c. 2, s. 7.
Advisory panel
92 (1) The Minister may establish an advisory panel to advise the Minister on the
appointment of persons to the Board, which panel shall include representatives of
the provincial ministers of the Crown responsible for health, representatives of
consumer groups, representatives of the pharmaceutical industry and such other
persons as the Minister considers appropriate to appoint.
Consultation
(2) The Minister shall consult with an advisory panel established under subsection
(1) for the purpose of making a recommendation to the Governor in Council with
respect to the appointment of a person to the Board.
1993, c. 2, s. 7.
Chairperson and Vice-chairperson
93 (1) The Governor in Council shall designate one of the members of the Board to
be Chairperson of the Board and one of the members to be Vice-chairperson of the
Board.
Duties of Chairperson
(2) The Chairperson is the chief executive officer of the Board and has supervision
over and direction of the work of the Board, including
(a) the apportionment of the work among the members thereof and the
assignment of members to deal with matters before the Board and to sit at
hearings of the Board and to preside at hearings or other proceedings; and
(b) generally, the conduct of the work of the Board, the management of its
internal affairs and the duties of its staff.
Duties of Vice-chairperson
(3) If the Chairperson is absent or incapacitated or if the office of Chairperson is
vacant, the Vice-chairperson has all the powers and functions of the Chairperson
during the absence, incapacity or vacancy.
1993, c. 2, s. 7.
Staff
94 (1) Such officers and employees as are necessary for the proper conduct of the
work of the Board shall be appointed in accordance with the Public Service
Employment Act.
Idem
(2) Persons appointed under subsection (1) shall be deemed to be employed in the
public service for the purposes of the Public Service Superannuation Act.
Technical assistance
(3) The Board may engage on a temporary basis the services of persons having
technical or specialized knowledge to advise and assist in the performance of its
duties and, with the approval of the Treasury Board, the Board may fix and pay the
remuneration and expenses of those persons.
1993, c. 2, s. 7; 2003, c. 22, s. 225(E).
Principal office
95 (1) The principal office of the Board shall be in the National Capital Region
described in the schedule to the National Capital Act.
Meetings
(2) The Board may meet at such times and places in Canada as the Chairperson
deems advisable.
1993, c. 2, s. 7.
General powers, etc.
96 (1) The Board has, with respect to the attendance, swearing and examination of
witnesses, the production and inspection of documents, the enforcement of its orders
and other matters necessary or proper for the due exercise of its jurisdiction, all such
powers, rights and privileges as are vested in a superior court.
Rules
(2) The Board may, with the approval of the Governor in Council, make general rules
(a) specifying the number of members of the Board that constitutes a quorum in
respect of any matter; and
(b) for regulating the practice and procedure of the Board.
By-laws
(3) The Board may make by-laws for carrying out the work of the Board, the
management of its internal affairs and the duties of its staff.
Guidelines
(4) Subject to subsection (5), the Board may issue guidelines with respect to any
matter within its jurisdiction but such guidelines are not binding on the Board or any
patentee.
Consultation
(5) Before the Board issues any guidelines, it shall consult with the Minister, the
provincial ministers of the Crown responsible for health and such representatives of
consumer groups and representatives of the pharmaceutical industry as the Minister
may designate for the purpose.
Non-application of Statutory Instruments Act
(6) The Statutory Instruments Act does not apply to guidelines issued under
subsection (4).
1993, c. 2, s. 7.
Proceedings
97 (1) All proceedings before the Board shall be dealt with as informally and
expeditiously as the circumstances and considerations of fairness permit.
Differences of opinion among members
(2) In any proceedings before the Board,
(a) in the event of a difference of opinion among the members determining any
question, the opinion of the majority shall prevail; and
(b) in the event of an equally divided opinion among the members determining
any question, the presiding member may determine the question.
1993, c. 2, s. 7.
Orders
98 (1) The Board may, in any order, direct
(a) that the order or any portion thereof shall come into force at a future time, on
the happening of a contingency, event or condition specified in the order or on the
performance to the satisfaction of the Board, or a person named by it, of any
terms specified in the order; and
(b) that the whole or any portion of the order shall have effect for a limited time or
until the happening of a specified event.
Interim orders, etc.
(2) The Board may make interim orders or reserve further directions for an adjourned
hearing of a matter.
Rescission and variation
(3) The Board may vary or rescind any order made by it and may re-hear any matter.
Certificates
(4) Where any person satisfies the Board that the Board would not have sufficient
grounds to make an order under section 83 in respect of the person, the Board may,
after the person pays any fees required to be paid by the regulations, issue to the
person a certificate to that effect, but no certificate is binding on the Board.
1993, c. 2, s. 7.
Enforcement of orders
99 (1) Any order of the Board may be made an order of the Federal Court or any
superior court of a province and is enforceable in the same manner as an order of
the court.
Procedure
(2) To make an order of the Board an order of a court, the usual practice and
procedure of the court in such matters may be followed or, in lieu thereof, the Board
may file with the registrar of the court a certified copy of the Board’s order, and
thereupon the order becomes an order of the court.
Effect of variation or rescission
(3) Where an order of the Board that has been made an order of a court is varied or
rescinded by a subsequent order of the Board, the subsequent order of the Board
shall be made an order of the court in the manner described in subsection (1), and
the order of the court shall be deemed to have been varied or rescinded accordingly.
Option to enforce
(4) Nothing in this section prevents the Board from exercising any of its powers
under this Act.
1993, c. 2, s. 7.
Report of Board
100 (1) The Board shall in each year submit to the Minister a report on its activities
during the preceding year.
Idem
(2) The report shall contain
(a) a summary of pricing trends in the pharmaceutical industry; and
(b) the name of each patentee in respect of whom an order was made under
subsection 80(2) during the year and a statement as to the status of the matter in
respect of which the order was made.
Report summary
(3) The summary referred to in paragraph (2)(a) may be based on information and
documents provided to the Board by any patentee under section 80, 81 or 82 or in
any proceeding under section 83, but shall not be set out in a manner that would
make it possible to identify that patentee.
Tabling of report
(4) The Minister shall cause a copy of the report to be laid before each House of
Parliament on any of the first thirty days on which that House is sitting after the report
is submitted to the Minister.
1993, c. 2, s. 7.
Regulations
Regulations
101 (1) Subject to subsection (2), the Governor in Council may make regulations
(a) specifying the information and documents that shall be provided to the Board
under subsection 80(1) or (2) or 88(1);
(b) respecting the form and manner in which and times at which such information
and documents shall be provided to the Board and imposing conditions
respecting the provision of such information and documents;
(c) specifying a period for the purposes of subsection 80(2);
(d) specifying factors for the purposes of subsection 85(1) or (2), including factors
relating to the introductory price of any medicine to which a patented invention
pertains;
(e) designating a Minister for the purposes of subsection 86(2) or paragraph 87(2)
(a);
(f) defining, for the purposes of sections 88 and 89, the expression research and
development;
(g) requiring fees to be paid before the issue of any certificate referred to in
subsection 98(4) and specifying those fees or the manner of determining those
fees;
(h) requiring or authorizing the Board to perform such duties, in addition to those
provided for in this Act, as are specified in the regulations, including duties to be
performed by the Board in relation to the introductory price of any medicine to
which a patented invention pertains; and
(i) conferring on the Board such powers, in addition to those provided for in this
Act, as will, in the opinion of the Governor in Council, enable the Board to perform
any duties required or authorized to be performed by it by any regulations made
under paragraph (h).
Recommendation
(2) No regulations may be made under paragraph (1)(d), (f), (h) or (i) except on the
recommendation of the Minister, made after the Minister has consulted with the
provincial ministers of the Crown responsible for health and with such
representatives of consumer groups and representatives of the pharmaceutical
industry as the Minister considers appropriate.
1993, c. 2, s. 7.
Meetings with Minister
Meetings with Minister
102 (1) The Minister may at any time convene a meeting of the following persons:
(a) the Chairperson and such members of the Board as the Chairperson may
designate;
(b) the provincial ministers of the Crown responsible for health or such
representatives as they may designate;
(c) such representatives of consumer groups and representatives of the
pharmaceutical industry as the Minister may designate; and
(d) such other persons as the Minister considers appropriate.
Agenda
(2) The participants at a meeting convened under subsection (1) shall consider such
matters in relation to the administration or operation of sections 79 to 101 as the
Minister may determine.
1993, c. 2, s. 7.
Agreements with Provinces
Agreements with provinces
103 The Minister may enter into agreements with any province respecting the
distribution of, and may pay to that province out of the Consolidated Revenue Fund,
amounts received or collected by the Receiver General under section 83 or 84 or in
respect of an undertaking given by a patentee or former patentee that is accepted by
the Board in lieu of holding a hearing or making an order under section 83, less any
costs incurred in relation to the collection and distribution of those amounts.
1993, c. 2, s. 7; 1994, c. 26, s. 55(F); 1999, c. 26, s. 50.
Supplementary Protection for Inventions — Medicinal Ingredients
Interpretation
Definitions
104 The following definitions apply in this section and in sections 105 to 134.
authorization for sale has the meaning assigned by regulations. (autorisation de
mise en marché)
drug means a substance or a mixture of substances manufactured, sold or
represented for use in
(a) the diagnosis, treatment, mitigation or prevention of a disease, disorder or
abnormal physical state, or its symptoms, in human beings or animals; or
(b) restoring, correcting or modifying organic functions in human beings or
animals. (drogue)
Minister means the Minister of Health. (ministre)
2017, c. 6, s. 59.
Interpretation
105 (1) For the purposes of this section and sections 106 to 134, if a patent is
reissued under section 47, it is deemed to have been granted on the day on which
the original patent was granted and its application filing date is deemed to be the day
on which the application for the original patent was filed.
Human and veterinary uses
(2) For the purposes of this section and sections 106 to 134, a medicinal ingredient
or combination of medicinal ingredients contained in a drug authorized for human
use and a medicinal ingredient or combination of medicinal ingredients contained in
a drug authorized for veterinary use are to be treated as different medicinal
ingredients or different combinations of medicinal ingredients, as the case may be.
Same medicinal ingredient — human use
(3) If medicinal ingredients contained in drugs authorized for human use differ from
each other only with respect to a prescribed variation, they are to be treated as the
same medicinal ingredient for the purposes of this section and sections 106 to 134.
Same medicinal ingredient — veterinary use
(4) If medicinal ingredients contained in drugs authorized for veterinary use differ
from each other only with respect to a prescribed variation, they are to be treated as
the same medicinal ingredient for the purposes of this section and sections 106 to
134.
Same combination — human use
(5) If combinations of medicinal ingredients contained in drugs authorized for human
use differ from each other only with respect to a variation in the ratio between those
ingredients, they are to be treated as the same combination of medicinal ingredients
for the purposes of this section and sections 106 to 134.
Same combination — veterinary use
(6) If combinations of medicinal ingredients contained in drugs authorized for
veterinary use differ from each other only with respect to a variation in the ratio
between those ingredients, they are to be treated as the same combination of
medicinal ingredients for the purposes of this section and sections 106 to 134.
2017, c. 6, s. 59.
Application for Certificate of Supplementary Protection
Application
106 (1) On the payment of the prescribed fee, a patentee may apply to the Minister
for a certificate of supplementary protection for a patented invention if all of the
following conditions are met:
(a) the patent is not void and it meets any prescribed requirements;
(b) the filing date for the application for the patent is on or after October 1, 1989;
(c) the patent pertains in the prescribed manner to a medicinal ingredient, or
combination of medicinal ingredients, contained in a drug for which an
authorization for sale of the prescribed kind was issued on or after the day on
which this section comes into force;
(d) the authorization for sale is the first authorization for sale that has been issued
with respect to the medicinal ingredient or the combination of medicinal
ingredients, as the case may be;
(e) no other certificate of supplementary protection has been issued with respect
to the medicinal ingredient or the combination of medicinal ingredients, as the
case may be;
(f) if an application for a marketing approval, equivalent to an authorization for
sale, was submitted in a prescribed country with respect to the medicinal
ingredient or combination of medicinal ingredients, as the case may be, before
the application for the authorization for sale was filed with the Minister, the
application for the authorization for sale was filed before the end of the prescribed
period that begins on the day on which the first such application for a marketing
approval was submitted.
Issuance — paragraph (1)(e)
(2) Another certificate of supplementary protection is considered to have been issued
for the purposes of paragraph (1)(e) even if that other certificate is subsequently held
to be invalid or void or it never takes effect or ceases to have effect.
When application to be filed
(3) An application for a certificate of supplementary protection shall be filed with the
Minister before the end of the prescribed period that begins on
(a) the day on which the authorization for sale is issued, if the patent is granted
on or before that day; or
(b) the day on which the patent is granted, if the patent is granted after the day on
which the authorization for sale is issued.
Exception
(4) Despite subsection (3), no application shall be filed within the prescribed period
preceding the expiry of the term of the patent under section 44 without taking into
account section 46.
Contents of application
(5) An application for a certificate of supplementary protection shall
(a) set out the number, as recorded in the Patent Office, of the patent — as well
as the medicinal ingredient or combination of medicinal ingredients and the
number of the authorization for sale — in relation to which the certificate is
sought;
(b) if paragraph (1)(f) applies with respect to the application, specify the day on
which the first application for a marketing approval that is equivalent to an
authorization for sale was made and the country in which that application was
made; and
(c) set out any prescribed information.
One patent per application
(6) Each application is permitted to set out only one patent.
2017, c. 6, s. 59.
Information to be provided
107 (1) An applicant shall provide the Minister with any additional information that the
Minister considers necessary.
Refusal
(2) Whenever the Minister is satisfied that any of the requirements set out in section
106 are not met with respect to an application for a certificate of supplementary
protection, the Minister may refuse the application. The Minister shall notify the
applicant of a refusal and of the grounds for it.
2017, c. 6, s. 59.
Order of priority — same authorization for sale
108 (1) Subsections (2) to (4) apply in determining the priority of applications for a
certificate of supplementary protection that set out the same authorization for sale.
Patents granted on or before authorization for sale
(2) An application setting out a patent that was granted on or before the day on
which the authorization for sale was issued has the same priority as every other such
application.
Priority over patents granted after authorization for sale
(3) An application setting out a patent that was granted on or before the day on
which the authorization for sale was issued has priority over an application setting
out a patent that is granted after that date.
Patents granted after authorization for sale — priority
(4) Priority among applications setting out patents that were granted after the day on
which the authorization for sale was issued is established according to the date on
which the patent was granted, with an earlier date having priority over a later date
and patents granted on the same date having the same priority.
2017, c. 6, s. 59.
