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What is patent infringement?
In Canada, the Patent Act discusses the rights of a patentee of a Canadian patent. The Patent Act also prohibits others from interfering with the rights of a patentee. For patent infringement to occur in Canada, there must be a valid Canadian patent that covers the infringed invention.
There are 2 types of patent infringement in Canada:
- direct infringement: someone makes, constructs, uses or sells a patented invention without the patent holder's consent
- induced infringement: an inducer actively does something leading a direct infringer to infringe (e.g. a seller [the inducer] provides parts of a patented invention to a third party [the infringer] with instructions on how to assemble those parts into a patented invention, and the third party assembles those parts into the patented invention)
Manufacturing, using or selling a patented invention without the patent owner's consent is prohibited:
- You cannot import inventions into a country where they are patented, even if they are manufactured elsewhere. The same is true for patented machines or processes to manufacture a product when the process is performed outside Canada and the product of the process is imported into Canada. So, you still risk being sued for infringement if you import products into a country where the process used to make those products is patented. For example, if a process to make a new paint is patented in Canada, you may not be able to manufacture that paint in another country and then import the paint into Canada.
- Limitations in licensing contracts must also be respected, and failure to do so may constitute infringement or, in certain cases, a breach of the license agreement. For example, a license holder cannot export a patented invention that is licensed for use only in Canada to another country.
While the Canadian Intellectual Property Office grants intellectual property (IP) rights such as trademarks, patents, industrial designs and copyright, it does not police exclusive rights or monitor the marketplace for potential infringement.
Enforcement of IP rights is the responsibility of the IP holder, not the IP office.
Who can sue for patent infringement
- The owner of the patent
- Exclusive and non-exclusive licensees (which may include purchasers in some cases).
What you need
To claim that patent rights have been infringed, you need the following:
- a granted patent
- sufficient evidence that 1 party has either directly infringed the patent or induced another to infringe the patent
You need evidence to support a valid claim. This means that you need to prove which parts of your IP rights have been infringed by collecting and using evidence. For example, to make a valid claim for patent infringement, you must prove that all essential elements in a patent claim are in the infringing product or process.
The patent holder does not have to prove that the patent is valid in court, but the alleged infringer will have the opportunity to try to prove that the patent is invalid. Keep well-documented records of your invention. These can help to establish the validity of your patent. Employee contracts may help determine ownership of inventions created while someone is employed. Statements made to the Patent Office in the course of applying for a patent may be used against you when the scope of your patent is being determined in court. It is therefore recommended that you consult a registered patent agent when applying for a patent in Canada.
When to enforce your patent
You can only enforce a patent after the patent is granted, but the period before the granting of the patent can be very important. For example, someone may have taken actions that would have amounted to infringement if the patent had been granted at that time. In these instances, you may be entitled to reasonable compensation for those actions.
All actions for infringement must be brought within 6 years of the act of infringement.
These time limits are simplified. Consider consulting an IP lawyer for more precise details.
Get professional help
Solving conflicts involving IP rights is often complex. Consult an IP professional, such as an IP agent or lawyer, to discuss the next steps if you believe your IP rights are being infringed upon.
If IP infringement is happening in another country, a Canadian IP professional may be able to coordinate with an IP professional in the other country to enforce your IP rights.
Learn about how to stop others from using your IP unlawfully and enforce your IP rights.