INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - CANADA
64. [Repealed, 1993, c. 44, s. 195]
Abuse of rights under patents
65. (1) The Attorney General of Canada or any person interested may, at
after the expiration of three years from the date of the grant of a patent,
apply to the Commissioner alleging in the case of that patent that there has
been an abuse of the exclusive rights thereunder and asking for relief under
What amounts to abuse
(2) The exclusive rights under a patent shall be deemed to have been
any of the following circumstances:
(a) and (b) [Repealed, 1993, c. 44, s. 196]
(c) if the demand for the patented article in Canada is not being met to
adequate extent and on reasonable terms;
(d) if, by reason of the refusal of the patentee to grant a licence or
on reasonable terms, the trade or industry of Canada or the trade of any person
or class of persons trading in Canada, or the establishment of any new trade or
industry in Canada, is prejudiced, and it is in the public interest that a
licence or licences should be granted;
(e) if any trade or industry in Canada, or any person or class of
engaged therein, is unfairly prejudiced by the conditions attached by the
patentee, whether before or after the passing of this Act, to the purchase,
hire, licence or use of the patented article or to the using or working of the
patented process; or
(f) if it is shown that the existence of the patent, being a patent for
invention relating to a process involving the use of materials not protected by
the patent or for an invention relating to a substance produced by such a
process, has been utilized by the patentee so as unfairly to prejudice in Canada
the manufacture, use or sale of any materials.
(3) and (4) [Repealed, 1993, c. 44, s. 196]
Definition of "patented article"
(5) For the purposes of this section, the expression "patented
articles made by a patented process.
R.S., 1985, c. P-4, s. 65; 1993, c. 2, s. 5, c. 15, s. 51, c. 44, s.
Powers of Commissioner in cases of abuse
66. (1) On being satisfied that a case of abuse of the exclusive rights
patent has been established, the Commissioner may exercise any of the following
powers as he may deem expedient in the circumstances:
(a) he may order the grant to the applicant of a licence on such terms
Commissioner may think expedient, including a term precluding the licensee from
importing into Canada any goods the importation of which, if made by persons
other than the patentee or persons claiming under him, would be an infringement
of the patent, and in that case the patentee and all licensees for the time
being shall be deemed to have mutually covenanted against that importation;
(b) [Repealed, 1993, c. 44, s. 197]
(c) if the Commissioner is satisfied that the exclusive rights have been
in the circumstances specified in paragraph 65(2)(f), he may order the grant of
licences to the applicant and to such of his customers, and containing such
terms, as the Commissioner may think expedient;
(d) if the Commissioner is satisfied that the objects of this section
section 65 cannot be attained by the exercise of any of the foregoing powers,
the Commissioner shall order the patent to be revoked, either forthwith or after
such reasonable interval as may be specified in the order, unless in the
meantime such conditions as may be specified in the order with a view to
attaining the objects of this section and section 65 are fulfilled, and the
Commissioner may, on reasonable cause shown in any case, by subsequent order
extend the interval so specified, but the Commissioner shall not make an order
for revocation which is at variance with any treaty, convention, arrangement, or
engagement with any other country to which Canada is a party; or
(e) if the Commissioner is of opinion that the objects of this section
section 65 will be best attained by not making an order under the provisions of
this section, he may make an order refusing the application and dispose of any
question as to costs thereon as he thinks just.
Proceedings to prevent infringement
(2) A licensee under paragraph (1)(a) is entitled to call on the
take proceedings to prevent infringement of the patent, and if the patentee
refuses or neglects to do so within two months after being so called on, the
licensee may institute proceedings for infringement in his own name as though he
were the patentee, making the patentee a defendant, but a patentee added as
defendant is not liable for any costs unless he enters an appearance and takes
part in the proceedings.
Service on patentee
(3) Service on a patentee added as a defendant may be effected by
writ at his address or at the address of his representative for service as
appearing in the records of the Patent Office.
