Book: Canadian Patent Law - Infringement Flashcards
Name the ways to challenge a patent or patent application (with support).
If application is still being prosecuted:
a) file a protest under section 10 of the Patent Rules;
b) make a filing of prior art under section 34.1 of the Patent Act.
If the patent has issued:
a) file request for re-examination (48.1 of the Patent Act)
b) launch an action before the Federal Court under section 60 of the Patent Act
- 60(1) = impeachment
- 60(2) = for a declaration of non-infringement
What section of the Patent Act gives a defendant the right to put the validity of a patent into question in the event of being named in an infringement suit?
Section 59 of the Patent Act
“Defence
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”
Briefly describe section 59 of the Patent Act.
Gives a defendant the right to put the validity of a patent into question in the event of being named in an infringement suit.
Name possible defences to an action for infringement.
- Arguing non-infringement (e.g., showing that not all claim elements are satisfied).
- Impeachment as counterclaim - make patent invalid
- Gillette Defence (TO BE FINISHED)
How many years after the act of infringement can an action for infringement be taken?
Six years (Patent Act section 55.01)
Explain de difference between a protest and submission of prior art (Rule 12 of the Patent Rules)
The essential distinction between a protest and a submission of prior art is that a protest may consist of any argument against patentability. For example, a protest might constitute an argument as to why the specification, as filed, does not include an enabling disclosure, is overbroad, or ambiguous, whereas a submission under section 34.1 must be restricted to prior art. As a practical matter, any third-party submission to the Commissioner regarding a patent application will sensibly include at least one argument based on the presence of prior art, in which case section 34.1 should be invoked in the letter and a copy of the prior art attached
List the reasons that can be invoked against a patent in an impeachment action.
These range from:
- lack of utility,
- statutory subject-matter,
- anticipation,
- obviousness or
improper bargain imbalances between the disclosure and the claims, such as
- insufficient disclosure and
- claims broader than the disclosure or invention (overbreath).
Name one or more remedies that a successful plaintiff in an action for patent infringement can look forward to.
1) Damages (i.e., pecuniary losses suffered by the plaintiff resulting from the infringement of the patent, which may take the form of lost profits on sales, etc. or royalty payments.
2) Accounting of profits (i.e., the profits made by the defendant resulting from the infringement of the patent).
3) Reasonable Compensation – for the use of the invention between the time of publication of the patent application and grant of the patent.
4) Injunction – a court order preventing the defendant from continued infringement of the patent.
5) Delivery-up or Destruction – of the infringing goods.
6) Costs – of proceedings to trial, including legal fees, etc.
7) Interest – on any monetary award of damages or profits due to the time lag from the start of the infringing activities until the decision at trial.
8) Aggravated, punitive or exemplary damages – in rare cases where the conduct of the defendant is particularly reprehensible, and the court wishes to send a clear message to others that such conduct is unacceptable.
9) Any other loss for which the plaintiff can demonstrate causation that is not too remote.
Under Section 55(1) of the Patent Act, the infringer is liable for “all damages sustained … by reason of infringement”. What possible types of damages.
“All damage sustained” includes:
- lost profits from direct sales of the invention;
- lost profits on sales of related goods or services;
- lost profits due to depression of prices; and
- lost income from licencing opportunities, among others.
What is the “but-for” test to determine causation used the courts?
The notion is to put the plaintiff in the position they would have occupied but for the infringement by the defendant, while not forcing the defendant to pay for injuries caused by “factors unconnected to the defendant and not the fault of anyone”. This requires a court to attempt to determine what would have happened had the defendant not infringed the patent.
Is the existence of non-infringing alternatives a factor when determining damages in an infringement action?
Yes. The availability of non-infringing alternatives is accepted by Canadian courts as a material factor in assessing damages. “.. [T]he presence of a non-infringing alternative will reduce the damages an infringer is liable to pay if the infringer establishes that it could and would have adopted the alternative, and that the alternative is economically viable and a true substitute for the product infringed.” (AFD Petroleum Ltd. V. Frac Shack Inc., [2018] F.C.J. No. 771, 2018 FCA 140 at para. 62 (F.C.A.). In the context of calculating damages in a patent infringement suit, the Federal Court of Appeal determined that it is relevant to consider whether the infringer had a non-infringing alternative (“NIA”) that it could have used instead.
When accounting the infringer’s profits, name the two approaches that have been used by Canadian Courts.
A. A simple accounting of profits (difference between the amount of revenue derived from sales of infringing products and the costs associated with producing those products).
B. Differential accounting for profits (relies on the difference between the actual profits realized by the infringer and the profits that would have been realized by the infringer had they used the best non-infringing alternative available to them at the time.)
For a simple accounting of profits, the burden of proof rests on the plaintiff or the defendant?
The burden of proof rests mostly on the defendant. However, the plaintiff must establish the amount of revenue received by the defendant, which the defendant will be required to reveal on discovery and examination. Once this is accomplished, the defendant then is given a chance to prove the costs and deductions from that revenue as well as apportionments in order to arrive at a figure for profits earned.