Applications with same authorization for sale and priority
109 If two or more pending applications set out the same authorization for sale and
have the same priority, the Minister shall provide each applicant with a written notice
setting out the name and contact information of all the applicants, as well as the
number, as recorded in the Patent Office, of the patent set out in each application.
2017, c. 6, s. 59.
Declaration of non-compliance
110 (1) A pending application for a certificate of supplementary protection may be
declared invalid or void by the Federal Court for non-compliance with section 106 at
the instance of another applicant whose application for a certificate sets out the
same authorization for sale and the same priority.
Limitation
(2) A proceeding to obtain a declaration under subsection (1) shall be commenced
before the end of the prescribed period that begins on the day that is specified by the
Minister in the written notice sent under section 109.
Copy to Minister
(3) Anyone who commences such a proceeding, or an appeal or application for leave
to appeal with respect to such a proceeding, shall provide the Minister with a copy of
(a) any document that commences the proceeding, appeal or application,
immediately after the document is filed with the court; and
(b) any document that marks the end of the proceeding, appeal or application,
immediately after the document is issued by or filed with the court.
2017, c. 6, s. 59.
Expiry of pending applications
111 (1) If two or more applications that set out the same authorization for sale and
have the same priority are still pending at the end of the prescribed period that
begins on the day specified in the written notice sent under section 109, all of those
applications expire at that end of that period. However, if any proceedings are
brought under section 110 with respect to any of those applications, all of those
applications — if two or more are still pending — expire at the end of the prescribed
period that begins on the day on which the last of any of the proceedings to be
completed is finally disposed of.
Expiry of application with lower priority
(2) A pending application that sets out the same authorization for sale as another
application of higher priority expires on the day on which the Minister issues a
certificate of supplementary protection in respect of that other application.
2017, c. 6, s. 59.
Withdrawal
112 An applicant for a certificate of supplementary protection may withdraw their
application in accordance with the regulations.
2017, c. 6, s. 59.
Certificate of Supplementary Protection
Issue of certificate
113 The Minister shall issue, to the patentee, a certificate of supplementary
protection for the patented invention set out in the patentee’s application if, on the
day of issuance,
(a) the Minister is satisfied that all requirements set out in section 106 are met;
(b) the applicable period referred to in subsection 106(3) for filing the application
has ended;
(c) there is no other pending application that sets out the same authorization for
sale and that has priority over, or the same priority as, the application; and
(d) any court proceedings, brought under section 110 with respect to the
application or to another pending application that sets out the same authorization
for sale and that has priority over, or the same priority as, the application, have
been finally disposed of.
2017, c. 6, s. 59.
Contents of certificate
114 A certificate of supplementary protection shall set out
(a) the number, as recorded in the Patent Office, of the patent set out in the
application;
(b) the medicinal ingredient or combination of medicinal ingredients set out in the
application;
(c) a statement as to whether the certificate relates to use in humans or to
veterinary use;
(d) the number of the authorization for sale set out in the application; and
(e) the day on which the certificate’s term begins and the day on which the term
ends, as determined under section 116.
2017, c. 6, s. 59.
Scope of supplementary protection
115 (1) The issuance of a certificate of supplementary protection grants the
certificate’s holder and their legal representatives, during the certificate’s term, the
same rights, privileges and liberties that are granted by the patent set out in the
certificate, but only with respect to the making, constructing, using and selling of any
drug that contains the medicinal ingredient, or combination of medicinal ingredients,
set out in the certificate, by itself or in addition to any other medicinal ingredient.
No infringement — export
(2) Despite subsection (1), it is not an infringement of the certificate of supplementary
protection for any person to make, construct, use or sell the medicinal ingredient or
combination of medicinal ingredients for the purpose of export from Canada.
2017, c. 6, s. 59.
Validity
116 (1) After the certificate is issued, it shall, in the absence of any evidence to the
contrary, be valid and avail the holder and the holder’s legal representatives for its
term.
Taking effect
(2) A certificate of supplementary protection takes effect on the expiry of the term
under section 44, without taking into account section 46, of the patent set out in the
certificate, but the certificate takes effect only if the patent remains valid until, and not
void before, the expiry of that term.
Calculation of term
(3) The certificate’s term is calculated by subtracting five years from the period
beginning on the filing date of the application for the patent and ending on the day on
which the authorization for sale set out in the certificate is issued, but in any event is
for a maximum of two years.
Reduction in period
(4) Despite subsection (3), if the person to whom the authorization for sale set out in
the certificate is issued is also the patentee, the Minister may, if he or she is of the
opinion that that person’s failure to act resulted in a period of unjustified delay in the
process of obtaining the authorization for sale, reduce the term of the certificate
when issuing it by the amount of that period.
Never takes effect
(5) A certificate of supplementary protection that has been issued never takes effect
if the calculation of its term, including any reduction under subsection (3), produces a
result of zero or a negative value.
2017, c. 6, s. 59.
Revocation of certificate
117 The Minister shall revoke a certificate of supplementary protection in the
prescribed circumstances.
2017, c. 6, s. 59.
Transfer
Transfer of patent
118 (1) A certificate of supplementary protection, or an application for one, is not
transferable other than by the transfer of the patent, or part of the patent, that is set
out in the certificate or application.
Whole of patent
(2) If the whole of the patent is transferred, the certificate or application is transferred
accordingly.
Part of patent
(3) If part of the patent is transferred, any part of the certificate or application —
including, as the case may be, the whole of it — that corresponds to the transferred
part of the patent is transferred accordingly.
For greater certainty
(4) For greater certainty, the transfer of part of an application for a certificate of
supplementary protection does not result in its division into more than one
application.
2017, c. 6, s. 59.
Administrative Matters
Applications, fees and documents
119 Applications, fees and documents relating to certificates of supplementary
protection shall be submitted to the Minister.
2017, c. 6, s. 59.
Inspection by public
120 (1) The Minister shall ensure that the prescribed contents of all certificates of
supplementary protection and applications for a certificate are made available for
public inspection under the conditions that may be prescribed.
Non-application
(2) Subsection (1) does not apply with respect to the contents of applications for a
certificate that are refused, declared invalid or void, expired or withdrawn.
2017, c. 6, s. 59.
Copy in case of loss or destruction
121 The Minister may issue a certified copy of a certificate of supplementary
protection to replace one that is lost or destroyed.
2017, c. 6, s. 59.
Issuance of patent under section 47
122 (1) If a patent set out in a certificate of supplementary protection or in a pending
application for such a certificate is surrendered, and a new patent is issued, under
section 47, the holder of the certificate or the applicant shall, before the end of the
prescribed period that begins on the day on which the new patent is issued, provide
the Minister with written notice of the number, as recorded in the Patent Office, of the
new patent to which the certificate or application relates.
One patent
(2) If more than one new patent is issued under section 47, the holder of the
certificate or the applicant shall provide the number for only one of the new patents.
New certificate
(3) If notice is provided under subsection (1) by a holder of a certificate, the Minister
shall issue a new certificate of supplementary protection, setting out the new patent
number, to replace the original certificate. The new certificate’s term is the then
unexpired term of the original certificate.
Effect of new certificate
(4) The new certificate is deemed to have been issued on the day on which the new
patent is issued. The original certificate and the new certificate have the same effect
in law, in any action commenced after the issuance of the new certificate for any
cause accruing after that issuance, as if the new patent had been set out in the
original certificate; however, insofar as the claims of the new patent and the original
patent are identical, the issuance of the new certificate does not affect any action
pending at the time of the issuance of the new certificate or abate any cause of
action that existed at that time and the new certificate constitutes a continuation of
the original certificate and has effect accordingly.
Application
(5) If notice is provided under subsection (1) by an applicant for a pending
application, the Minister shall
(a) amend the application to set out the new patent number; and
(b) provide written notice of the amendment to any other applicant referred to in
section 109 with respect to the application.
Effect of amendment to application
(6) The amended application has the same effect, for the purposes of sections 106 to
113, as if the pending application had been originally filed in its amended form.
2017, c. 6, s. 59.
Use of Certificates of Supplementary Protection by Government
Application
123 Sections 19 to 19.2 apply with respect to certificates of supplementary
protection, with
(a) any reference to “patented invention” to be read, with any grammatical
adaptations, as a reference to “invention protected by a certificate of
supplementary protection”; and
(b) any reference to “patentee” to be read as a reference to “holder of the
certificate of supplementary protection”.
2017, c. 6, s. 59.
Legal Proceedings in Respect of Certificates of Supplementary Protection
Admissible in evidence
123.1 A written communication, or any part of such a communication, that is
admissible under section 53.1 in respect of a patent set out in a certificate of
supplementary protection may be admitted into evidence to any action or proceeding
respecting the certificate of supplementary protection to rebut any representation
made by the holder of the certificate of supplementary protection in the action or
proceeding as to the construction of a claim in the patent set out in the certificate of
supplementary protection.
2018, c. 27, s. 197.
Infringement and Impeachment
Action for infringement
124 (1) An action for the infringement of a certificate of supplementary protection
may be brought in the same manner as an action for the infringement of a patent,
and the following provisions apply to the action:
(a) sections 54, 57 and 59, with any reference to “patent” to be read as a
reference to “certificate of supplementary protection”;
(b) subsection 55(1), and subsection 55(3) as it applies to that subsection (1),
with any reference to “patent” to be read as a reference to “certificate of
supplementary protection”, any reference to “patentee” to be read as a reference
to “holder of the certificate of supplementary protection” and any reference to
“grant” to be read as a reference to “taking of effect”;
(c) section 55.01;
(d) section 55.1, with any reference to “patent” to be read as a reference to
“certificate of supplementary protection” and any reference to “patented process”
to be read as a reference to “process protected by the certificate of
supplementary protection”;
(e) subsections 55.2(1) and (6), with any reference to “patent” to be read as a
reference to “certificate of supplementary protection” and any reference to
“patented invention” to be read as a reference to “invention protected by the
certificate of supplementary protection”;
(f) subsection 55.3(1), with any reference to “patent” to be read as a reference to
“certificate of supplementary protection”;
(g) section 58, with the reference to “a patent that contains two or more claims” to
be read as a reference to a “two or more claims in a patent that is set out in a
certificate of supplementary protection” and with the reference to “the patent as if
it” to be read as a reference to “the certificate as if the patent set out in it”.
Regulations — subsection 55.2(4)
(2) The Governor in Council may make regulations respecting the infringement of
any certificate of supplementary protection that, directly or indirectly, could result or
results from the making, construction, use or sale of a patented invention or invention
protected by a certificate of supplementary protection in accordance with subsection
55.2(1), including regulations described in paragraphs 55.2(4)(a) to (k), with
(a) any reference in those paragraphs to a “patent” to be read as a reference to a
“certificate of supplementary protection”; and
(b) the reference in paragraph 55.2(4)(k) to “subsection 60(1)” to be read as a
reference to “subsection 125(1)”.
Inconsistency or conflict
(3) In the event of an inconsistency or conflict between regulations made under
subsection (2) and any Act of Parliament or regulations made under such an Act, the
regulations made under subsection (2) prevail to the extent of the inconsistency or
conflict.
2017, c. 6, s. 59; 2018, c. 27, s. 198.
Impeachment
125 (1) A certificate of supplementary protection, or any claim in the patent set out in
such a certificate, may be declared invalid or void — including on the basis that the
certificate was issued despite non-compliance with any of the requirements, as they
existed at the time that the certificate was issued, of subsection 106(1) or that the
patent set out in the certificate no longer complies with the requirements, as they
existed at that time, set out in paragraph 106(1)(c) — by the Federal Court at the
instance of the Attorney General of Canada or any interested person.
Application
(2) Subsections 60(2) and (3) apply with respect to a certificate of supplementary
protection, with any reference to “patentee” to be read as a reference to “holder of a
certificate of supplementary protection” and any reference to “patent” to be read as a
reference to “certificate of supplementary protection”.
2017, c. 6, s. 59.
Judgment voiding certificate or claim
126 (1) A certificate of supplementary protection, or a claim in the patent set out in
such a certificate, that is voided by a judgment shall be and be held to have been
void and of no effect, unless the judgment is reversed on appeal as provided in
subsection (2).
Appeal
(2) Every judgment voiding a certificate of supplementary protection or any claim in
the patent set out in such a certificate, and every judgment refusing to do so, is
subject to appeal to any court having appellate jurisdiction in other cases decided by
the court by which the judgment was rendered.
2017, c. 6, s. 59.
Abuse of Rights
Abuse of patent rights
127 (1) The Commissioner may, in respect of application under section 65, exercise
any of the powers under any of paragraphs 66(1)(a), (d) and (e) with respect to an
issued certificate of supplementary protection if he or she is satisfied that a case of
abuse of the exclusive rights under the patent that is set out in the certificate has
been established.
Abuse — application to Commissioner
(2) The Attorney General of Canada or an interested person may, at any time after a
certificate of supplementary protection takes effect and after the expiry of three years
from the date of the grant of the patent set out in the certificate, apply to the
Commissioner alleging that there has been an abuse of the exclusive rights granted
under a certificate of supplementary protection issued with respect to that patent and
asking for relief under this Act.
What amounts to abuse
(3) The exclusive rights under a certificate of supplementary protection are abused in
any of the following circumstances:
(a) the demand in Canada for a drug that contains the medicinal ingredient or a
combination of the medicinal ingredients set out in the certificate is not being met
to an adequate extent and on reasonable terms;
(b) by reason of the refusal of the certificate’s holder to grant a licence or licences
on reasonable terms, the trade or industry of Canada or the trade of any person
or class of persons trading in Canada, or the establishment of any new trade or
industry in Canada, is prejudiced, and it is in the public interest that a licence or
licences should be granted;
(c) any trade or industry in Canada, or any person or class of persons engaged in
such a trade or industry, is unfairly prejudiced by the conditions attached by the
certificate’s holder to the purchase, hire, licence, use or working of the invention
protected by the certificate.
2017, c. 6, s. 59.
Provisions that apply
128 Sections 66 to 71, other than paragraph 66(1)(c), apply for the purposes of
section 127, with
(a) any reference to “patent”, other than with respect to the Patent Office, to be
read as a reference to “certificate of supplementary protection”;
(b) any reference to “patentee” to be read as a reference to “holder of the
certificate of supplementary protection”;
(c) any reference in paragraphs 66(1)(d) and (e) and subsection 68(1) to “section
65” to be read as a reference to “section 127”;
(d) any reference in subsection 69(1) or section 71 to “sections 65 to 70” to be
read as a reference to “sections 66 to 70 and 127”; and
(e) the reference in subsection 69(3) to “the Minister” to be read as a reference to
“the Minister of Industry”.
2017, c. 6, s. 59.