Considerations by which Commissioner to be guided
(4) In settling the terms of a licence under paragraph (1)(a), the
shall be guided as far as possible by the following considerations:
(a) he shall endeavour to secure the widest possible use of the
Canada consistent with the patentee deriving a reasonable advantage from his
(b) he shall endeavour to secure to the patentee the maximum advantage
consistent with the invention being worked by the licensee at a reasonable
profit in Canada; and
(c) he shall endeavour to secure equality of advantage among the several
licensees, and for this purpose may, on due cause being shown, reduce the
royalties or other payments accruing to the patentee under any licence
R.S., 1985, c. P-4, s. 66; R.S., 1985, c. 33 (3rd Supp.), s. 24; 1993,
c. 44, s.
67. [Repealed, 1993, c. 44, s. 198]
Contents of applications
68. (1) Every application presented to the Commissioner under section 65
(a) set out fully the nature of the applicant's interest, the facts on
applicant bases his case and the relief that he seeks; and
(b) be accompanied by statutory declarations verifying the applicant's
and the facts set out in the application.
(2) The Commissioner shall consider the matters alleged in the
declarations referred to in subsection (1), and, if satisfied that the applicant
has a bona fide interest and that a case for relief has been made, he shall
direct the applicant to serve copies of the application and declarations on the
patentee or his representative for service and on any other persons appearing
from the records of the Patent Office to be interested in the patent, and the
applicant shall advertise the application in the Canada Gazette and the Canadian
Patent Office Record.
R.S., c. P-4, s. 70.
Opposition and counter statement
69. (1) If the patentee or any person is desirous of opposing the
any relief under sections 65 to 70, he shall, within such time as may be
prescribed or within such extended time as the Commissioner may on application
further allow, deliver to the Commissioner a counter statement verified by a
statutory declaration fully setting out the grounds on which the application is
to be opposed.
Attendance for cross-examination
(2) The Commissioner shall consider the counter statement and
referred to in subsection (1) and may thereupon dismiss the application if
satisfied that the allegations in the application have been adequately answered,
unless any of the parties demands a hearing or unless the Commissioner himself
appoints a hearing, and in any case the Commissioner may require the attendance
before him of any of the declarants to be cross-examined or further examined on
matters relevant to the issues raised in the application and counter statement,
and he may, subject to due precautions against disclosure of information to
rivals in trade, require the production before him of books and documents
relating to the matter in issue.
Reference to Federal Court
(3) In any case where the Commissioner does not dismiss an application
provided in subsection (2), and
(a) if the parties interested consent, or
(b) if the proceedings require any prolonged examination of documents or
scientific or local investigation that cannot in the opinion of the Commissioner
conveniently be made before him,
the Commissioner, with the approval in writing of the Minister, may
whole proceedings or any issue of fact arising thereunder to be referred to the
Federal Court, which has jurisdiction in the premises.
(4) Where the whole proceedings are referred under subsection (1), the
decision or order of the Federal Court is final, and where a question or issue
of fact is referred under that subsection, the Court shall report its findings
to the Commissioner.
R.S., c. P-4, s. 71; R.S., c. 10(2nd Supp.), s. 64.
Licence deemed to be by deed
70. Any order for the grant of a licence under this Act, without
any other method of enforcement, operates as if it were embodied in a deed
granting a licence executed by the patentee and all other necessary parties.
R.S., c. P-4, s. 72.
Appeal to Federal Court
71. All orders and decisions of the Commissioner under sections 65 to 70
subject to appeal to the Federal Court, and on any such appeal the Attorney
General of Canada or such counsel as he may appoint is entitled to appear and be
R.S., c. P-4, s. 73; R.S., c. 10(2nd Supp.), s. 64.
72. [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 25]
AND REINSTATEMENT OF APPLICATIONS
Deemed abandonment of applications
73. (1) An application for a patent in Canada shall be deemed to be
the applicant does not
(a) reply in good faith to any requisition made by an examiner in
with an examination, within six months after the requisition is made or within
any shorter period established by the Commissioner;
(b) comply with a notice given pursuant to subsection 27(6);
(c) pay the fees payable under section 27.1, within the time provided by
(d) make a request for examination or pay the prescribed fee under
35(1) within the time provided by the regulations;
(e) comply with a notice given under subsection 35(2); or
(f) pay the prescribed fees stated to be payable in a notice of
patent within six months after the date of the notice.
