1. PATC Section 3 – Infringement
Defences to Infringement

2. Defences
Patent Act does not prescribe
specific defences to infringement

3. Defences to Infringement
Section 59 of Patent Act:
“The defendant, in any action for infringement
of a patent may plead as matter of defence
any fact or default which by this Act
or by law renders the patent void,
and the court shall take cognizance of
that pleading and of the relevant facts
and decide accordingly.”

4. Incidental Use Test from Monsanto
“….did the defendant's activity deprive
the inventor in whole or in part, directly
or indirectly, of full enjoyment of the 
monopoly conferred by law?”
[Monsanto Canada Inc. v Schmeiser,
[2004] 1 S.C.R. 902]

5. Incidental Use Some types of “use” may be non-commercial
or do not interfere with monopoly
Possession as infringing use is
rebuttable presumption

6. Incidental Use Where infringing device, in normal
operation, works the same as patented device
there is infringement, even though it may
be operated in a non-infringing mode
[Cochlear Corp. v. Cosem Neurostim Ltée,
64 C.P.R. (3d) 10]

7. Incidental Use (Ab)using a device or destroying its normal
utility does not show infringement
[e.g. Illinois Tool Works Inc. v Cobra Fixations Cie
20 C.P.R. (4th) 402]
Inferior device may still infringe
[Lishman v Erom Roche, 68 C.P.R. (3d) 72]

8. Incidental Use Improvement to patented device may still infringe
“The superadding of ingenuity to robbery
does not make the operation justifiable".
[Wenham Gas Co., Ltd. v. Champion Gas
Lamp Co., [1891] 9 R.P.C. 49, quoted in
e.g. Globe-Union Inc. v. Varta Batteries Ltd.,
57 C.P.R. (2d) 132; Lishman v Erom Roche,
68 C.P.R. (3d) 72 ]

9. Incidental Use Patent for defendant’s device will not
afford a defence to infringement
[Airseal Controls Inc. v. M & I Heat
Transfer Products Ltd., 72 F.T.R. 196;
Lishman v Erom Roche, 68 C.P.R. (3d) 72]

10. Experimental Use Effect of Monsanto decision?
“use” (i.e. possession) to further a business
or commercial interests is infringement
Very fact-dependent

11. Experimental Use Making and using invention for purpose
of ensuring that invention can be
feasibly made is not infringement
[Micro Chemicals Ltd. et al. v
Smith Kline French Inter-American Corp.,
2 C.P.R. (2d) 193]

12. Experimental/Fair Use
Use of compound in ongoing research
and development of alternate formulae
and techniques for tablet making
is "fair dealing" and exempt
[Merck & Co. v. Apotex Inc., 2006 FCA 323;
(Micro Chemicals applied)]

13. Experimental Use Testing is not an infringing use
“Patent rights were never granted to prevent persons
of ingenuity exercising their talents in a fair way.
But if there be neither using nor vending of the
invention for profit, the mere making for the purpose
of experiment, and not for a fraudulent purpose,
ought not to be considered within the meaning of
the prohibition, and if it were, it is certainly not the
subject for an injunction.”
Frearson v. Loe, (1878), 9 Ch.D. 48 at 67
Dableh v. Ontario Hydro, [1996] 3 F.C. 751

14. Experimental Use Micro Chemicals was in context of
compulsory licence application
Small non-commercial
quantities were made while licence
application was pending

15. Licence Defence Sale of patented article gives buyer
right to use, sell, or deal
with article as they see fit
“Implied licence” runs with sale of article
[Eli Lilly & Co. v. Novopharm Ltd.,
[1998] 2 S.C.R. 129; MacLennan v.
Gilbert Tech Inc., 2006 FCA 204]

16. Licence Defence But implied licence does not translate into
a licence under the patent
[Signalisation de Montréal Inc. v.
Services de Béton Universels Ltée,
[1993] 1 F.C. 341]

17. Licence Defence Patentee can impose restrictions on how
the product may be used, but buyer
must be notified at time of purchase
[Eli Lilly & Co. v. Novopharm Ltd.,
[1998] 2 S.C.R. 129]

18. Licence Defence Where licence (compulsory or otherwise)
is held by defendant, actions outside
scope of licence will be infringement
E.g. what you do and who you sell to may
amount to “unauthorized sub-licence”
and thus be an infringement

19. Section 56/Prior Use Immunity for Subject Matter Previously Acquired
“56. (1) Every person who, before the claim date of a
claim in a patent has purchased, constructed or acquired
the subject matter defined by the claim,
has the right to use and sell to others the
specific article, machine, manufacture or composition
of matter patented and so purchased,
constructed or acquired without being liable
to the patentee or the legal representatives
of the patentee for so doing.”

20. Section 56/Prior Use S.56 – applies to both “old”
and “new” Act patents
Courts have given a relatively
liberal construction
Defendant can continue its activities
without liability

21. Section 56/Prior Use Any form of the invention
is within scope of immunity
[Libby-Owens Ford Glass Co. v Ford Motor
Co. of Canada, 62 C.P.R. 223]
Immunity extends to being able to use the
article for its intended use
[Merck & Co. v Apotex Inc., [1995] 2 F.C. 723]

22. Section 56/Prior Use Immunity only applies to an article
that has been “purchased and acquired”
(title has passed)
[Lido Industrial Products Ltd. v Teledyne
Industries Inc. et al., 57 C.P.R. (2d) 29]

23. Section 56/Prior Use *BUT* unclear how far s. 56 extends
where patent has only process claims
[see Procter & Gamble Co. v
Calgon Interamerican Corp., 56 C.P.R. (2d) 214]

24. Prior/Incidental Use Prior Use “secret use” not recognized per se
as defence to infringement
prior use of the invention must be
public use that creates a novelty bar

25. Gillette Defence “What anticipates before cannot thereafter infringe”
Otherwise, patent is invalid
[Gillette Safety Razor Co. v. Anglo-American
Trading Co. (1913), 30 R.P.C. 465; Pfizer
Canada Inc. v. Canada, 2010 FC 447; AB Hassle
v. Apotex Inc., 2006 FCA 51]

26. Gillette Defence Plaintiff placed in dilemma of having to elect
between
Narrow construction of claims
(infringement avoided) OR
Patent is too broad and is invalid
(reads on prior art)

27. Section 55.1 Regulatory exception under s. 55.1:
making, use or sale of a patented invention
deemed not to be infringement, where
such activities are:
“ solely for uses reasonably related
to the development and submission
required under any law of Canada,
a province or a country other than Canada
that regulates the manufacture, construction, use,
or sale of any product.”

28. Section 55.1 Primarily applied in pharma context
(e.g. clinical trials, gathering of data for
regulatory filing)
*But* wording is not limited
by subject matter
[Merck & Co. v. Apotex Inc., 2006 FCA 323]