General
Electronic form and means
129 (1) Subject to the regulations, any document, information or fee that is submitted
to the Minister under this Act may be submitted in any electronic form, and by any
electronic means, that is specified by the Minister.
Collection, storage, etc.
(2) Subject to the regulations, the Minister may use electronic means to create,
collect, receive, store, transfer, distribute, publish, certify or otherwise deal with
documents or information under sections 106 to 134.
Definition
(3) In this section, electronic, in reference to a form or means, includes optical,
magnetic and other similar forms or means.
2017, c. 6, s. 59.
Certified copies as evidence
130 In any action or proceeding respecting a certificate of supplementary protection
authorized to be had or taken in Canada under this Act, a copy purporting to be
certified by the Minister of any such certificate, or of any other document that is made
by or filed with the Minister and is connected to such a certificate, may be produced
before the court or other tribunal, or a judge or member of the court or tribunal, and
the copy purporting to be so certified may be admitted in evidence without production
of the original and without proof of the Minister’s certification.
2017, c. 6, s. 59.
Costs of proceedings
131 In all proceedings before any court under this Act, including, for greater
certainty, an application for judicial review of a decision of the Minister under this Act,
the costs of the Minister are in the discretion of the court, but the Minister shall not be
ordered to pay the costs of any other of the parties.
2017, c. 6, s. 59.
Time limit deemed extended
132 (1) If any time period fixed under any of sections 106 to 134 in respect of
dealings with the Minister ends on a prescribed day or a day that is designated by
the Minister, that time period is extended to the next day that is not a prescribed day
or a designated day.
Power to designate day
(2) The Minister may, on account of unforeseen circumstances and if the Minister is
satisfied that it is in the public interest to do so, designate any day for the purposes
of subsection (1). If a day is designated, the Minister shall inform the public of that
fact on the Department of Health’s website.
2017, c. 6, s. 59.
Service Fees Act
133 The Service Fees Act does not apply in respect of the fees referred to in section
106 or 134.
2017, c. 6, s. 59, c. 20, s. 455.
Regulations
134 (1) The Governor in Council may make rules or regulations
(a) defining the term authorization for sale;
(b) respecting the form and contents of applications for certificates of
supplementary protection;
(c) respecting the processing of such applications;
(d) respecting the determination of when, for the purpose of paragraph 106(1)(f),
an application for an authorization for sale was filed and, for the purpose of
subsection 106(3), an application for a certificate of supplementary protection is
filed;
(e) prescribing the fees or the manner of determining the fees that may be
charged in respect of the filing of applications for certificates of supplementary
protection, the issuance of such certificates or the taking of other proceedings
under sections 106 to 133 or under any rule or regulation made under this
section, or in respect of any services or the use of any facilities provided by the
Minister under those sections or such a rule or regulation;
(f) respecting the circumstances in which any patentee or holder of a certificate of
supplementary protection may or must be represented by another person in
respect of a certificate of supplementary protection or an application for such a
certificate;
(g) respecting the submission, including in electronic form and by electronic
means, of documents and information to the Minister, including the time at which
they are deemed to be received by the Minister;
(h) respecting the use of electronic means for the purposes of subsection 129(2),
including requiring the use of those electronic means;
(i) respecting the withdrawal of an application for a certificate of supplementary
protection;
(j) respecting communications between the Minister and any other person;
(k) respecting the correction of obvious errors in documents submitted to the
Minister, in certificates of supplementary protection or in other documents issued
under sections 106 to 133, including
(i) the determination by the Minister of what constitutes an obvious error, and
(ii) the effect of the correction; and
(l) generally, for carrying into effect the objects and purposes of sections 104 to
133 or for ensuring their due administration by the Minister.
For greater certainty
(2) For greater certainty, the Governor in Council may make rules or regulations
under paragraphs 12(1)(d), (g), (h) and (k) for the purposes of this section and
sections 104 to 133.
2017, c. 6, s. 59; 2018, c. 27, s. 199(E).
SCHEDULE 1
(Definition “pharmaceutical product” in section 21.02 and paragraph 21.03(1) (a))
abacavir (ABC) tablet, 300 mg (as sulfate); oral solution, 100 mg (as sulfate)/5 mL
abacavir + lamivudine + tablet, 300 mg (as sulfate) + 150 mg + 300 mg
zidovudine
aciclovir tablet, 200 mg; powder for injection, 250 mg (as sodium salt) in vial
amphotericin B powder for injection, 50 mg in vial
amprenavir tablet, 150 mg; capsule, 50 mg or 150 mg; oral solution, 15 mg/mL
azithromycin capsule, 250 mg or 500 mg; suspension, 200 mg/5 mL
beclometasone inhalation (aerosol), 50 micrograms per dose (dipropionate) or 250
micrograms (dipropionate) per dose
ceftazidime powder for injection, 250 mg (as pentahydrate) in vial
ceftriaxone injection, 500 mg (as sodium); powder for injection, 250 mg (as sodium salt)
in vial
ciclosporin capsule, 25 mg; concentrate for injection, 50 mg/mL in 1-mL ampoule (for
organ transplantation)
ciprofloxacin tablet, 250 mg (as hydrochloride)
ciprofloxacin tablet, 250 mg or 500 mg
daunorubicin powder for injection, 50 mg (as hydrochloride) in vial
delavirdine capsule or tablet, 100 mg (as mesylate)
didanosine (ddI) buffered chewable, dispersible tablet, 25 mg, 50 mg, 100 mg, 150 mg, 200
mg; buffered powder for oral solution, 100 mg, 167 mg, 250 mg, packets;
unbuffered enteric coated capsule, 125 mg, 200 mg, 250 mg, 400 mg
diphtheria antitoxin injection, 10 000 IU or 20 000 IU in vial
doxorubicin
efavirenz (EFV or EFZ)
efavirenz + emtricitabine +
tenofovir disoproxil
eflornithine
emtricitabine + tenofovir
disoproxil
diphtheria vaccine
enalapril
erythromycin
etoposide
factor IX (complex
coagulation factors II, VII,
IX, X) concentrate
hepatitis B vaccine
ibuprofen
indinavir (IDV)
insulin injection (soluble)
intermediate-acting insulin
isoniazid + pyrazinamide +
rifampin
ivermectin
lamivudine (3TC)
lamivudine + nevirapine +
zidovudine
lamivudine + zidovudine
levodopa + carbidopa
levofloxacin
lithium carbonate
lopinavir + ritonavir (LPV/r)
metoclopramide
metronidazole
morphine
nelfinavir (NFV)
nevirapine (NVP)
powder for injection, 10 mg or 50 mg (hydrochloride) in vial
capsule, 50 mg, 100 mg or 200 mg; oral solution, 150 mg/5 mL
tablet, 600 mg + 200 mg + 300 mg
injection, 200 mg (hydrochloride)/mL in 100-mL bottles
tablet, 200 mg + 300 mg
tablet, 2.5 mg
capsule or tablet, 250 mg (as stearate or ethyl succinate); powder for oral
suspension, 125 mg (as stearate or ethyl succinate); powder for injection,
500 mg (as lactobionate) in vial
capsule, 100 mg; injection, 20 mg/mL in 5-mL ampoule
dried
tablet, 200 mg or 400 mg
capsule, 200 mg, 333 mg or 400 mg (as sulfate)
injection, 40 IU/mL in 10-mL vial or 100 IU/mL in 10-mL vial
injection, 40 IU/mL in 10-mL vial; 100 IU/mL in 10-mL vial (as compound
insulin zinc suspension or isophane insulin)
tablet, 50 mg + 300 mg + 120 mg
scored tablet, 3 mg or 6 mg
capsule or tablet, 150 mg; oral solution 50 mg/5 mL
tablet, 150 mg + 200 mg + 300 mg
tablet, 150 mg + 300 mg
tablet, 100 mg + 10 mg or 250 mg + 25 mg
tablet, 250 mg or 500 mg
capsule or tablet, 300 mg
capsule, 133.3 mg + 33.3 mg; oral solution, 400 mg + 100 mg/5 mL
tablet, 10 mg (hydrochloride); injection, 5 mg (hydrochloride)/mL in 2-mL
ampoule
tablet, 250 mg or 500 mg; injection, 500 mg in 100-mL vial; suppository, 500
mg or 1 g; oral suspension, 200 mg (as benzoate)/5 mL
injection, 10 mg in 1-mL ampoule (sulfate or hydrochloride); oral solution, 10
mg (hydrochloride or sulfate)/5 mL; tablet, 10 mg (sulfate)
tablet, 250 mg (as mesilate); oral powder, 50 mg/g
tablet, 200 mg; oral suspension, 50 mg/5 mL
nifedipine sustained release formulations, tablet, 10 mg
nitrofurantoin tablet, 100 mg
ofloxacin tablet, 200 mg or 400 mg
oseltamivir phosphate capsule, 75 mg; powder for oral suspension, 12 mg/mL
potassium chloride powder for solution
ranitidine tablet, 150 mg (as hydrochloride); oral solution, 75 mg/5 mL; injection, 25
mg/mL in 2-mL ampoule
ritonavir capsule, 100 mg; oral solution, 400 mg/5 mL
salbutamol tablet, 2 mg or 4 mg (as sulfate); inhalation (aerosol), 100 micrograms (as
sulfate) per dose; syrup, 2 mg/5 mL; injection, 50 micrograms (as sulfate)/mL
in 5-mL ampoule; respirator solution for use in nebulizers, 5 mg (as
sulfate)/mL
saquinavir (SQV) capsule, 200 mg
stavudine (d4T) capsule, 15 mg, 20 mg, 30 mg or 40 mg; powder for oral solution, 5 mg/5 mL
tenofovir disoproxil tablet, 300 mg
testosterone injection, 200 mg (enantate) in 1-mL ampoule
timolol solution (eye drops), 0.25% or 0.5% (as maleate)
verapamil tablet, 40 mg or 80 mg (hydrochloride); injection, 2.5 mg (hydrochloride)/mL
in 2-mL ampoule
zalcitabine capsule or tablet, 0.375 mg or 0.750 mg
zidovudine (ZDV or AZT) tablet, 300 mg; capsule, 100 mg or 250 mg; oral solution or syrup, 50 mg/5
mL; solution for IV infusion injection, 10 mg/mL in 20-mL vial
2004, c. 23, Sch. 1; SOR/2005-276; SOR/2006-204; SOR/2015-154.
SCHEDULE 2
(Paragraph 21.03(1)(b))
Afghanistan
Afghanistan
Angola
Angola
Bangladesh
Bangladesh
Benin
Bénin
Bhutan
Bhoutan
Burkina Faso
Burkina Faso
Burundi
Burundi
Cambodia
Cambodge
Cape Verde
Cap-Vert
Central African Republic
République centrafricaine
Chad
Tchad
Comoros
Comores
Democratic Republic of the Congo
République démocratique du Congo
Djibouti
Djibouti
Equatorial Guinea
Guinée équatoriale
Eritrea
Érythrée
Ethiopia
Éthiopie
Gambia
Gambie
Guinea
Guinée
Guinea-Bissau
Guinée-Bissau
Haiti
Haïti
Kiribati
Kiribati
Lao People’s Democratic Republic
République démocratique populaire lao
Lesotho
Lesotho
Liberia
Libéria
Madagascar
Madagascar
Malawi
Malawi
Maldives
Maldives
Mali
Mali
Mauritania
Mauritanie
Mozambique
Mozambique
Myanmar
Myanmar
Nepal
Népal
Niger
Niger
Rwanda
Rwanda
Samoa
Samoa
Sao Tome and Principe
Sao Tomé-et-Principe
Senegal
Sénégal
Sierra Leone
Sierra Leone
Solomon Islands
Îles Salomon
Somalia
Somalie
Sudan
Soudan
Timor-Leste
Timor-Leste
Togo
Togo
Tuvalu
Tuvalu
Uganda
Ouganda
United Republic of Tanzania
République-Unie de Tanzanie
Vanuatu
Vanuatu
Yemen
Yémen
Zambia
Zambie
2004, c. 23, Sch. 2.
SCHEDULE 3
(Paragraph 21.03(1)(c))
Albania
Albanie
Antigua and Barbuda
Antigua-et-Barbuda
Argentina
Argentine
Armenia
Arménie
Bahrain, Kingdom of
Bahreïn, Royaume de
Barbados
Barbade
Belize
Belize
Bolivia
Bolivie
Botswana
Botswana
Brazil
Brésil
Brunei Darussalam
Brunéi Darussalam
Bulgaria
Bulgarie
Cameroon
Cameroun
Chile
Chili
China
Chine
Colombia
Colombie
Congo
Congo
Costa Rica
Costa Rica
Côte d’Ivoire
Côte d’Ivoire
Croatia
Croatie
Cuba
Cuba
Dominica
Dominique
Dominican Republic
République dominicaine
Ecuador
Équateur
Egypt
Égypte
El Salvador
El Salvador
Fiji
Fidji
Former Yugoslav Republic of Macedonia
Ex-République yougoslave de Macédoine
Gabon
Gabon
Georgia
Géorgie
Ghana
Ghana
Grenada
Grenade
Guatemala
Guatemala
Guyana
Guyana
Honduras
Honduras
India
Inde
Indonesia
Indonésie
Jamaica
Jamaïque
Jordan
Jordanie
Kenya
Kenya
Kyrgyz Republic
République kirghize
Liechtenstein
Liechtenstein
Malaysia
Malaisie
Mauritius
Maurice
Moldova
Moldova
Mongolia
Mongolie
Morocco
Maroc
Namibia
Namibie
Nicaragua
Nicaragua
Nigeria
Nigéria
Oman
Oman
Pakistan
Pakistan
Panama
Panama
Papua New Guinea
Papouasie-Nouvelle-Guinée
Paraguay
Paraguay
Peru
Pérou
Philippines
Philippines
Romania
Roumanie
Saint Kitts and Nevis
Saint-Kitts-et-Nevis
Saint Lucia
Sainte-Lucie
Saint Vincent and the Grenadines
Saint-Vincent-et-les-Grenadines
South Africa
Afrique du Sud
Sri Lanka
Sri Lanka
Suriname
Suriname
Swaziland
Swaziland
Thailand
Thaïlande
Trinidad and Tobago
Trinité-et-Tobago
Tunisia
Tunisie
Uruguay
Uruguay
Venezuela
Venezuela
Zimbabwe
Zimbabwe
2004, c. 23, Sch. 3.
