INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Patent Act

SEAL

Seal of office

13. (1) The Commissioner shall cause a seal to be made for the purposes of this
Act and may cause to be sealed therewith every patent and other instrument and
copy thereof issuing from the Patent Office.

Seal to be evidence

(2) Every court, judge and person shall take notice of the seal of the Patent
Office, shall admit the impressions thereof in evidence in like manner as the
impressions of the Great Seal are admitted in evidence and shall take notice of
and admit in evidence, without further proof and without production of the
originals, all copies or extracts certified under the seal of the Patent Office
to be copies of or extracts from documents deposited in that Office.

R.S., c. P-4, s. 13.

PROOF OF PATENTS

Certified copies of patents as evidence

14. In any action or proceeding respecting a patent authorized to be had or
taken in Canada under this Act, a copy of any patent granted in any other
country, or any official document connected therewith, purporting to be
certified under the hand of the proper officer of the government of the country
in which the patent has been obtained, may be produced before the court or a
judge thereof, and the copy of the patent or document purporting to be so
certified may be admitted in evidence without production of the original and
without proof of the signature or official character of the person appearing to
have signed it.

R.S., c. P-4, s. 14.

PATENT AGENTS

Register of patent agents

15. A register of patent agents shall be kept in  the Patent Office on which
shall be entered the names of all persons and firms entitled to represent
applicants in the presentation and prosecution of applications for patents or in
other business before the Patent Office.

R.S., 1985, c. P-4, s. 15; R.S., 1985, c. 33 (3rd Supp.), s. 4.

Misconduct

16. For gross misconduct or any other cause that he may deem sufficient, the
Commissioner may refuse to recognize any person as a patent agent or attorney
either generally or in any particular case.

R.S., c. P-4, s. 16.

APPEALS

Practice on appeals

17. In all cases where an appeal is provided from the decision of the
Commissioner to the Federal Court under this Act, the appeal shall be had and
taken pursuant to the Federal Court Act and the rules and practice of that
Court.

R.S., c. P-4, s. 17; R.S., c. 10(2nd Supp.), s. 64.

Notice on appeal

18. (1) Whenever an appeal to the Federal Court from the decision of the
Commissioner is permitted under this Act, notice of the decision shall be mailed
by the Commissioner by registered letter addressed to the interested parties or
their respective agents.

Time for taking appeal

(2) The appeal shall be taken within three months after the date of mailing of
the notice, unless otherwise provided by or under this Act.

R.S., 1985, c. P-4, s. 18; 1993, c. 15, s. 30.

USE OF PATENTS BY GOVERNMENT

Government may apply to use patented invention

19. (1) Subject to section 19.1, the Commissioner may, on application by the
Government of Canada or the government of a province, authorize the use of a
patented invention by that government.

Terms of use

(2) Subject to section 19.1, the use of the patented invention may be authorized
for such purpose, for such period and on such other terms as the Commissioner
considers expedient but the Commissioner shall settle those terms in accordance
with the following principles:

(a) the scope and duration of the use shall be limited to the purpose for which
the use is authorized;

(b) the use authorized shall be non-exclusive; and

(c) any use shall be authorized predominantly to supply the domestic market.

Notice

(3) The Commissioner shall notify the patentee of any use of the patented
invention that is authorized under this section.

Payment of remuneration

(4) Where the use of the patented invention is authorized, the authorized user
shall pay to the patentee such amount as the Commissioner considers to be
adequate remuneration in the circumstances, taking into account the economic
value of the authorization.

Termination of authorization

(5) The Commissioner may, on application by the patentee and after giving all
concerned parties an opportunity to be heard, terminate the authorization if the
Commissioner is satisfied that the circumstances that led to the granting of the
authorization have ceased to exist and are unlikely to recur, subject to such
conditions as the Commissioner deems appropriate to protect the legitimate
interests of the authorized user.

Authorization not transferable

(6) An authorization granted under this section is not transferable.

R.S., 1985, c. P-4, s. 19; 1993, c. 44, s. 191.

Conditions for authorizing use

19.1 (1) The Commissioner may not authorize the use of a patented invention
under section 19 unless the applicant establishes that

(a) it has made efforts to obtain from the patentee on reasonable commercial
terms and conditions the authority to use the patented invention; and

(b) its efforts have not been successful within a reasonable period.

Exception

(2) Subsection (1) does not apply in cases of national emergency or extreme
urgency or where the use for which the authorization is sought is a public
non-commercial use.

