Canada: Omnibus budget bill changes exceptions to patent infringement

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Canada: Omnibus budget bill changes exceptions to patent infringement

In the omnibus budget bill passed by the Canadian parliament on December 3 2018 were numerous amendments to Canada's IP statutes, including to sections of the Patent Act that provide exceptions to infringement.

Exception for experimental use

The changes to the Patent Act include moving the exception for experimental use under subsection 55.2(6) to its own section, 55.3, and potentially altering its scope. Section 55.3 also allows the government to enact regulations setting out factors that the court may consider, must consider or cannot consider in determining whether an act is committed for experimental purposes. The changes also provide for regulations that set out circumstances under which an act is, or is not, committed for experimental purposes.

The government has yet to announce plans for such regulations. Until then, the nature and scope of the existing exception for experimental use remains unchanged.

Exception for acts committed prior to the claim date

The changes also include replacing Section 56 of the Patent Act, expanding the scope of the infringement defence arising from acts committed prior to the asserted patent's claim date. Previously, a person purchasing, constructing or acquiring the subject matter of a claim before the claim date had the right to use or sell what had been purchased, constructed or acquired without being liable for infringement. A defence to infringement now arises when a person in good faith before the claim date, commits, or makes serious and effective preparations to commit, an act that would otherwise be infringing. This must have been done without obtaining knowledge of the claim's subject matter from the patent applicant.

The exemption to infringement also extends to future third parties. When the act includes a service, users of the service are also covered by the exemption. If committing the act resulted in an article, users or buyers of such an article are also exempted from infringement.

If the act giving rise to the exception was committed, or the preparations to commit the act were made, in the course of a business and this portion of the business is then sold, the exception to infringement is transferred and does not remain with the seller.

These changes introduce uncertainty into determining whether an allegation of infringement is justified, even though the requirement for good faith and the extension to preparatory acts are found in similar provisions in other jurisdictions. It is unclear whether the Canadian courts will look to or follow foreign jurisprudence when they are called to provide guidance regarding the meaning and scope of "serious and effective preparations" to commit an otherwise infringing act and when an act is done in good faith.

chong.jpg
daley.jpg

Jonathan Chong

Brian Daley


Norton Rose Fulbright Canada LLPSuite 3800, Royal Bank Plaza, South Tower, 200 Bay Street, PO Box 84Toronto  Ontario  M5J 2Z4CanadaTel: +1 416 216 4000www.nortonrosefulbright.com

more from across site and SHARED ros bottom lb

More from across our site

A settlement between Philips and Transsion and a loss for AstraZeneca in the UK were also among the top talking points
Working with Harvey and Microsoft, the firm has been at the forefront of developing AI tools for its lawyers, and is now exploring new projects and business models
The Emotional Perception AI case, which centres on the patentability of an artificial neural network, will be heard next week
Developments included a court order related to InterDigital’s anti-anti-suit injunction against Disney, and clarification on recoverable costs
Partners at Foley Hoag examine how recent CJEU jurisprudence may serve as a catalyst for recalibrating US judicial reluctance to entertain foreign patent claims
International law firms have high hopes for their IP practices in Saudi Arabia, with many opening offices, but recruiting and retaining talent in the Kingdom presents unique challenges
Patrick Ogola joins us for our ‘Five minutes with’ series to discuss helping African entrepreneurs on the global stage, and explains why young lawyers should speak up
Heli Pihlajamaa, the EPO’s principal director for patent law and procedures, joins us to take stock of the unitary patent following its second anniversary
Kelly Thompson, chair of South African firm Adams & Adams, discusses self-belief, self-doubt, and the importance of saying yes
The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Gift this article