May 17 2018
Canada makes more equitable remedies available to patent litigants than many other jurisdictions. A patent owner can elect to pursue a patent infringer’s profits rather than proving her own damages, and the losing party in a dispute is theoretically liable for the winner’s costs (in contrast to the “American Rule” requiring each party to bear its own costs). And while the amounts awarded by the Federal Court have historically been modest, recent decisions suggest the reversal of this trend, making Canada a more attractive forum for enforcing patent rights.
The court’s procedural rules, as well as judicial resistance to the idea of rewarding aggressive litigation with monetary bonanzas, have historically limited the amounts recoverable under these doctrines. In particular, the remedy of an accounting of profits was undermined by the 2004 Supreme Court decision in Monsanto Canada v. Schmeiser. This decision introduced a “non-infringing alternative” defence that has significantly reduced the size of these awards — in some cases, to only a nominal amount.
To read Matthew Norwood’s full article, please visit Canadian Lawyer Magazine InHouse website.
The author gratefully acknowledges the assistance of former firm associates Andrew Kai Kai and Christopher Langan for their contributions to this article.
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