Patent Act (R.S.C., 1985, c. P-4)

Marginal note: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  • (b) [Repealed, 1993, c. 44, s. 197]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.

• Marginal note: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]

• Marginal note: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.

67 [Repealed, 1993, c. 44, s. 198]

Marginal note:Contents of applications

• 68 (1) Every application presented to the Commissioner under section 65 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.

• Marginal note: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.

Marginal note: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.

• Marginal note: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.

• Marginal note: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.

• Marginal note: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.

Marginal note: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.

Marginal note: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.

72 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 25]

Abandonment and Reinstatement of Applications

Marginal note: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; or

  • (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.

  • (f) [Repealed, 2015, c. 36, s. 62]

• Marginal note:Deemed abandonment in prescribed circumstances

  (2) An application shall also be deemed to be abandoned in any other circumstances that are prescribed.

• Marginal note: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.

• Marginal note: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.

• (4) [Repealed, 2015, c. 36, s. 62]

• Marginal note:Filing date

  (5) An application that is reinstated retains its filing date.

Marginal note: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.

• Marginal note: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.

Offences and Punishment

74 [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 26]

Marginal note: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.

• Marginal note: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.

Marginal note: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.

Marginal note: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.

• Marginal note: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.

• Marginal note: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.

• Marginal note: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.