Canadian Patent Law 2020: A Year In Review

• Published date: 11 February 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Real Estate and Construction, Patent, Trials & Appeals & Compensation, Construction & Planning
• Law Firm: Smart & Biggar
• Author: Ms Artemis Lai

2020 was an unusual year by all accounts. In this article we take a look back at developments in Canadian patent law in the past year, including the Government of Canada's and the Canadian Patent Office's response to COVID-19, the Canadian Patent Office's new guidelines for patentable subject matter and some notable judgements from the Federal Court and the Federal Court of Appeal.

Table of Contents

• COVID-19 Emergency Response Act
• COVID-19 Designated Days
• United States-Mexico-Canada Agreement (USMCA) ratified
• Canadian Patent Office's "problem-solution" approach for determining patentable subject matter rejected by the Federal Court
• Contours of section 53.1 (admission of prosecution history in evidence) further delineated
• Federal Court can adjudicate contractual disputes which arise in patent matters and provide statutorily granted remedies
• Federal Court weighs in on "reasonably inferable"
• Induced infringement test clarified
• Federal Court of Appeal affirms principles in an account of profits and upholds largest dollar award for patent infringement
• Federal Court of Appeal comments on a number of different issues in REMICADE appeal
• Continuing trend of granting summary judgment in patent proceedings

COVID-19 Emergency Response Act

As a result of the COVID-19 outbreak, the Government of Canada enacted the COVID-19 Emergency Response Act, which received Royal Assent on March 25, 2020. Of significance for Canadian patent law, the Emergency Response Act amended the Patent Act to add a new section 19.4.

New section 19.4 requires the Commissioner of Patents to, on the application of the Minister of Health, authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to a public health emergency described in the application. The patentee is entitled to remuneration in an amount that the Commissioner considers adequate in the circumstances, taking into account the economic value of the authorization and the extent of the making, constructing, using and selling of the patented invention. Such authorizations can have a term of no more than one year after grant, and no such authorizations are to be made after September 30, 2020.

No authorizations under section 19.4 appear to have been made before the September 30, 2020 deadline.

For more information on the Emergency Response Act, refer to our previous article here.

COVID-19 Designated Days

Also as a result of the COVID-19 outbreak, the Commissioner designated the period between March 16, 2020 to August 28, 2020 (inclusively) under section 78(2) of the Patent Act as designated days, effectively suspending most Canadian Patent Office deadlines. The first business day after this continuous period of designated days was August 31, 2020.

The Canadian Patent Office recently released a new Practice Notice to clarify handling of deadlines which fell within the period of designated days. Notably:

• the original filing date of applications will be used to determine subsequent maintenance fees due dates, not August 31, 2020; and

• all applications and patents with a date of deemed abandonment or deemed expiry which fell within the period of designated days now have August 31, 2020 as the date of deemed abandonment or deemed expiry.

United States-Mexico-Canada Agreement (USMCA) ratified

The new trade agreement between Canada, the United States and Mexico (the Canadian government refers to the trade agreement as the Canada-United States-Mexico Agreement (CUSMA), rather than the USMCA) came into force on July 1, 2020 via the Canada-United States-Mexico Agreement Implementation Act which itself received royal assent on March 13, 2020.

The USMCA affects intellectual property rights in Canada, including patent rights. For greater detail on its effects, refer to our previous article here.

One significant change for Canadian patent law will be patent term adjustment to compensate for unreasonable delays during examination of an application caused by the Canadian Patent Office. Unreasonable delay may be found if a Canadian patent issues:

• more than five years from the date of filing of the application in the territory; or

• more than three years after a request for examination of the application has been made.

As noted above, the CUSMA Implementation Act brought the USMCA into force on July 1, 2020. The CUSMA Implementation Act itself included amendments to the Copyright Act, the Trademarks Act and the Food and Drug Act, but did not include any amendments to the Patent Act. Accordingly, patent term adjustment is not yet available in Canada. Canada has a 4.5-year transition period from July 1, 2020 to implement this obligation.

Canadian Patent Office's "problem-solution" approach for determining patentable subject matter rejected by the Federal Court and the Canadian Patent Office's subsequent new guidelines

In Yves Choueifaty v Attorney General of Canada, 2020 FC 837 [Choueifaty], the Federal Court rejected the Canadian Patent Office's previous "problem-solution approach" for determining patentable subject matter. The Federal Court specifically held that this previous approach disregarded the intention of the inventor contrary to purposive claims construction required by the Supreme Court of Canada in its decisions in Free World Trust v Électro Santé Inc, 2000 SCC 66 [Free World Trust] and Whirlpool Corp v Camco Inc, 2000 SCC 67 [Whirlpool].

For more information on the Cho...