SCHEDULE 4
(Paragraph 21.03(1)(d))
Cyprus
Chypre
Czech Republic
République tchèque
Estonia
Estonie
Hong Kong, China
Hong Kong, Chine
Hungary
Hongrie
Israel
Israël
Korea
Corée
Kuwait
Koweït
Latvia
Lettonie
Lithuania
Lituanie
Macao, China
Macao, Chine
Malta
Malte
Mexico
Mexique
Poland
Pologne
Qatar
Qatar
Singapore
Singapour
Slovak Republic
République slovaque
Slovenia
Slovénie
Chinese Taipei
Taipei chinois
Turkey
Turquie
United Arab Emirates
Émirats arabes unis
2004, c. 23, Sch. 4.
RELATED PROVISIONS
— R.S., 1985, c. 33 (3rd Supp.), s. 31, as amended by 1992, c. 1, s. 145(F) (Sch. VIII,
item 22)
Payments to provinces
31 (1) The Minister of Consumer and Corporate Affairs shall pay to each province for each
of the fiscal years commencing in the period April 1, 1987 to March 31, 1991, for the
purpose of research and development relating to medicine, an amount equal to the
product obtained by multiplying
(a) the quotient obtained by dividing
(i) twenty-five million dollars
by
(ii) the total population of all provinces for the fiscal year in respect of which the
payment is made,
by
(b) the population of the province for the fiscal year in respect of which the payment is
made.
Time and manner of payment
(2) Payment of any amount under this section shall be made out of the Consolidated
Revenue Fund at such times and in such manner as the Governor in Council may, by
regulation, prescribe.
Determination of population
(3) For the purposes of this section, the population of a province for a fiscal year shall be
the population of that province on June 1 of that year as determined and published by the
Chief Statistician of Canada.
— R.S., 1985, c. 33 (3rd Supp.), s. 32, as amended by 1992, c. 1, s. 145(F) (Sch. VIII,
item 22)
Prohibition
32 (1) Notwithstanding anything in section 39 of the Patent Act or in any licence granted
under that section, no person shall, under a licence granted prior to March 28, 1989 under
that section in respect of a patent pertaining to the medicine Diltiazem hydrochloride, have
or exercise any right to
(a) import Diltiazem hydrochloride, if it is to be sold for consumption in Canada; or
(b) make Diltiazem hydrochloride for sale for consumption in Canada.
Duration of prohibition
(2) The prohibition under subsection (1) expires on March 28, 1989.
Actions and proceedings barred
(3) No action or proceedings for any compensation or damages lie against Her Majesty in
right of Canada as a result of the application of subsection (1) to a licence referred to in
that subsection.
— 1993, c. 2, s. 9
Definitions
9 In this section and sections 10 to 13,
commencement day means the day on which section 3 of this Act comes into force;
(date d’entrée en vigueur)
former Act means the Patent Act, as it read immediately before the commencement day.
(loi antérieure)
— 1993, c. 2, s. 10
Pending proceedings
10 Any proceeding pending before the Patented Medicine Prices Review Board
immediately before the commencement day shall be taken up and continued under and in
accordance with sections 79 to 101 of the Patent Act, as enacted by section 7 of this Act,
as if the proceeding had been commenced on or after that day.
— 1993, c. 2, s. 11
Licences continued
11 (1) A licence that has been granted under section 39 of the former Act before
December 20, 1991 and that has not been terminated before the commencement day shall
continue in effect according to its terms and, subject to subsection (2), sections 39 to
39.14 of the former Act shall continue to apply in respect of that licence as if they had not
been repealed by section 3 of this Act.
Exception
(2) For the purposes of applying sections 39 to 39.14 of the former Act in respect of a
licence continued by subsection (1), the prohibitions set out in subsections 39.11(1) and
39.14(1) of the former Act do not apply in respect of any medicine or medicines in respect
of which an order has been made under paragraph 39.15(3)(d) of the former Act, if that
order is in force immediately before the commencement day.
— 1993, c. 2, s. 12
Licences ceasing to have effect
12 (1) Every licence granted under section 39 of the former Act on or after December 20,
1991 shall cease to have effect on the expiration of the day preceding the commencement
day, and all rights or privileges acquired or accrued under that licence or under the former
Act in relation to that licence shall thereupon be extinguished.
Actions for infringement barred
(2) For greater certainty, no action for infringement of a patent lies under the Patent Act in
respect of any act that is done before the commencement day under a licence referred to
in subsection (1) in accordance with the terms of that licence and sections 39 to 39.17 of
the former Act.
— 1993, c. 2, s. 13
Actions and proceedings barred
13 No action or proceeding for any compensation or damages lies against Her Majesty in
right of Canada in respect of any direct or indirect consequence resulting from the
application of section 11 or 12 or the repeal of sections 39 to 39.17 of the former Act.
— 1993, c. 2, s. 14
Review of certain sections
14 (1) On the expiration of four years after this Act is assented to, the provisions of the
Patent Act enacted by this Act shall be referred to such committee of the House of
Commons, of the Senate or of both Houses of Parliament as may be designated or
established for the purpose of the review referred to in subsection (2).
Idem
(2) The committee shall undertake a comprehensive review of the provisions of the Patent
Act enacted by this Act and shall, within one year after the review is undertaken or within
such further time as the House or Houses that designated or established the committee
may authorize, submit a report thereon, including such recommendations as the
committee may wish to make pertaining to those provisions.
— 1993, c. 44, s. 191(2)
No liability
191 (2) Her Majesty in right of Canada or a province is not, by reason only of the
enactment of subsection (1), liable for any use of a patented invention before the day on
which subsection (1) comes into force.
— 2018, c. 27, s. 200
Section 52.1 of Patent Act
200 Section 52.1 of the Patent Act applies in respect of any action or proceeding that has
not been finally disposed of on the coming into force of that section.
— 2018, c. 27, s. 201
Sections 53.1 and 123.1 of Patent Act
201 Sections 53.1 and 123.1 of the Patent Act apply in respect of any action or proceeding
that has not been finally disposed of on the coming into force of that section 53.1.
— 2018, c. 27, s. 202
Section 55.3 of Patent Act
202 Section 55.3 and paragraph 124(1)(f) of the Patent Act apply in respect of any action
or proceeding that has not been finally disposed of on the coming into force of that section
55.3.
— 2018, c. 27, s. 203
Section 56 of Patent Act
203 (1) Section 56 of the Patent Act, as enacted by section 194 of this Act, applies only in
respect of an action or proceeding in respect of a patent issued on the basis of an
application whose filing date is on or after October 1, 1989 that is commenced on or after
October 29, 2018.
Section 56 — previous version
(2) Section 56 of the Patent Act, as it read immediately before the coming into force of
section 194 of this Act, applies in respect of any action or proceeding that is in respect of a
patent issued on the basis of an application whose filing date is on or after October 1,
1989 and that is commenced before October 29, 2018.
AMENDMENTS NOT IN FORCE
— 2014, c. 39, s. 114, as amended by 2017, c. 6, s. 135(2)
114 The definition filing date in section 2 of the Patent Act is replaced by the
following:
filing date means the date on which an application for a patent in Canada is filed, as
determined in accordance with section 28 or subsection 28.01(2) or 36(4); (date de dépôt)
— 2014, c. 39, s. 115
115 Subsection 4(2) of the Act is replaced by the following:
Duties of Commissioner
(2) The Commissioner shall receive all applications, fees, and documents relating to
patents, shall perform and do all acts and things requisite for the granting and issuing of
patents, shall have the charge and custody of the books, records and other things
belonging to the Patent Office and shall have, for the purposes of this Act, all the powers
that are or may be given by the Inquiries Act to a commissioner appointed under Part II of
that Act.
— 2014, c. 39, s. 117
1993, c. 15, s. 27
117 Sections 8.1 and 8.2 of the Act are replaced by the following:
Electronic form and means
8.1 (1) Subject to the regulations, any document, information or fee that is submitted to the
Commissioner or the Patent Office under this Act may be submitted in any electronic form,
and by any electronic means, that is specified by the Commissioner.
Collection, storage, etc.
(2) Subject to the regulations, the Commissioner and the Patent Office may use electronic
means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise
deal with documents or information or to seal a patent or other document.
Definition of electronic
(3) In this section, electronic, in reference to a form or means, includes optical, magnetic
and other similar forms or means.
— 2014, c. 39, s. 118, as amended by 2018, c. 27, s. 204
118 (1) Subsection 12(1) of the Act is amended by adding the following after
paragraph (a):
(a.1) defining drawing for the purposes of this Act and respecting the circumstances in
which certain drawings may be furnished as part of applications for patents;
(a.2) respecting abstracts in applications for patents, including authorizing the
Commissioner to amend or replace abstracts;
(a.3) respecting the consequences of a failure to comply with a notice given under
subsection 27(7);
(a.4) respecting the processing and examination of applications for patents;
R.S., c. 33 (3rd Supp.), s. 3
(2) Paragraph 12(1)(c) of the Act is replaced by the following:
(c) respecting the registration of transmissions, disclaimers, judgments or other
documents relating to a patent or an application for a patent;
(c.1) respecting the recording of transfers of patents or applications for patents;
(3) Subsection 12(1) of the Act is amended by adding the following after paragraph
(i):
(i.1) for carrying into effect the Patent Law Treaty, done at Geneva on June 1, 2000,
including any amendments and revisions made from time to time to which Canada is a
party;
1993, c. 15, s. 29(2)
(4) Paragraphs 12(1)(j.1) to (j.5) of the Act are replaced by the following:
(j.01) respecting the circumstances in which an applicant, patentee or other person
may or must be represented by a patent agent or other person in business before the
Patent Office;
(j.1) respecting the submission, including in electronic form and by electronic means, of
documents and information to the Commissioner or the Patent Office, including the
time at which they are deemed to be received by the Commissioner or the Patent
Office;
(j.2) respecting the use of electronic means for the purposes of subsection 8.1(2);
(j.3) respecting the withdrawal of an application for a patent and, for the purposes of
subsections 10(4) and (5), prescribing the date, or the manner of determining the date,
on or before which a request for priority or an application for a patent is to be
withdrawn;
(j.31) respecting additions to the specification and additions of drawings for the
purposes of subsection 28.01(1);
(j.4) respecting requests for priority, including
(i) the period within which priority is to be requested,
(ii) the information and documents that are to be submitted in support of requests
for priority,
(iii) the period within which that information and those documents are to be
submitted,
(iv) the withdrawal of requests for priority, and
(v) the correction of requests for priority or of information or documents submitted in
support of them and the effect of corrections on the duration of the confidentiality
period referred to in subsection 10(3);
(j.41) respecting the application of subsection 28.4(6);
(j.5) for the purposes of section 36,
(i) defining one invention, and
(ii) respecting requirements for divisional applications;
1993, c. 15, s. 29(2)
(5) Paragraph 12(1)(j.8) of the Act is replaced by the following:
(j.71) respecting amendments to the specification or drawings for the purposes of
subsection 38.2(1);
(j.72) respecting the replacement of all or part of the text matter of a specification or
drawing contained in an application for a patent that is in a language other than English
or French with a translation into English or French, for the purposes of paragraph 38.2
(3)(b);
(j.73) respecting the conditions set out in subsection 46(5), including the circumstances
in which subparagraph 46(5)(a)(ii) and paragraph 46(5)(b) do not apply;
(j.74) establishing a period for the purposes of subsection 55.11(2);
(j.75) establishing a period for the purposes of subsections 55.11(3), (7) and (9);
(j.76) respecting the reinstatement of applications for patents under subsection 73(3),
including the circumstances in which subparagraph 73(3)(a)(ii) and paragraph 73(3)(b)
do not apply;
(j.77) respecting communications between the Commissioner and any other person;
(j.8) authorizing the Commissioner to, during or after the end of the time period fixed
under this Act for doing anything, extend that time period, subject to any prescribed
terms and conditions, if the Commissioner considers that the circumstances justify the
extension;
— 2014, c. 39, s. 119, as amended by 2018, c. 27, s. 205
R.S., c. 33 (3rd Supp.), s. 4
119 Section 15 of the Act is replaced by the following:
Register of patent agents
15 A register shall be kept in the Patent Office, on which shall be entered the names of all
persons and firms that may act as patent agents.
— 2014, c. 39, s. 120
1993, c. 15, s. 31
120 (1) Subsection 27(2) of the French version of the Act is replaced by the
following:
Dépôt de la demande
(2) L’inventeur ou son représentant légal doit, conformément aux règlements, déposer une
demande qui comprend une pétition et un mémoire descriptif de l’invention et payer la taxe
réglementaire.
1993, c. 15, s. 31
(2) Subsections 27(6) and (7) of the Act are replaced by the following:
Drawings
(5.1) In the case of a machine, or in any other case in which an invention admits of
illustration by means of drawings, the applicant shall, as part of the application, furnish
drawings of the invention that clearly show all parts of the invention.
Particulars
(5.2) Each drawing is to include references corresponding with the specification. The
Commissioner may, as the Commissioner sees fit, require further drawings or dispense
with the requirement to furnish any drawing.
Requirements not met
(6) If, on its filing date, an application does not meet the requirements of subsection (2),
other than the payment of the application fee, the Commissioner shall, by notice, require
the applicant to meet those requirements on or before the prescribed date.
Application fee not paid
(7) If, on the filing date of the application, the application fee is not paid, the Commissioner
shall, by notice, require the applicant to pay the application fee and the prescribed late fee
on or before the prescribed date.
— 2014, c. 39, s. 121
R.S., c. 33 (3rd Supp.), s. 9; 1993, c. 15, ss. 32 and 33
121 Sections 27.1 and 28 of the Act are replaced by the following:
Reference to previously filed application
27.01 (1) Subject to the prescribed requirements and within the prescribed period, an
applicant may submit to the Commissioner a statement to the effect that a reference to a
specified previously filed application for a patent is being submitted instead of all or part of
the specification contained in or a drawing that is required to be contained in the
application. The prescribed period shall not end later than six months after the earliest
date on which the Commissioner receives any document or information under subsection
28(1).
Specification or drawing deemed in application
(2) If the applicant submits the statement within the prescribed period and meets the
prescribed requirements, the specification or drawing in the previously filed application is
deemed to have been contained in the application on the date on which the Commissioner
receives the statement.
Maintenance fees
27.1 (1) To maintain an application for a patent in effect, the prescribed fees shall be paid
on or before the prescribed dates.
Late fee and notice
(2) If a prescribed fee is not paid on or before the applicable prescribed date,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the applicant stating that the application
will be deemed to be abandoned if the prescribed fee and late fee are not paid before
the later of the end of six months after the applicable prescribed date and the end of
two months after the date of the notice.
Prescribed fee deemed paid on prescribed date
(3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent,
the prescribed fee and late fee are paid before the later of the end of six months after the
applicable prescribed date and the end of two months after the date of the notice, the
prescribed fee shall be deemed to have been paid on the applicable prescribed date.