Deemed abandonment in prescribed circumstances
(2) An application shall also be deemed to be abandoned in any other
circumstances that are prescribed.
(3) An application deemed to be abandoned under this section shall be
if the applicant
(a) makes a request for reinstatement to the Commissioner within the
(b) takes the action that should have been taken in order to avoid the
(c) pays the prescribed fee before the expiration of the prescribed
Amendment and re-examination
(4) An application that has been abandoned pursuant to paragraph (1)(f)
reinstated is subject to amendment and further examination.
Original filing date
(5) An application that is reinstated retains its original filing date.
R.S., 1985, c. P-4, s. 73; 1993, c. 15, s. 52.
74. [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 26]
75. Every person who
(a) without the consent of the patentee, writes, paints, prints, moulds,
carves, engraves, stamps or otherwise marks on anything made or sold by him, and
for the sole making or selling of which he is not the patentee, the name or any
imitation of the name of any patentee for the sole making or selling of that
(b) without the consent of the patentee, writes, paints, prints, moulds,
carves, engraves, stamps or otherwise marks on anything not purchased from the
patentee, the words "Patent", "Letters Patent", "Queen's (or
"Patented" or any word or words of like import, with the intent of
counterfeiting or imitating the stamp, mark or device of the patentee, or of
deceiving the public and inducing them to believe that the thing in question was
made or sold by or with the consent of the patentee, or
(c) with intent to deceive the public offers for sale as patented in
article not patented in Canada,
is guilty of an indictable offence and liable to a fine not exceeding
hundred dollars or to imprisonment for a term not exceeding three months or to
R.S., c. P-4, s. 78.
False representations, false entries, etc.
76. Every person who, in relation to the purposes of this Act and
knowing it to
(a) makes any false representation,
(b) makes or causes to be made any false entry in any register or book,
(b.1) submits or causes to be submitted, in an electronic form, any
document, false information or document containing false information,
(c) makes or causes to be made any false document or alters the form of
of any document, or
(d) produces or tenders any document containing false information,
is guilty of an indictable offence and liable on conviction to a fine
exceeding five hundred dollars or to imprisonment for a term not exceeding six
months or to both.
R.S., 1985, c. P-4, s. 76; 1993, c. 15, s. 53.
Offence respecting patented medicines
76.1 (1) Every person who contravenes or fails to comply with section
80, 81, 82
or 88 or any order made thereunder is guilty of an offence punishable on summary
conviction and liable
(a) in the case of an individual, to a fine not exceeding five thousand
or to imprisonment for a term not exceeding six months or to both; and
(b) in the case of a corporation, to a fine not exceeding twenty-five
(2) Every person who contravenes or fails to comply with section 84 or
made under section 83 is guilty of an offence punishable on summary conviction
(a) in the case of an individual, to a fine not exceeding twenty-five
dollars or to imprisonment for a term not exceeding one year or to both; and
(b) in the case of a corporation, to a fine not exceeding one hundred
(3) Proceedings for an offence under subsection (1) or (2) may be
within, but not later than, two years after the time when the subject-matter of
the proceedings arose.
(4) Where an offence under subsection (1) or (2) is committed or
more than one day, the person who committed the offence is liable to be
convicted for a separate offence for each day on which the offence is committed
1993, c. 2, s. 6.
77. [Repealed, 1993, c. 15, s. 54]
Time limit deemed extended
78. (1) Where any time limit or period of limitation specified under or
to this Act expires on a day when the Patent Office is closed for business, that
time limit or period of limitation shall be deemed to be extended to the next
day when the Patent Office is open for business.
When Patent Office closed for business
(2) The Patent Office shall be closed for business on Saturdays and
on such other days as the Minister by order declares that it shall be closed for
(3) Every order made by the Minister under subsection (2) shall be
the Canadian Patent Office Record as soon as possible after it is made.
R.S., c. P-4, s. 81.
Continue to: TRANSITIONAL