Misc. Patent Law

Question 1

Liability for patent infringement

Answer 1

sub-section 55(1) of Act.

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.

Question 2

Liabilities before patent issues

Answer 2

sub-section 55(2) of the Act.

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.

Question 3

Exceptions (7)

Answer 3

section 19 - government may apply to use patented invention;

section 21.01 - 21.2 - use of patents for international humanitarian purposes;

section 23 - patented invention in vessels, aircrafts, etc. of any country;

sub-section 55.2(1) - use of patent for development and submission of information required by any law;

sub-section 55.2(6) - experimental, non-commercial use of patent;

section 56 - prior use right;

section 65 - abuse of patent right - compulsory license;

Question 4

Damage (improper license by co-owner

Answer 4

Accounting for profit earned by the improper exploitation of the jointly owned patent.

Marchand v. Peloquin

Question 5

Damage or accounting for profit - definitions

Answer 5

Damage represents the patentee‘s loss, which may include loss of profit from sales or loss of loyalty payments. Accounting of profits, by contrast, is measured by the profits made by the infringer.

Monsanto Canada Inc v. Schmeiser 2004

Question 6

Damage (NPE)

Answer 6

Damage would be based on a reasonable royalty rather than lost of sales, if the patentee does not manufacture or sell the patented products.

Jay-Lor International Inc. v. Penta Farm Systems Ltd.

Question 7

Assessment of damage

Answer 7

Non-infringement alternative may be relevant to assessment of damage.

Apotex v. Merck & Co. Inc. 2015 FCA

Question 8

Test for non-infringing alternative for assessing damage

Answer 8

1. Is the alleged non-infringing alternative a true substitute and thus a real alternative?
2. Is the alleged non-infringing alternative a true alternative in the sense of being economically viable?
3. At the time of infringement, does the infringer have a sufficient supply of the non-infringing alternative to replace the non-infringing sales? Another way of framing this inquiry is could the infringer have sold the non-infringing alternative?
4. Would the infringer actually have sold the non-infringing alternative?

Apotex v. Merck & Co. Inc. 2015 FCA

Question 9

Test for Punitive damage

Answer 9

When a party’s conduct has been malicious, oppressive and high-handed, or offends the court’s sense of decency, or represents a marked departure from ordinary standard of decent behavior, and an accounting of profits or compensatory damages would be inadequate to achieve the objective of retribution, deterrence and denunciation of such conduct, punitive damage may be appropriate.

Bell Helicopter Textron Canada Ltd. v. Eurocopter

Question 10

Test for Interlocutory injunction

Answer 10

1) there is a serious issue to be tried.

2) the plaintiff will suffer irreparable harm if it is not granted.

3) the balance of convenience.

Pfizer Ireland Pharmaceuticals v. Lilly Icos LLC 2003 FC