Patent not invalid
(4) A patent shall not be declared invalid by reason only that the application on the basis of
which the patent was granted was not maintained in effect.
Filing date
28 (1) Subject to subsections 28.01(2) and 36(4), the filing date of an application for a
patent in Canada is the date on which the Commissioner receives the prescribed
documents and information or, if they are received on different dates, the latest of those
dates.
Outstanding documents and information
(2) The Commissioner shall notify an applicant whose application does not contain all of
the documents and information referred to in subsection (1) of the documents and
information that are outstanding and require that the applicant submit them within two
months after the date of the notice.
Application deemed never filed
(3) If the Commissioner does not receive the outstanding documents and information
within that two-month period, the application is deemed never to have been filed. However,
any fees paid in respect of the application shall not be refunded to the applicant.
Addition to specification or addition of drawing to application
28.01 (1) Subject to the regulations, an applicant may, within the prescribed period, add to
the specification that is contained in their application or add a drawing to their application
for a patent by submitting the addition to the Commissioner along with a statement by the
applicant indicating that the addition is being made under this section. The prescribed
period shall not end later than six months after the earliest date on which the
Commissioner receives any document or information under subsection 28(1).
Filing date
(2) If an applicant submits an addition to the Commissioner under subsection (1) and the
addition is not withdrawn within the prescribed period, the filing date of the application is
the later of the date on which the Commissioner receives the addition and the filing date
referred to in subsection 28(1), unless
(a) the applicant has, on the earliest date on which the Commissioner receives any
document or information under subsection 28(1), made a request for priority in respect
of the application under section 28.4;
(b) the addition is completely contained in a previously regularly filed application on
which the request for priority is based;
(c) the applicant requests, in accordance with the regulations, that the filing date be the
filing date referred to in subsection 28(1); and
(d) the applicant complies with any prescribed requirements.
Addition deemed in application
(3) In the circumstances set out in paragraphs (2)(a) to (d), the addition is deemed to have
been contained in the application on its filing date for the purposes of subsections 38.2(2)
and (3).
— 2014, c. 39, s. 122
1993, c. 15, s. 33
122 Paragraph 28.1(1)(b) of the French version of the Act is replaced by the
following:
b) à cette date, il s’est écoulé, depuis la date de dépôt de la demande déposée
antérieurement, au plus douze mois;
— 2014, c. 39, s. 123
1993, c. 15, s. 33
123 Paragraph 28.2(1)(a) of the Act is replaced by the following:
(a) before the one-year period immediately preceding the filing date or, if the claim date
is before that period, before the claim date by the applicant, or by a person who
obtained knowledge, directly or indirectly, from the applicant, in such a manner that the
subject-matter became available to the public in Canada or elsewhere;
— 2014, c. 39, s. 124
1993, c. 15, s. 33
124 Paragraph 28.3(a) of the Act is replaced by the following:
(a) information disclosed before the one-year period immediately preceding the filing
date or, if the claim date is before that period, before the claim date by the applicant, or
by a person who obtained knowledge, directly or indirectly, from the applicant in such a
manner that the information became available to the public in Canada or elsewhere;
and
— 2014, c. 39, s. 125, as amended by 2018, c. 27, s. 206
2001, c. 34, s. 63
125 (1) Subsection 28.4(2) of the Act is replaced by the following:
Requirements for request
(2) The request for priority shall be made in accordance with the regulations and the
applicant shall submit to the Commissioner the filing date, the name of the country or office
of filing and the number of each previously regularly filed application on which the request
is based.
Request deemed never filed
(2.1) Except for the purposes of subsection 10(3), a request for priority is deemed never to
have been made if the request is not made in accordance with the regulations or if the
applicant does not submit the information, other than the number of each previously
regularly filed application, required under subsection (2).
1993, c. 15, s. 33
(2) Subsection 28.4(3) of the French version of the Act is replaced by the following:
Retrait de la demande
(3) Le demandeur peut, selon les modalités réglementaires, retirer la demande de priorité
à l’égard de la demande déposée antérieurement; si elle est fondée sur plusieurs
demandes, il peut la retirer à l’égard de toutes celles-ci ou d’une ou de plusieurs d’entre
elles.
1993, c. 15, s. 33
(3) The portion of paragraph 28.4(5)(a) of the Act before subparagraph (i) is replaced
by the following:
(a) on the filing date of one of the following applications, as the case may be, more
than 12 months have elapsed since the filing date of the previously regularly filed
application:
1993, c. 15, s. 33
(4) The portion of paragraph 28.4(5)(b) of the English version of the Act before
subparagraph (i) is replaced by the following:
(b) before the filing date of the application referred to in one of subparagraphs (a)(i) to
(iv), as the case may be, another application
(5) Section 28.4 of the Act is amended by adding the following after subsection (5):
Filing date deemed to be within 12 months
(6) Subject to the regulations, for the purposes of paragraph 28.1(1)(b) and subparagraphs
28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii), the filing date of the pending application or the co-
pending application, as the case may be, shall be deemed to be within 12 months after the
filing date of the previously regularly filed application if
(a) the filing date of the pending application or the co-pending application, as the case
may be, is more than 12 months after the filing date of the previously regularly filed
application but within two months after the end of those 12 months; and
(b) the applicant, within the prescribed time,
(i) makes a request to the Commissioner for this subsection to apply,
(ii) states, in the request, that the failure to file the pending application or the co-
pending application, as the case may be, within 12 months after the filing date of
the previously regularly filed application was unintentional, and
(iii) complies with any prescribed requirements.
Powers of the Federal Court
(7) If subsection (6) applies, the Federal Court may, by order, declare that subsection
never to have produced its effects if the Federal Court determines that the failure referred
to in subparagraph (6)(b)(ii) was intentional.
— 2014, c. 39, s. 127
127 Paragraph 31(2)(a) of the Act is replaced by the following:
(a) an applicant has agreed in writing to transfer a patent, when granted, to another
person or to a joint applicant and refuses to proceed with the application, or
— 2014, c. 39, s. 128
1993, c. 15, s. 38
128 Subsection 35(2) of the Act is replaced by the following:
Prescribed time
(2) The request shall be made within the prescribed time and the prescribed fee shall be
paid within that time.
Late fee and notice
(3) If the request is not made or the prescribed fee is not paid within the prescribed time,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the applicant stating that the application
will be deemed to be abandoned if the request is not made and the prescribed fee and
late fee are not paid before the end of two months after the date of the notice.
Request deemed made and prescribed fee deemed paid within prescribed time
(4) If the request is made and the prescribed fee and late fee are paid before a notice is
sent or, if a notice has been sent, the request is made and the prescribed fee and late fee
are paid before the end of two months after the date of the notice, the request shall be
deemed to have been made and the prescribed fee shall be deemed to have been paid
within the prescribed time.
Required examination
(5) The Commissioner may by a notice sent to the applicant, require that the request be
made and the prescribed fee be paid within the prescribed time. However, the
Commissioner is not authorized to send the notice if the prescribed time would end after
the prescribed time referred to in subsection (2).
Non-application
(6) If a notice is sent under subsection (5), subsections (2) to (4) do not apply.
— 2014, c. 39, s. 129
1993, c. 15, s. 39
129 Subsection 36(3) of the Act is replaced by the following:
Original application abandoned
(3) If an original application mentioned in subsection (2) or (2.1) is deemed to be
abandoned and is not reinstated, the time for filing a divisional application ends on the
later of the day on which the original application is deemed to be abandoned and the end
of the prescribed time referred to in subsection 73(3).
— 2014, c. 39, s. 130
R.S., c. 33 (3rd Supp.), s. 13; 1993, c. 15, s. 40
130 The heading before section 37 and sections 37 and 38 of the Act are replaced by
the following:
Biological Materials
— 2014, c. 39, s. 131
1993, c. 15, s. 41
131 (1) Subsection 38.2(1) of the French version of the Act is replaced by the
following:
Modification du mémoire descriptif et des dessins
38.2 (1) Sous réserve des paragraphes (2) et (3) et des règlements, les dessins et le
mémoire descriptif qui sont compris dans la demande de brevet peuvent être modifiés
avant la délivrance du brevet.
1993, c. 15, s. 41
(2) Subsections 38.2(2) and (3) of the Act are replaced by the following:
Restriction
(2) The specification and drawings may not be amended to add matter not reasonably to
be inferred from the specification or drawings contained in the application on its filing date.
Language other than English or French
(3) However, if all or part of the text matter of the specification or drawings contained in the
application on its filing date is in a language other than English or French, the specification
and drawings may not be amended to add matter not reasonably to be inferred from both
(a) the specification or drawings contained in the application on its filing date, and
(b) the specification or drawings contained in the application immediately after the text
matter is replaced by an English or French translation, in accordance with the
regulations.
Non-application of subsections (2) and (3)
(4) Subsections (2) and (3) do not apply if it is admitted in the specification that the matter
is prior art with respect to the application.
— 2014, c. 39, s. 132
R.S., c. 33 (3rd Supp.), s. 16; 1993, c. 15, s. 43
132 Section 46 of the Act is replaced by the following:
Maintenance fees
46 (1) To maintain the rights accorded by a patent issued under this Act in effect, the
prescribed fees shall be paid on or before the prescribed dates.
Late fee and notice
(2) If a prescribed fee is not paid on or before the applicable prescribed date,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the patentee stating that the term limited
for the duration of the patent will be deemed to have expired if the prescribed fee and
late fee are not paid before the later of the end of six months after the applicable
prescribed date and the end of two months after the date of the notice.
Prescribed fee deemed paid on prescribed date
(3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent,
the prescribed fee and late fee are paid before the later of the end of six months after the
applicable prescribed date and the end of two months after the date of the notice, the
prescribed fee shall be deemed to have been paid on the applicable prescribed date.
Term limited deemed expired on prescribed date
(4) If the prescribed fee and late fee are not paid before the later of the end of six months
after the applicable prescribed date and the end of two months after the date of the notice,
the term limited for the duration of the patent shall be deemed to have expired on the
applicable prescribed date.
Subsection (4) deemed never to have produced its effects
(5) Subject to the regulations, if the term limited for the duration of a patent is deemed to
have expired under subsection (4), that subsection is deemed never to have produced its
effects if
(a) the patentee, within the prescribed time,
(i) makes a request to the Commissioner for the term limited for the duration of the
patent to never have been deemed to have expired,
(ii) states, in the request, the reasons for the failure to pay the prescribed fee and
late fee before the later of the end of six months after the applicable prescribed date
and the end of two months after the date of the notice, and
(iii) pays the prescribed fee, the late fee and any additional prescribed fee; and
(b) the Commissioner determines that the failure occurred in spite of the due care
required by the circumstances having been taken and informs the patentee of this
determination.
Powers of the Federal Court
(6) If subsection (5) applies, the Federal Court may, by order, declare the term limited for
the duration of the patent to have expired on the applicable prescribed date if the Federal
Court determines either
(a) that the statement of the reasons referred to in subparagraph (5)(a)(ii) contains a
material allegation that is untrue, or
(b) that, if paragraph (5)(b) applies, the failure referred to in subparagraph (5)(a)(ii) did
not occur in spite of the due care required by the circumstances having been taken.
— 2014, c. 39, s. 133
R.S., c. 33 (3rd Supp.), s. 17
133 (1) The portion of subsection 48(1) of the Act after paragraph (b) is replaced by
the following:
the patentee may, on payment of a prescribed fee, make a disclaimer of the parts that the
patentee does not claim to hold by virtue of the patent or a transfer of the patent.
(2) Subsection 48(5) of the Act is repealed.
— 2014, c. 39, s. 134
R.S., c. 33 (3rd Supp.), ss. 19 and 20
134 The heading before section 49 and sections 49 to 51 of the Act are replaced by
the following:
Transfers
Patent, application and right or interest in invention
49 (1) A patent, an application for a patent, and the right or interest in an invention are
transferable, in whole or in part.
Recording of transfer of application
(2) The Commissioner shall, subject to the regulations, record the transfer of an
application for a patent on the request of the applicant or, upon receipt of evidence
satisfactory to the Commissioner of the transfer, on the request of a transferee of the
application.
Recording of transfer of patent
(3) The Commissioner shall, subject to the regulations, record the transfer of a patent on
the request of the patentee or, upon receipt of evidence satisfactory to the Commissioner
of the transfer, on the request of a transferee of the patent.
Transfer void
(4) A transfer of a patent that has not been recorded is void against a subsequent
transferee if the transfer to the subsequent transferee has been recorded.
Removal of recording
(5) The Commissioner shall remove the recording of the transfer of an application for a
patent or the transfer of a patent on receipt of evidence satisfactory to the Commissioner
that the transfer should not have been recorded.
Limitation
(6) The Commissioner is not authorized to remove the recording of a transfer of a patent
for the reason only that the transferor had previously transferred the patent to another
person.
— 2014, c. 39, s. 135
1993, c. 15, s. 48
135 Subsection 55(2) of the Act is replaced by the following:
Liability damage before patent is granted
(2) A person is liable to pay reasonable compensation to a patentee and to all persons
claiming under the patentee for any damage sustained by the patentee or by any of those
persons by reason of any act on the part of that person, after the specification contained in
the application for the patent became open to public inspection, in English or French,
under section 10 and before the grant of the patent, that would have constituted an
infringement of the patent if the patent had been granted on the day the specification
became open to public inspection, in English or French, under that section.
— 2014, c. 39, s. 136, as amended by 2018, c. 27, s. 207
136 The Act is amended by adding the following after section 55.1:
Exception — third party rights
55.11 (1) This section applies only in respect of the following patents and certificates of
supplementary protection that set out the following patents:
(a) a patent that was granted on the basis of an application
(i) in respect of which the prescribed fee referred to in subsection 27.1(2) was not
paid on or before the applicable prescribed date referred to in that subsection,
without taking into account subsection 27.1(3),
(ii) in respect of which a request referred to in subsection 35(2) was not made and
the prescribed fee referred to in that subsection was not paid within the prescribed
time referred to in that subsection, without taking into account subsection 35(4), or
(iii) that was deemed abandoned under paragraph 73(1)(a), (b), (e) or (f) or
subsection 73(2);
(b) a patent that was granted on the basis of a divisional application that
(i) results, under subsection 36(2) or (2.1), from the division of an original
application that is an application referred to in this paragraph or paragraph (a), and
(ii) was filed after the beginning of the period referred to in subsection (2) or, if it is
earlier, the period referred to in subsection (3), that applies to the patent granted on
the basis of the original application or that would apply to that patent if it were
granted; and
(c) a patent in respect of which the prescribed fee referred to in subsection 46(2) was
not paid on or before the applicable prescribed date referred to in that subsection,
without taking into account subsection 46(3).