Prescribed uses

(3) The Commissioner may not, under section 19, authorize any use that is a
prescribed use unless the proposed user complies with the prescribed conditions.

Limitation on use of semi-conductor technology

(4) The Commissioner may not, under section 19, authorize any use of
semi-conductor technology other than a public non-commercial use.

1993, c. 44, s. 191; 1994, c. 47, s. 142.

Appeal

19.2 Any decision made by the Commissioner under section 19 or 19.1 is subject
to appeal to the Federal Court.

1993, c. 44, s. 191.

Regulations

19.3 (1) The Governor in Council may make regulations for the purpose of
implementing, in relation to patents, Article 1720 of the Agreement.

Definition of "Agreement"

(2) In subsection (1), "Agreement" has the same meaning as in subsection 2(1) of
the North American Free Trade Agreement Implementation Act.

1993, c. 44, s. 191.

GOVERNMENT OWNED PATENTS

Assignment to Minister of National Defence

20. (1) Any officer, servant or employee of the Crown or of a corporation that
is an agent or servant of the Crown, who, acting within the scope of his duties
and employment, invents any invention in instruments or munitions of war shall,
if so required by the Minister of National Defence, assign to that Minister on
behalf of Her Majesty all the benefits of the invention and of any patent
obtained or to be obtained for the invention.

Idem

(2) Any person other than a person described in subsection (1) who invents an
invention described in that subsection may assign to the Minister of National
Defence on behalf of Her Majesty all the benefits of the invention and of any
patent obtained or to be obtained for the invention.

Inventor entitled to compensation

(3) An inventor described in subsection (2) is entitled to compensation for an
assignment to the Minister of National Defence under this Act and in the event
that the consideration to be paid for the assignment is not agreed on, it is the
duty of the Commissioner to determine the amount of the consideration, which
decision is subject to appeal to the Federal Court.

Proceedings before Federal Court

(4) Proceedings before the Federal Court under subsection (3) shall be held in
camera on request made to the court by any party to the proceedings.

Vesting on assignment

(5) An assignment to the Minister of National Defence under this Act effectually
vests the benefits of the invention and patent in the Minister of National
Defence on behalf of Her Majesty, and all covenants and agreements therein
contained for keeping the invention secret and otherwise are valid and
effectual, notwithstanding any want of valuable consideration, and may be
enforced accordingly by the Minister of National Defence.

Person making assignment and person having knowledge thereof

(6) Any person who has made an assignment to the Minister of National Defence
under this section, in respect of any covenants and agreements contained in such
assignment for keeping the invention secret and otherwise in respect of all
matters relating to that invention, and any other person who has knowledge of
such assignment and of such covenants and agreements, shall be, for the purposes
of the Official Secrets Act, deemed to be persons having in their possession or
control information respecting those matters that has been entrusted to them in
confidence by any person holding office under Her Majesty, and the communication
of any of that information by the first mentioned persons to any person other
than one to whom they are authorized to communicate with, by or on behalf of the
Minister of National Defence, is an offence under section 4 of the Official
Secrets Act.

Minister may submit application for patent

(7) Where any agreement for an assignment to the Minister of National Defence
under this Act has been made, the Minister of National Defence may submit an
application for patent for the invention to the Commissioner, with the request
that it be examined for patentability, and if the application is found allowable
may, before the grant of any patent thereon, certify to the Commissioner that,
in the public interest, the particulars of the invention and of the manner in
which it is to be worked are to be kept secret.

Secret application

(8) If the Minister of National Defence so certifies, the application and
specification, with the drawing, if any, and any amendment of the application,
and any copies of those documents and the drawing and the patent granted thereon
shall be placed in a packet sealed by the Commissioner under authority of the
Minister of National Defence.

Custody of secret application

(9) The packet described in subsection (8) shall, until the expiration of the
term during which a patent for the invention may be in force, be kept sealed by
the Commissioner, and shall not be opened except under the authority of an order
of the Minister of National Defence.

Delivery of secret application

(10) The packet described in subsection (8) shall be delivered at any time
during the continuance of the patent to any person authorized by the Minister of
National Defence to receive it, and shall, if returned to the Commissioner, be
kept sealed by him.

Delivery to Minister

(11) On the expiration of the term of the patent, the packet described in
subsection (8) shall be delivered to the Minister of National Defence.

Revocation

(12) No proceeding by petition or otherwise lies to have declared invalid or
void a patent granted for an invention in relation to which a certificate has
been given by the Minister of National Defence under subsection (7), except by
permission of the Minister.

