Canada - Bereskin & Parr LLP

The court system

1. When are disputes heard by the national patent office?
The Canadian Patent Office hears appeals from Patent Examiner decisions to refuse a patent application. These appeals are heard by a Patent Appeal Board which advises the Commissioner of Patents. The Commissioner of Patents issues a formal Commissioner’s Decision with reasons and may, based on the findings of the Patent Appeal Board: confirm the refusal of the patent application, overturn the Examiner’s rejection and order that the application be further examined, or identify certain amendments required to bring the application into condition for allowance. The Commissioner’s Decision may be further appealed to the Federal Court.

An issued Canadian patent may be re-examined at any point during its term. The patent is re-examined by a Re-examination Board within the patent office constituted for the purpose. The Re-examination Board may cancel or confirm existing claims in the patent and may incorporate additional claims, which may not be broader than the existing patent claims, into the patent. Decisions of the Re-examination Board may be appealed to the Federal Court.

An issued Canadian patent may also be re-issued during the first four years of its term. Re-issue proceeds before an Examiner and may result in broader or narrower claims. The patentee may appeal the Examiner’s decision to the Patent Appeal Board and to the Federal Court as described above.

Canada does not have post-grant opposition proceedings.

2. Where are the trial courts (centralized or regional)?
Most patent cases are tried in the Federal Court. The Federal Court is a single court with national jurisdiction. It has exclusive jurisdiction over matters of the records of the patent office, including expungement of patents. It hears cases in most major cities across Canada. There is one pool of judges which hears cases regardless of where the trial takes place.

Patent cases may also be brought in the Superior Court of any province where an infringement occurs, although those courts do not have jurisdiction to expunge a patent, and the effect of any judgment is restricted to the province in which the action is brought.

3. Are validity and infringement trials heard together?
Infringement and invalidity trials are usually heard together, but may be brought separately. Often, invalidity is raised as a counterclaim to infringement allegations, and the issues are heard in the same trial.

4. What is the composition of the trial panel (one or more judges / are they specialists)?
A single judge hears a patent trial. Although there are no “specialist” judges, the Federal Court is experienced in patent matters. A number of judges have a wealth of experience with intellectual property cases, and in recent years, several highly experienced patent lawyers have been appointed judges of the Federal Court.

5. Where is/are the appeal courts?
There is an automatic right of appeal from the Federal Court to the Federal Court of Appeal. Like the Federal Court, the Federal Court of Appeal is a national court based in Ottawa. It hears appeals in most major cities across Canada.

6. What is the composition of the appeal panel (one or more judges / are they specialists)?
The Federal Court of Appeal typically sits in a panel of three judges for appeals of trial decisions. There are no specialist judges, but like the Federal Court, there are a number of judges who are very experienced in patent cases.

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Bhupinder Randhawa

Bhupinder Randhawa

Head of the Electrical and Computer Technology Practice Group, Bhupinder’s practice focuses on patent and technology law, particularly obtaining, evaluating and leveraging intellectual property righ …

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Andrew McIntosh

Andrew McIntosh

Andrew’s practice focuses on intellectual property litigation relating to patents, trademarks and trade secrets. With extensive pharmaceutical patent litigation experience, including notice of compl …

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Amrita V. Singh

Amrita V. Singh

Her practice focuses on litigation in all areas of intellectual property, including patents, trademarks, copyright and confidential information. …

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Brazil - Licks Attorneys

The court system

1. When are disputes heard by the national patent office?
The patent office hears post-grant invalidity disputes filed by third parties, according to art. 51 of the Patent Statute (Statute #9,279/96). The Patent Office does not have statutory authority to hear infringement disputes.

2. Where are the trial courts (centralised or regional)?
As a federation, Brazil is divided in 27 states, each with its own court system, which together with the federal court system adjudicate IP disputes. Brazil adopts the German based bifurcated system, where the federal court system hears invalidity cases and the state courts system hears infringement.

Some states have specialized IP courts. Rio de Janeiro is the only state that has federal district courts specialized to hear IP validity cases.

3. Are validity and infringement trials heard together?
No. State Courts decide infringement cases and Federal Courts decide validity cases. Courts are independent from the administration.

Infringement lawsuits can be filed in defendants’ principal place of business or where infringement occurs.

According to art. 56, paragraph first, of the Patent Statute (Statute #9,279/96), patent invalidity can be raised as a matter of defence. However, the Superior Court of Justice decided in 2013 that invalidity can only be argued before the Federal Courts having the BRPTO as mandatory defendant (Case REsp #1.132.449). The case mitigated the use of invalidity defences by accused infringers during infringement litigation.

Validity lawsuits have the BRPTO (INPI) as a mandatory party, named as co-defendant together with the patent owner. Venue is established at the patent owner principal place of business or at the INPI’s headquarters (Rio de Janeiro or the legal venue, Brasilia, established by art. 1st of the Statute #5,648/70), at plaintiff’s choice. If the patent owner is a foreign company, art. 217 of the Statute #9,279/96 and unsettled case law, establish that the lawsuit can be filed in the location of the lawyer at law representing the patent owner.

4. What is the composition of the trial panel (one or more judges / are they specialists)?
The trial is composed by a single judge, usually with no technical background. In view of the lack of technical background, judges hearing infringement and validity matters heavy rely in the technical report issued by an unbiased court-appointed expert.

5. Where is/are the appeal courts?
In the State Circuit Appellate (hearing infringement), each state (for instance Rio de Janeiro or São Paulo) has an appellate court. The state appellate court has jurisdiction to hear appeals challenging decisions issued by the trial courts of local cities and municipalities of the state.

In the Federal Circuit (hearing validity), there are five regional Federal Appellate Circuit Courts (First Circuit, Second Circuit, Third Circuit, Fourth Circuit and Fifth Circuit). These five circuits are responsible to hear appeals challenging decisions issued by federal district courts inside of each jurisdiction.

6. What is the composition of the appeal panel (one or more judges / are they specialists)?
The panels are usually composed of three appellate judges with no technical background. Appellate Judges rely heavily in the technical report issued by the court-appointed expert. The Court of Appeals for the Second Circuit (located in Rio de Janeiro) has two specialized appeal panels to hear IP validity cases.

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Otto Licks

Otto Licks, partner at Licks Attorneys, has over 20 years’ experience. He has established a solid reputation as a trial and litigation specialist, advising clients in areas such as intellectual pro …

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Roberto Rodrigues

Roberto Rodrigues is an attorney at Licks Attorneys. Bachelor of laws (LL.B) at Universidade Federal do Rio de Janeiro and post-graduating in civil procedure. Roberto’s practice concentrates on pate …

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