Act committed during period
(2) If, during a period that is established by regulations made under paragraph 12(1)(j.74)
that relates to a patent, a person, in good faith, committed an act that would otherwise
constitute an infringement of that patent, that act is not an infringement of the patent.
Act committed after period
(3) Subject to subsection (4), if — during a period established by regulations made under
paragraph 12(1)(j.75) that relates to a patent — a person, in good faith, committed an act
that would otherwise constitute an infringement of that patent or made serious and
effective preparations to commit that act, it is not an infringement of the patent or any
certificate of supplementary protection that sets out the patent if the person commits the
act after that period.
Transfer
(4) If the act referred to in subsection (3) is committed or the preparations to commit it are
made in the course of a business and that business, or the part of that business in the
course of which the act was committed or the preparations were made, is subsequently
transferred,
(a) subsection (3) or paragraph (b), as the case may be, does not apply in respect of
an act committed by the transferor after the transfer; and
(b) it is not an infringement of the patent or any certificate of supplementary protection
that sets out the patent if the transferee commits the act after the transfer.
Use or sale of article
(5) The use or sale of an article is not an infringement of a patent or any certificate of
supplementary protection that sets out the patent if that article was acquired, directly or
indirectly, from a person who, at the time they disposed of it, could, under subsection (2) or
(3) or paragraph (4)(b), sell the article without infringing the patent or the certificate.
Use of service
(6) The use of a service is not an infringement of a patent if the service is provided by a
person who, under subsection (2) or (3) or paragraph (4)(b), is able to provide it without
infringing the patent.
Use of article
(7) Subject to subsection (8), the use of an article is not an infringement of a patent or any
certificate of supplementary protection that sets out the patent if the article was acquired,
directly or indirectly, from a person who, during a period that is established by regulations
made under paragraph 12(1)(j.75) that relates to that patent, in good faith, made or sold,
or made serious and effective preparations to make or sell, an article that is substantially
the same as the one used, for that use.
Transfer
(8) If the making or selling referred to in subsection (7) was done or the preparations to do
so were made in the course of a business and that business, or the part of that business in
the course of which the making or selling was done or the preparations were made, is
subsequently transferred, then
(a) subsection (7) or paragraph (b), as the case may be, does not apply in respect of
an article that is made or sold by the transferor after the transfer; and
(b) it is not an infringement of a patent or a certificate of supplemental protection
referred to in subsection (7) to use an article for the use referred to in that subsection if
it was made or sold for that use by the transferee after the transfer.
Use of service
(9) Subject to subsection (10), the use of a service is not an infringement of a patent if the
service is provided by a person who, during a period that is established by regulations
made under paragraph 12(1)(j.75) that relates to that patent, provided, or made serious
and effective preparations to provide, a service that is substantially the same as the one
used, for that use.
Transfer
(10) If, during the period referred to in subsection (9), the service was provided or the
preparations to provide it were made in the course of a business and that business, or the
part of that business in the course of which the service was provided or the preparations to
do so were made, is subsequently transferred, then, after the transfer
(a) the transferor is deemed to no longer be the person referred to in subsection (9) for
the purposes of that subsection; and
(b) the transferee is deemed to be the person who provided the service for the
purposes of subsection (9).
— 2014, c. 39, s. 137
1993, c. 15, s. 52
137 (1) Subsection 73(1) of the Act is replaced by the following:
Deemed abandonment of applications
73 (1) An application for a patent in Canada shall be deemed to be abandoned if
(a) the applicant does not reply in good faith, within the prescribed time, to any
requisition made by an examiner in connection with an examination;
(b) the applicant does not comply with a notice given under subsection 27(6);
(c) the prescribed fee and late fee referred to in a notice sent under paragraph 27.1(2)
(b) are not paid before the later of the end of six months after the applicable prescribed
date and the end of two months after the date of the notice;
(d) the request referred to in a notice sent under paragraph 35(3)(b) is not made and
the prescribed fee and late fee referred to in that notice are not paid before the end of
two months after the date of the notice;
(e) the request referred to in a notice sent under subsection 35(5) is not made and the
prescribed fee referred to in that notice is not paid within the prescribed time; or
(f) the applicant does not pay the prescribed fees stated to be payable in a notice of
allowance of patent within six months after the date of the notice.
1993, c. 15, s. 52
(2) Subsection 73(2) of the French version of the Act is replaced by the following:
Abandon
(2) Elle est aussi réputée abandonnée dans les circonstances réglementaires.
1993, c. 15, s. 52
(3) Subsection 73(3) of the Act is replaced by the following:
Reinstatement
(3) Subject to the regulations, an application that is deemed to be abandoned is reinstated
if
(a) the applicant, within the prescribed time,
(i) makes a request for reinstatement to the Commissioner,
(ii) states, in the request, the reasons for the failure to take the action that should
have been taken in order to avoid the abandonment,
(iii) takes the action that should have been taken in order to avoid the
abandonment, and
(iv) pays the prescribed fee; and
(b) the Commissioner determines that the failure occurred in spite of the due care
required by the circumstances having been taken and informs the applicant of this
determination.
Powers of the Federal Court
(3.1) The Federal Court may, by order, declare an application that is reinstated under
subsection (3) to never have been reinstated if the Federal Court determines either
(a) that the statement of the reasons referred to in subparagraph (3)(a)(ii) contains a
material allegation that is untrue, or
(b) that, if paragraph (3)(b) applies, the failure referred to in subparagraph (3)(a)(ii) did
not occur in spite of the due care required by the circumstances having been taken.
— 2014, c. 39, s. 138
138 The Act is amended by adding the following after section 73:
Patent not invalid
73.1 (1) A patent shall not be declared invalid by reason only that the application on the
basis of which the patent was granted was deemed to be abandoned and was not
reinstated.
Exception
(2) Subsection (1) does not apply if the Federal Court makes an order under subsection 73
(3.1) in respect of the application on the basis of which the patent was granted.
— 2014, c. 39, s. 139
2001, c. 10, s. 3
139 Sections 78.1 and 78.2 of the Act are replaced by the following:
Definition of coming-into-force date
78.1 (1) In sections 78.2, 78.21 and 78.5 to 78.56, coming-into-force date means the day
on which section 121 of the Economic Action Plan 2014 Act, No. 2 comes into force.
Definition of filing date
(2) In sections 78.21, 78.22, 78.4, 78.5, 78.53 and 78.54, filing date means the date on
which an application for a patent in Canada is filed, as determined in accordance with
section 78.2.
Filing date
78.2 The filing date of an application for a patent is
(a) with respect to an original application,
(i) if all of the following elements were received by the Commissioner before
October 1, 1989, the date on which they were received or, if they were received on
different dates, the latest of those different dates:
(A) a statement that the granting of a patent is sought, executed by the applicant
or by a patent agent on the applicant’s behalf,
(B) a specification, including claims,
(C) any drawing referred to in the specification,
(D) an abstract of the part of the specification other than the claims,
(E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read
on the day on which the fee was received,
(ii) if subparagraph (i) does not apply, one or more of the following elements were
received by the Commissioner on or after October 1, 1989 and all of the following
elements were received by the Commissioner before October 1, 1996, the date on
which they were received or, if they were received on different dates, the latest of
those different dates:
(A) a petition executed by the applicant or by a patent agent on the applicant’s
behalf,
(B) a specification, including claims,
(C) any drawing referred to in the specification,
(D) an abstract of the part of the specification other than the claims,
(E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read
on the day on which the fee was received,
(iii) if subparagraphs (i) and (ii) do not apply, one or more of the following elements
were received by the Commissioner on or after October 1, 1996 and all of the
following elements were received by the Commissioner before June 2, 2007, the
date on which they were received or, if they were received on different dates, the
latest of those different dates:
(A) an indication, in English or French, that the granting of a Canadian patent is
sought,
(B) the applicant’s name,
(C) the address of the applicant or of their patent agent,
(D) a document, in English or French, that on its face appears to describe an
invention,
(E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read
on the day on which the fee was received, and
(iv) if subparagraphs (i) to (iii) do not apply, one or more of the following elements
were received by the Commissioner on or after June 2, 2007 and all of the following
elements were received by the Commissioner before the coming-into-force date,
the date on which they were received or, if they were received on different dates,
the latest of those different dates:
(A) an indication, in English or French, that the granting of a Canadian patent is
sought,
(B) the applicant’s name,
(C) the address of the applicant or of their patent agent,
(D) a document, in English or French, that on its face appears to describe an
invention,
(E) either a small entity declaration, in accordance with section 3.01 of the
Patent Rules as it read on the day on which the declaration was received, and
the small entity fee set out in item 1 of Schedule II to those Rules as that item
read on the day on which that fee was received or the standard fee set out in
item 1 of that Schedule, as that item read on the day on which that standard fee
was received; or
(b) with respect to a divisional application, the filing date of the original application from
which the divisional application results, determined in accordance with this section.
Applications — no filing date
78.21 An application for a patent that is filed before the coming-into-force date and that
does not have a filing date on the coming-into-force date shall be deemed never to have
been filed.
Applications — filing date before October 1, 1989
78.22 An application for a patent whose filing date is before October 1, 1989 shall be dealt
with and disposed of in accordance with
(a) the provisions of this Act as they read immediately before October 1, 1989, other
than the definition legal representatives in section 2, subsections 4(2) and 7(1),
sections 15 and 29, paragraph 31(2)(a) and sections 49 to 51; and
(b) the definition legal representatives in section 2, subsections 4(2) and 7(1),
sections 8.1, 15 and 15.1, paragraph 31(2)(a) and sections 38.1, 49 and 78.2.
— 2014, c. 39, s. 140, as amended by 2018, c. 27, s. 208
2001, c. 10, s. 4
140 Sections 78.4 and 78.5 of the Act are replaced by the following:
Applications — filing date October 1, 1989 to before October 1, 1996
78.4 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is
on or after October 1, 1989 but before October 1, 1996 shall be dealt with and disposed of
in accordance with
(a) the provisions of this Act, other than the definition filing date in section 2,
subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6); and
(b) subsection 27(2) as it read immediately before October 1, 1996.
Applications — filing date October 1, 1996 to before coming-into-force date
78.5 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is
on or after October 1, 1996 but before the coming-into-force date shall be dealt with and
disposed of in accordance with the provisions of this Act, other than the definition filing
date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6).
Abandonment before coming-into-force date
78.51 If an application for a patent was deemed to be abandoned under section 73 as it
read immediately before the coming-into-force date, that section 73 applies in respect of
that abandonment.
Abandonment — requisition or notice before coming-into-force date
78.52 (1) If, on or after the coming-into-force date, an applicant fails to do any act
described in paragraph 73(1)(a), (b), (e) or (f), as those paragraphs read immediately
before that date, in respect of a requisition made or notice given, as the case may be,
before that date, section 73 as it read immediately before that date applies in respect of
any abandonment resulting from the failure.
Abandonment — section 97 of the Patent Rules
(2) If, on or after the coming-into-force date, an applicant fails to do any act described in
section 97 of the Patent Rules, as that section read immediately before that date, in
respect of a requisition of the Commissioner that was given before that date, section 73 as
it read immediately before that date applies in respect of any abandonment resulting from
the failure.
Patents — filing date before October 1, 1989
78.53 (1) Subject to subsection 78.55(2), any matter arising on or after the coming-into-
force date, in respect of a patent granted on the basis of an application whose filing date is
before October 1, 1989, shall be dealt with and disposed of in accordance with
(a) the provisions of this Act, other than the definitions claim date, filing date and
request for priority in section 2, sections 10, 27 to 28.4, 34.1 to 36, 38.2 and 55,
paragraphs 55.11(1)(a) and (b) and section 56; and
(b) sections 10 and 55 and subsections 61(1) and (3), as they read immediately before
October 1, 1989.
Special case
(2) Section 56 of the Patent Act, as it read immediately before October 1, 1989, applies in
respect of a purchase, construction or acquisition made before October 1, 1996 of an
invention for which a patent is issued on the basis of an application filed before October 1,
1989.
Patents — filing date October 1, 1989 to before coming-into-force date
78.54 Subject to subsection 78.55(1) and section 78.56, any matter arising on or after the
coming-into-force date in respect of a patent granted on the basis of an application whose
filing date is on or after October 1, 1989 but before the coming-into-force date shall be
dealt with and disposed of in accordance with the provisions of this Act, other than the
definition filing date in section 2 and section 28.
Application of section 46 — item 31 of Schedule II to Patent Rules
78.55 (1) If the time, not including a period of grace, set out in item 31 of Schedule II to the
Patent Rules to pay the applicable fee to maintain the rights accorded by a patent in effect
ends before the coming-into-force date, section 46 as it read immediately before the
coming-into-force date applies in respect of that fee.
Application of section 46 — item 32 of Schedule II to Patent Rules
(2) If the time, not including a period of grace, set out in item 32 of Schedule II to the
Patent Rules to pay the applicable fee to maintain the rights accorded by a patent in effect
ends before the coming-into-force date, section 46 as it read immediately before the
coming-into-force date applies in respect of that fee.
Non-application of subsection 27.1(4) and section 73.1
78.56 Subsection 27.1(4) and section 73.1 do not apply to a patent that was granted
before the coming-into-force date or to a reissued patent if the original patent was granted
before that date.
Reissued patents
78.57 For greater certainty, for the purposes of sections 78.53 and 78.54, a reissued
patent is considered to be issued on the basis of the original application.
Regulations
78.58 For greater certainty, a regulation made under subsection 12(1) applies to an
application for a patent referred to in section 78.22, unless the regulation provides
otherwise.
— 2014, c. 39, s. 141
2005, c. 18, s. 2
141 Subsection 78.6(5) of the Act is replaced by the following:
Application
(5) For greater certainty, this section also applies to applications for patents mentioned in
section 78.22.
— 2015, c. 36, s. 50
50 Subsection 5(2) of the Patent Act is replaced by the following:
Absence, inability to act or vacancy
(2) If the Commissioner is absent or unable to act or the office of Commissioner is vacant,
the Assistant Commissioner or, if at the same time the Assistant Commissioner is absent
or unable to act or the office of Assistant Commissioner is vacant, another officer
designated by the Minister may exercise the powers and shall perform the duties of the
Commissioner.