Prohibition of publication and inspection

(13) No copy of any specification or other document or drawing in respect of an
invention and patent, by this section required to be placed in a sealed packet,
shall in any manner whatever be published or open to the inspection of the
public, but, except as otherwise provided in this section, this Act shall apply
in respect of the invention and patent.

Waiver by Minister

(14) The Minister of National Defence may at any time waive the benefit of this
section with respect to any particular invention, and the specification,
documents and drawing relating thereto shall thereafter be kept and dealt with
in the regular way.

Rights protected

(15) No claim shall be allowed in respect of any infringement of a patent that
occurred in good faith during the time that the patent was kept secret under
this section, and any person who, before the publication of the patent, had in
good faith done any act that, but for this subsection would have given rise to a
claim, is entitled, after the publication, to obtain a licence to manufacture,
use and sell the patented invention on such terms as may, in the absence of
agreement between the parties, be settled by the Commissioner or by the Federal
Court on appeal from the Commissioner.

Communication to Minister

(16) The communication of any invention for any improvement in munitions of war
to the Minister of National Defence, or to any person or persons authorized by
the Minister of National Defence to investigate the invention or the merits
thereof, shall not, nor shall anything done for the purposes of the
investigation, be deemed use or publication of the invention so as to prejudice
the grant or validity of any patent for the invention.

Order to keep non-assigned application secret

(17) The Governor in Council, if satisfied that an invention relating to any
instrument or munition of war, described in any specified application for patent
not assigned to the Minister of National Defence, is vital to the defence of
Canada and that the publication of a patent therefor should be prevented in
order to preserve the safety of the State, may order that the invention and
application and all the documents relating thereto shall be treated for all
purposes of this section as if the invention had been assigned or agreed to be
assigned to the Minister of National Defence.

Rules

(18) The Governor in Council may make rules for the purpose of ensuring secrecy
with respect to applications and patents to which this section applies and
generally to give effect to the purpose and intent thereof.

R.S., c. P-4, s. 20; R.S., c. 10(2nd Supp.), s. 64.

Agreement between Canada and other government

21. Where by any agreement between the Government of Canada and any other
government it is provided that the Government of Canada will apply section 20 to
inventions disclosed in any application for a patent assigned or agreed to be
assigned by the inventor to that other government, and the Commissioner is
notified by any minister of the Crown that the agreement extends to an invention
in a specified application, the application and all the documents relating
thereto shall be dealt with as provided in section 20, except subsections (3)
and (4), as if the invention had been assigned or agreed to be assigned to the
Minister of National Defence.

R.S., c. P-4, s. 21.

PATENTS RELATING TO ATOMIC ENERGY

Communication to Atomic Energy Control Board

22. Any application for a patent for an invention that, in the opinion of the
Commissioner, relates to the production, application or use of atomic energy
shall, before it is dealt with by an examiner appointed pursuant to section 6 or
is open to inspection by the public under section 10, be communicated by the
Commissioner to the Atomic Energy Control Board.

R.S., 1985, c. P-4, s. 22; R.S., 1985, c. 33 (3rd Supp.), s. 5.

GENERAL

Patented invention in vessels, aircraft, etc., of any country

23. No patent shall extend to prevent the use of any invention in any ship,
vessel, aircraft or land vehicle of any country entering Canada temporarily or
accidentally, if the invention is employed exclusively for the needs of the
ship, vessel, aircraft or land vehicle, and not so used for the manufacture of
any goods to be sold within or exported from Canada.

R.S., c. P-4, s. 23.

24. [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 6]

Cost of proceedings before the court

25. In all proceedings before any court under this Act, the costs of the
Commissioner are in the discretion of the court, but the Commissioner shall not
be ordered to pay the costs of any other of the parties.

R.S., c. P-4, s. 25.

Annual report

26. The Commissioner shall, in each year, cause to be prepared and laid before
Parliament a report of the proceedings under this Act.

R.S., 1985, c. P-4, s. 26; R.S., 1985, c. 33 (3rd Supp.), s. 7.

Publication of list of patents

26.1 (1) The Commissioner shall, at least once in each year, publish a list of
all patents issued in the year.

Publication and printing of documents

(2) The Commissioner may publish any document open to the inspection of the
public under section 10 and may print or cause to be printed, for distribution
or sale, any such document.

R.S., 1985, c. 33 (3rd Supp.), s. 7.

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