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.