— 2015, c. 36, s. 51
51 Section 8 of the Act is repealed.
— 2015, c. 36, s. 52
52 Section 11 of the Act is repealed.
— 2015, c. 36, s. 53
53 (1) Subsection 12(1) of the Act is amended by adding the following after
paragraph (g):
(g.1) authorizing the Commissioner to waive, subject to any prescribed terms and
conditions, the payment of a fee if the Commissioner is satisfied that the circumstances
justify it;
(2) Paragraph 12(1)(j.5) of the Act is replaced by the following:
(j.5) respecting divisional applications, including the time period within which divisional
applications may be filed and the persons who may file divisional applications;
(j.51) defining one invention for the purposes of section 36;
(3) Subsection 12(1) of the Act is amended by adding the following after paragraph
(j.8):
(j.81) respecting the correction of obvious errors in documents submitted to the
Commissioner or the Patent Office or in patents or other documents issued under this
Act, including
(i) the determination of what constitutes an obvious error, and
(ii) the effect of the correction;
— 2015, c. 36, s. 56
56 Subsection 26.1(1) of the Act is repealed.
— 2015, c. 36, s. 57
57 The portion of subsection 28.4(4) of the Act before paragraph (a) is replaced by
the following:
Multiple previously regularly filed applications
(4) If two or more applications have been previously regularly filed as described in
paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph 78.3(1)(a) or (2)(a), either
in or for the same country or in or for different countries,
— 2015, c. 36, s. 58
58 (1) Subsections 38.2(1) and (2) of the Act are replaced by the following:
Amendments to specifications and drawings
38.2 (1) Subject to subsections (2) to (3.1) and the regulations, the specification and
drawings contained in an application for a patent in Canada may be amended before the
patent is issued.
Restriction
(2) The specification and drawings contained in an application, other than a divisional
application, may not be amended to add matter that cannot reasonably be inferred from
the specification or drawings contained in the application on its filing date.
(2) Subsection 38.2(4) of the Act is replaced by the following:
Divisional application
(3.1) The specification and drawings contained in a divisional application may not be
amended to add matter
(a) that may not be or could not have been added, under subsection (2) or (3) or this
subsection, to the specification and drawings contained in the application for a patent
from which the divisional application results; or
(b) that cannot reasonably be inferred from the specification or drawings contained in
the divisional application on the date on which the Commissioner, in respect of that
application, receives the prescribed documents and information or, if they are received
on different dates, on the latest of those dates.
Non-application of subsections (2) to (3.1)
(4) Subsections (2) to (3.1) do not apply if it is admitted in the specification that the matter
is prior art with respect to the application.
Application subject to regulations
(5) Subsections (2) to (3.1) apply subject to any regulations made under paragraph 12(1)
(j.81).
— 2015, c. 36, s. 59
59 Subparagraph 55.11(1)(a)(iii) of the Act is replaced by the following:
(iii) that was deemed abandoned under paragraph 73(1)(a), (b) or (e), under
paragraph 73(1)(f) as it read at any time before the coming into force of this
subparagraph or under subsection 73(2);
— 2015, c. 36, s. 61(1)
61 (1) The portion of subsection 68(1) of the Act before paragraph (a) is replaced by
the following:
Contents of applications
68 (1) Every application presented to the Commissioner under section 65 shall
— 2015, c. 36, s. 62
62 (1) Subsection 73(1) of the Act is amended by adding “or” at the end of
paragraph (d), by striking out “or” at the end of paragraph (e) and by repealing
paragraph (f).
(2) Subsections 73(4) and (5) of the Act are replaced by the following:
Filing date
(5) An application that is reinstated retains its filing date.
— 2015, c. 36, s. 64
64 Paragraphs 78.22(a) and (b) of the Act are replaced by the following:
(a) the provisions of this Act as they read immediately before October 1, 1989, other
than the definition legal representatives in section 2, subsections 4(2), 5(2) and 7(1),
sections 8, 15 and 29, paragraph 31(2)(a) and sections 49 to 51 and 78; and
(b) the definition legal representatives in section 2, subsections 4(2), 5(2) and 7(1),
sections 8.1, 15 and 15.1, paragraph 31(2)(a) and sections 38.1, 49, 78 and 78.2.
— 2015, c. 36, s. 65
Replacement of “complémentaire” and “complémentaires”
65 The French version of the Act is amended by replacing “complémentaire” and
“complémentaires” with “divisionnaire” and “divisionnaires”, respectively, with any
grammatical adaptations, in the following provisions:
(a) the heading before section 36;
(b) subsections 36(2) to (4);
(c) the portion of paragraph 55.11(1)(b) before subparagraph (i); and
(d) paragraph 78.2(b).
— 2015, c. 36, ss. 71(1), (6) to (12)
2014, c. 39
71 (1) In this section, other Act means the Economic Action Plan 2014 Act, No. 2.
(6) If subsection 53(2) of this Act comes into force on the same day as subsection
118(4) of the other Act, then that subsection 118(4) is deemed to have come into
force before that subsection 53(2).
(7) If section 58 of this Act comes into force on the same day as section 131 of the
other Act, then that section 131 is deemed to have come into force before that
section 58.
(8) If section 59 of this Act comes into force on the same day as section 136 of the
other Act, then that section 136 is deemed to have come into force before that
section 59.
(9) If subsection 62(1) of this Act comes into force on the same day as subsection
137(1) of the other Act, then that subsection 137(1) is deemed to have come into
force before that subsection 62(1).
(10) If section 140 of the other Act comes into force before subsection 62(1) of this
Act, then, on the day on which that subsection 62(1) comes into force, section 78.52
of the Patent Act is amended by adding the following after subsection (1):
Abandonment — notice after coming-into-force date
(1.1) If, on or after the day on which subsection 62(1) of the Economic Action Plan 2015
Act, No. 1 comes into force, an applicant fails to pay the prescribed fees stated to be
payable in a notice of allowance of patent given before that day but after the coming-into-
force date, paragraph 73(1)(f) as it read immediately before the day on which that
subsection 62(1) comes into force applies in respect of any abandonment resulting from
the failure.
(11) If section 64 of this Act comes into force on the same day as section 139 of the
other Act, then that section 139 is deemed to have come into force before that
section 64.
(12) If section 65 of this Act comes into force on the same day as sections 129, 136
and 139 of the other Act, then those sections 129, 136 and 139 are deemed to have
come into force before that section 65.
— 2017, c. 6, s. 45
1993, c. 2, s. 7
45 The heading “Patented Medicines” before section 79 of the Act is replaced by the
following:
Patented or Protected Medicines
— 2017, c. 6, s. 46
1993, c. 2. , s. 7
46 (1) The definition breveté ou titulaire d’un brevet in subsection 79(1) of the
French version of the Act is replaced by the following:
breveté ou titulaire d’un brevet La personne ayant pour le moment droit à l’avantage d’un
brevet pour une invention liée à un médicament, ainsi que quiconque peut exercer tout
droit d’un titulaire dans un cadre autre qu’une licence prorogée en vertu du paragraphe 11
(1) de la Loi de 1992 modifiant la Loi sur les brevets. (patentee)
(2) Subsection 79(1) of the Act is amended by adding the following in alphabetical
order:
medicine includes a drug, as defined in section 104, and a medicinal ingredient;
(médicament)
rights holder means, in respect of an invention pertaining to a medicine, a patentee and
the person for the time being entitled to the benefit of a certificate of supplementary
protection for that invention, and includes, if any other person is entitled to exercise rights
in relation to the certificate, that other person in respect of those rights; (titulaire de droits)
— 2017, c. 6, s. 47
1993, c. 2, s. 7
47 (1) The portion of subsection 80(1) of the Act before paragraph (a) is replaced by
the following:
Pricing information, etc., required by regulations
80 (1) A rights holder for an invention pertaining to a medicine shall, as required by and in
accordance with the regulations, provide the Board with the information and documents
that the regulations may specify respecting
1993, c. 2, s. 7
(2) Paragraph 80(1)(c) of the English version of the Act is replaced by the following:
(c) the costs of making and marketing the medicine, if that information is available to
the rights holder in Canada or is within the knowledge or control of the rights holder;
1993, c. 2, s. 7
(3) The portion of subsection 80(2) of the Act before paragraph (a) is replaced by the
following:
Former rights holder
(2) Subject to subsection (3), a person who is a former rights holder for an invention
pertaining to a medicine shall, as required by and in accordance with the regulations,
provide the Board with the information and documents that the regulations may specify
respecting
1993, c. 2, s. 7
(4) Paragraphs 80(2)(b) and (c) of the Act are replaced by the following:
(b) the price at which the medicine was sold in any market in Canada and elsewhere
during the period in which the person was a rights holder for the invention;
(c) the costs of making and marketing the medicine produced during that period,
whether incurred before or after the patent was issued or the certificate of
supplementary protection took effect, if that information is available to the person in
Canada or is within the knowledge or control of the person;
1993, c. 2, s. 7
(5) Subsection 80(3) of the Act is replaced by the following:
Limitation
(3) Subsection (2) does not apply to a person who has not, for a period of three or more
years, been entitled to the benefit of the patent or certificate of supplementary protection,
as the case may be, or to exercise any rights in relation to the patent or certificate.
— 2017, c. 6, s. 48
1993, c. 2, s. 7
48 (1) Subsection 81(1) of the Act is replaced by the following:
Pricing information, etc. required by Board
81 (1) The Board may, by order, require a rights holder or former rights holder for an
invention pertaining to a medicine to provide the Board with information and documents
respecting
(a) in the case of a rights holder, any of the matters referred to in paragraphs 80(1)(a)
to (e);
(b) in the case of a former rights holder, any of the matters referred to in paragraphs 80
(2)(a) to (e); and
(c) any other related matters that the Board may require.
1993, c. 2, s. 7
(2) Subsection 81(2) of the English version of the Act is replaced by the following:
Compliance with order
(2) A rights holder or former rights holder in respect of whom an order is made under
subsection (1) shall comply with the order within the time that is specified in the order or as
the Board may allow.
1993, c. 2, s. 7
(3) Subsection 81(3) of the Act is replaced by the following:
Limitation
(3) No order may be made under subsection (1) in respect of a former rights holder who,
more than three years before the day on which the order is proposed to be made, ceased
to be entitled to the benefit of the patent or certificate of supplementary protection, as the
case may be, or to exercise any rights in relation to the patent or certificate.
— 2017, c. 6, s. 49
1993, c. 2, s. 7
49 (1) Subsections 82(1) and (2) of the Act are replaced by the following:
Notice of introductory price
82 (1) A rights holder for an invention pertaining to a medicine who intends to sell the
medicine in a market in Canada in which it has not previously been sold shall, as soon as
practicable after determining the date on which the medicine will be first offered for sale in
that market, notify the Board of its intention and of that date.
Pricing information and documents
(2) If the Board receives a notice under subsection (1) from a rights holder or otherwise
has reason to believe that a rights holder for an invention pertaining to a medicine intends
to sell the medicine in a market in Canada in which the medicine has not previously been
sold, the Board may, by order, require the rights holder to provide the Board with
information and documents respecting the price at which the medicine is intended to be
sold in that market.
1993, c. 2, s. 7
(2) Subsection 82(3) of the English version of the Act is replaced by the following:
Compliance with order
(3) Subject to subsection (4), a rights holder in respect of whom an order is made under
subsection (2) shall comply with the order within the time that is specified in the order or as
the Board may allow.
1993, c. 2, s. 7
(3) Subsection 82(4) of the Act is replaced by the following:
Limitation
(4) No rights holder shall be required to comply with an order made under subsection (2)
prior to the 60th day preceding the date on which the rights holder intends to first offer the
medicine for sale in the relevant market.
— 2017, c. 6, s. 50
1993, c. 2, s. 7; 1994, c. 26, s. 54(F)
50 Section 83 of the Act is replaced by the following:
Order re excessive prices
83 (1) If the Board finds that a rights holder for an invention pertaining to a medicine is
selling the medicine in any market in Canada at a price that, in the Board’s opinion, is
excessive, the Board may, by order, direct the rights holder to cause the maximum price at
which the rights holder sells the medicine in that market to be reduced to the level that the
Board considers not to be excessive and that is specified in the order.
Order re excessive prices
(2) Subject to subsection (4), if the Board finds that a rights holder for an invention
pertaining to a medicine has, while a rights holder, sold the medicine in any market in
Canada at a price that, in the Board’s opinion, was excessive, the Board may, by order,
direct the rights holder to do any one or more of the following things that will, in the Board’s
opinion, offset the amount of the excess revenues estimated by it to have been derived by
the rights holder from the sale of the medicine at an excessive price:
(a) reduce the price at which the rights holder sells the medicine in any market in
Canada, to the extent and for the period that are specified in the order;
(b) to the extent and for the period that are specified in the order, reduce the price at
which the rights holder sells, in any market in Canada, any other medicine to which a
patented invention, or invention protected by a certificate of supplementary protection,
of the rights holder pertains;
(c) pay to Her Majesty in right of Canada an amount that is specified in the order.
Order re excessive prices
(3) Subject to subsection (4), if the Board finds that a former rights holder for an invention
pertaining to a medicine had, while a rights holder, sold the medicine in any market in
Canada at a price that, in the Board’s opinion, was excessive, the Board may, by order,
direct the former rights holder to do any one or more of the following things that will, in the
Board’s opinion, offset the amount of the excess revenues estimated by it to have been
derived by the former rights holder from the sale of the medicine at an excessive price:
(a) to the extent and for the period that are specified in the order, reduce the price at
which the former rights holder sells, in any market in Canada, a medicine to which a
patented invention, or invention protected by a certificate of supplementary protection,
of the former rights holder pertains; or
(b) pay to Her Majesty in right of Canada an amount that is specified in the order.
If policy to sell at excessive price
(4) If the Board, having regard to the extent and duration of the sales of the medicine at an
excessive price, is of the opinion that the rights holder or former rights holder has engaged
in a policy of selling the medicine at an excessive price, the Board may, by order, in lieu of
any order it may make under subsection (2) or (3), as the case may be, direct the rights
holder or former rights holder to do any one or more of the things referred to in that
subsection that will, in the Board’s opinion, offset not more than twice the amount of the
excess revenues estimated by it to have been derived by the rights holder or former rights
holder from the sale of the medicine at an excessive price.
Excess revenues
(5) In estimating the amount of excess revenues under subsection (2), (3) or (4), the Board
shall not consider any revenues derived by a rights holder or former rights holder before
December 20, 1991 or any revenues derived by a former rights holder after they ceased to
be entitled to the benefit of the patent or certificate of supplementary protection, as the
case may be, or to exercise any rights in relation to the patent or certificate.
Right to hearing
(6) Before the Board makes an order under this section, it shall provide the rights holder or
former rights holder with a reasonable opportunity to be heard.
Limitation period
(7) No order may be made under this section in respect of a former rights holder who,
more than three years before the day on which the proceedings in the matter commenced,
ceased to be entitled to the benefit of the patent or certificate of supplementary protection,
as the case may be, or to exercise any rights in relation to the patent or certificate.
— 2017, c. 6, s. 51
1993, c. 2, s. 7
51 (1) Subsections 84(1) and (2) of the Act are replaced by the following:
Compliance
84 (1) A rights holder or former rights holder who is required by any order made under
section 83 to reduce the price of a medicine shall commence compliance with the order
within one month after the date of the order or within a greater period after that date that
the Board determines is practical and reasonable, having regard to the circumstances of
the rights holder or former rights holder.
Compliance
(2) A rights holder or former rights holder who is directed by any order made under section
83 to pay an amount to Her Majesty shall pay that amount within one month after the date
of the order or within a greater period after that date that the Board determines is practical
and reasonable, having regard to the circumstances of the rights holder or former rights
holder.
1993, c. 2, s. 7
(2) Subsection 84(3) of the English version of the Act is replaced by the following:
Debt due to Her Majesty
(3) An amount payable by a rights holder or former rights holder to Her Majesty under any
order made under section 83 constitutes a debt due to Her Majesty and may be recovered
in any court of competent jurisdiction.
— 2017, c. 6, s. 52
1993, c. 2, s. 7
52 Subsection 85(3) of the Act is replaced by the following:
Research costs
(3) In determining under section 83 whether a medicine is being or has been sold in any
market in Canada at an excessive price, the Board shall not take into consideration
research costs other than the Canadian portion of the world costs related to the research
that led to the invention pertaining to that medicine or to the development and
commercialization of that invention, calculated in proportion to the ratio of sales by the
rights holder in Canada of that medicine to total world sales.
— 2017, c. 6, s. 53
1993, c. 2, s. 7
53 Subsections 88(1) and (2) of the Act are replaced by the following:
Sales and expense information, etc., to be provided
88 (1) A rights holder for an invention pertaining to a medicine shall, as required by and in
accordance with the regulations, or as the Board may, by order, require, provide the Board
with the information and documents that the regulations or the order may specify
respecting
(a) the identity of the licensees in Canada of the rights holder;
(b) the revenue of the rights holder, and details of the source of the revenue, whether
direct or indirect, from sales of medicine in Canada; and
(c) the expenditures made by the rights holder in Canada on research and
development relating to medicine.
Additional information
(2) If the Board believes on reasonable grounds that any person has information or
documents pertaining to the value of sales of medicine in Canada by a rights holder or the
expenditures made by a rights holder in Canada on research and development relating to
medicine, the Board may, by order, require the person to provide the Board with any of the
information or documents that are specified in the order, or with copies of them.
— 2017, c. 6, s. 54
1993, c. 2, s. 7
54 (1) Subsection 89(1) of the Act is replaced by the following:
Report
89 (1) The Board shall in each year submit to the Minister a report setting out
(a) the Board’s estimate of the proportion, as a percentage, that the expenditures of
each rights holder in Canada in the preceding year on research and development
relating to medicine is of the revenues of those rights holders from sales of medicine in
Canada in that year; and
(b) the Board’s estimate of the proportion, as a percentage, that the total of the
expenditures of rights holders in Canada in the preceding year on research and
development relating to medicine is of the total of the revenues of those rights holders
from sales of medicine in Canada in that year.
1993, c. 2, s. 7
(2) Subsection 89(3) of the Act is replaced by the following:
Exception
(3) The Board shall, in the report, identify the rights holders in respect of whom an
estimate referred to in subsection (1) is given in the report, and may, in the report, identify
any person who has failed to comply with subsection 88(1) or (2) at any time in the year in
respect of which the report is made.
— 2017, c. 6, s. 55
1993, c. 2, s. 7
55 Subsection 96(4) of the Act is replaced by the following:
Guidelines
(4) Subject to subsection (5), the Board may issue guidelines with respect to any matter
within its jurisdiction but such guidelines are not binding on the Board or any rights holder
or former rights holder.
— 2017, c. 6, s. 56
1993, c. 2, s. 7
56 Subsections 100(2) and (3) of the Act are replaced by the following:
Contents
(2) The report shall contain
(a) a summary of pricing trends in the pharmaceutical industry; and
(b) the name of each rights holder and former rights holder in respect of whom an order
was made under subsection 81(1) or 82(2) or section 83 during the year and a
statement as to the status of the matter in respect of which the order was made.
Report summary
(3) The summary referred to in paragraph (2)(a) may be based on information and
documents provided to the Board by any rights holder or former rights holder under section
80, 81 or 82 or in any proceeding under section 83, but shall not be set out in a manner
that would make it possible to identify that rights holder or former rights holder.
— 2017, c. 6, s. 57
1993, c. 2, s. 7
57 (1) Paragraph 101(1)(d) of the English version of the Act is replaced by the
following:
(d) specifying factors for the purposes of subsection 85(1) or (2), including factors
relating to the introductory price of any medicine to which a patented invention, or
invention protected by a certificate of supplementary protection, pertains;
1993, c. 2, s. 7
(2) Paragraph 101(1)(h) of the English version of the Act is replaced by the
following:
(h) requiring or authorizing the Board to perform the duties, in addition to those
provided for in this Act, that are specified in the regulations, including duties to be
performed by the Board in relation to the introductory price of any medicine to which a
patented invention, or invention protected by a certificate of supplementary protection,
pertains; and
— 2017, c. 6, s. 58
1999, c. 26, s. 50
58 Section 103 of the Act is replaced by the following:
Agreements with provinces
103 The Minister may enter into agreements with any province respecting the distribution
of, and may pay to that province out of the Consolidated Revenue Fund, amounts received
or collected by the Receiver General under section 83 or 84 or in respect of an
undertaking given by a rights holder or former rights holder that is accepted by the Board
in lieu of holding a hearing or making an order under section 83, less any costs incurred in
relation to the collection and distribution of those amounts.
— 2017, c. 6, ss. 135(1), (6), (10)
2014, c. 39
135 (1) In this section, other Act means the Economic Action Plan 2014 Act, No. 2.
(6) On the first day on which both subsection 118(5) of the other Act and subsection
34(3) of this Act are in force, paragraph 12(1)(j.8) of the Patent Act is replaced by the
following:
(j.8) authorizing the Commissioner to, during or after the end of the time period fixed
under this Act in respect of any business before the Patent Office, for doing anything,
extend that time period, subject to any prescribed terms and conditions, if the
Commissioner considers that the circumstances justify the extension;
(10) On the first day on which both section 134 of the other Act and section 59 of
this Act are in force, subsection 118(1) of the Patent Act is replaced by the
following:
Transfer of patent
118 (1) Despite subsection 49(1), a certificate of supplementary protection, or an
application for one, is not transferable other than by the transfer of the patent, or part of
the patent, that is set out in the certificate or application.
— 2017, c. 6, ss. 136(1), (2)
2015, c. 36
136 (1) In this section, other Act means the Economic Action Plan 2015 Act, No. 1.
(2) On the first day on which both subsection 53(3) of the other Act and section 59
of this Act are in force, the portion of paragraph 12(1)(j.81) of the Patent Act before
subparagraph (i) is replaced by the following:
(j.81) respecting the correction of obvious errors in documents submitted to the
Commissioner or the Patent Office or in patents or other documents granted or issued
under this Act, other than under sections 106 to 134, including
— 2018, c. 27, s. 189
189 Subsection 36(4) of the Act is replaced by the following:
Separate applications
(4) A divisional application shall be deemed to be a separate and distinct application under
this Act, to which its provisions apply as fully as may be, and separate fees shall be paid
on the divisional application and, except for the purposes of subsections 27(6) and (7), it
shall have the same filing date as the original application.
— 2018, c. 27, s. 198(2)
198 (2) Section 124 of the Act is amended by adding the following after subsection
(2):
Regulations
(2.1) The Governor in Council may make regulations respecting
(a) factors that the court may consider, must consider or is not permitted to consider in
determining whether an act is, or is not, committed for the purpose of experimentation
relating to the subject-matter of the certificate of supplementary protection; and
(b) circumstances in which an act is, or is not, committed for the purpose of
experimentation relating to the subject-matter of the certificate of supplementary
protection.
— 2018, c. 27, s. 211
2015, c. 36
211 (1) In this section, other Act means the Economic Action Plan 2015 Act, No. 1.
(2) If section 65 of the other Act comes into force before section 189 of this Act, then
(a) that section 189 is deemed never to have come into force and is repealed; and
(b) subsection 36(4) of the Patent Act is replaced by the following:
Separate applications
(4) A divisional application shall be deemed to be a separate and distinct application under
this Act, to which its provisions apply as fully as may be, and separate fees shall be paid
on the divisional application and, except for the purposes of subsections 27(6) and (7), it
shall have the same filing date as the original application.
(3) If section 65 of the other Act comes into force on the same day as section 189 of
this Act, then that section 189 is deemed to have come into force before that section
65.
(4) On the first day on which both section 65 of the other Act and section 191 of this
Act are in force, subsection 53.1(2) of the French version of the Patent Act is
replaced by the following:
Demande divisionnaire
(2) Pour l’application du présent article, la poursuite de toute demande divisionnaire est
réputée comprendre la poursuite de la demande originale avant le dépôt de cette
demande divisionnaire.
— 2018, c. 27, s. 249
249 Section 2 of the Patent Act is amended by adding the following in alphabetical
order:
patent agent has the same meaning as in section 2 of the College of Patent Agents and
Trade-mark Agents Act; (agent de brevets)
— 2018, c. 27, s. 250(1)
250 (1) Paragraph 12(1)(j) of the Act is repealed.
— 2018, c. 27, s. 250(3)
250 (3) Subsection 12(1) of the Act is amended by adding the following after
paragraph (j.002):
(j.003) respecting the circumstances in which an applicant, patentee or other person
may or must be represented in business before the Patent Office by a patent agent
whose licence is not suspended or by another person;
— 2018, c. 27, s. 251
251 Sections 15 and 16 of the Act are repealed.
— 2018, c. 27, s. 252
252 (1) Paragraph 16.1(1)(a) of the Act is replaced by the following:
(a) it is between a patent agent and their client;
(2) Subsections 16.1(4) and (5) of the Act are replaced by the following:
Patent agents — country other than Canada
(4) A communication between an individual who is authorized to act as the equivalent of a
patent agent under the law of a country other than Canada and that individual’s client that
is privileged under the law of that other country and that would be privileged under
subsection (1) had it been made between a patent agent and their client is deemed to be a
communication that meets the conditions set out in paragraphs (1)(a) to (c).
Individual acting on behalf of patent agent or client
(5) For the purposes of this section, a patent agent or an individual who is authorized to
act as the equivalent of a patent agent under the law of a country other than Canada
includes an individual acting on their behalf and a client includes an individual acting on
the client’s behalf.
— 2018, c. 27, s. 253
253 Section 78.1 of the Act is replaced by the following:
Patent applications filed before October 1, 1989
78.1 Applications for patents in Canada filed before October 1, 1989 shall be dealt with
and disposed of in accordance with section 38.1 and with the provisions of this Act, other
than section 15, as they read immediately before October 1, 1989.
— 2018, c. 27, ss. 259(1), (3), (5) to (11)
2014, c. 39
259 (1) In this section, other Act means the Economic Action Plan 2014 Act, No. 2.
(3) If subsection 250(2) of this Act comes into force before subsection 118(4) of the
other Act, then, on the day on which that subsection 118(4) comes into force,
paragraphs 12(1)(j.001) and (j.002) of the Patent Act are repealed.
(5) If subsection 118(4) of the other Act comes into force before subsection 250(3) of
this Act, then
(a) that subsection 250(3) is repealed; and
(b) on the day on which section 249 of this Act comes into force, paragraph 12(1)
(j.01) of the Patent Act is replaced by the following:
(j.01) respecting the circumstances in which an applicant, patentee or other person
may or must be represented in business before the Patent Office by a patent agent
whose licence is not suspended or by another person;
(6) If subsection 250(3) of this Act comes into force before subsection 118(4) of the
other Act, then, on the day on which that subsection 118(4) comes into force,
(a) paragraph 12(1)(j.003) of the Patent Act is repealed; and
(b) paragraph 12(1)(j.01) of the Patent Act is replaced by the following:
(j.01) respecting the circumstances in which an applicant, patentee or other person
may or must be represented in business before the Patent Office by a patent agent
whose licence is not suspended or by another person;
(7) If subsection 118(4) of the other Act comes into force on the same day as
subsection 250(3) of this Act, then
(a) that subsection 250(3) is deemed never to have come into force and is
repealed; and
(b) paragraph 12(1)(j.01) of the Patent Act is replaced by the following:
(j.01) respecting the circumstances in which an applicant, patentee or other person
may or must be represented in business before the Patent Office by a patent agent
whose licence is not suspended or by another person;
(8) If section 251 of this Act comes into force before section 119 of the other Act,
then that section 119 is repealed.
(9) If section 119 of the other Act comes into force on the same day as section 251
of this Act, then that section 119 is deemed never to have come into force and is
repealed.
(10) If section 139 of the other Act comes into force before section 253 of this Act,
then that section 253 is repealed.
(11) If section 139 of the other Act comes into force on the same day as section 253
of this Act, then that section 253 is deemed never to have come into force and is
repealed.
— 2018, c. 27, s. 260
2014, c. 39 and 2015, c. 36
260 (1) The following definitions apply in this section.
first Act means the Economic Action Plan 2014 Act, No. 2. (première loi)
second Act means the Economic Action Plan 2015 Act, No. 1. (deuxième loi)
(2) On the first day on which both section 139 of the first Act and section 251 of this
Act are in force,
(a) paragraph 78.22(b) of the Patent Act is amended by striking out the reference
to “15” and by making any grammatical changes that the circumstances require;
and
(b) section 64 of the second Act, if it is not in force on that day, is amended by
striking out the reference to “15” in the paragraph 78.22(b) that it enacts and by
making any grammatical changes to that paragraph that the circumstances
require.
(3) If subsection (2) produces its effects on the day on which section 64 of the
second Act comes into force, then that section 64 is deemed to have come into
force before that subsection produces its effects.
(4) On the first day on which section 139 of the first Act is in force and either section
205 of this Act is in force or subsection 210(6) of this Act has produced its effects,
(a) paragraph 78.22(b) of the Patent Act is amended by striking out the reference
to “15.1” and by making any grammatical changes that the circumstances
require; and
(b) section 64 of the second Act, if it is not in force on that day, is amended by
striking out the reference to “15.1” in the paragraph 78.22(b) that it enacts and by
making any grammatical changes to that paragraph that the circumstances
require.
(5) If subsection (4) produces its effects on the day on which section 64 of the
second Act comes into force, then that section 64 is deemed to have come into
force before that subsection produces its effects.