May 05 2020

Read Part I of this series here.

Patent infringement proceedings can be daunting at the best of times, but what does a patentee do when it believes a third party is infringing its process (e.g., the method or steps of manufacturing a product)? In a series of articles, we will explore some of the issues that arise in pursuing infringement proceedings relating to a patented process and the hurdles to overcome.

A process patent is a type of utility patent that covers a method (i.e., a series of steps) for performing a function or changing the functionality or characteristics of a material during a specified use to achieve a desired product or result.

In our second scenario, a patentee has an issued patent for a process (i.e., manufacturing technique) with respect to the manufacture of a product. A third party is importing a product for use and/or sale in Canada but the product is manufactured abroad where the patentee has no patent. What recourse is available to the patentee in Canada?

Notwithstanding the foreign manufacture of the product, importers of said products into Canada can be held liable for infringement if the importation interferes with the full enjoyment of the monopoly granted by the patentees' patent.¹ The importation into Canada and/or the sale of a product in Canada, which is manufactured abroad but in accordance with the patentees’ patented process, deprives the patentee of some part of the whole profit and advantage of the patentees’ patented invention, and as a result, the importer is indirectly making use of the patentees’ patented invention.²

The Courts consider several factors in determining infringement of a process patent used to create a product including:

• The importance of the product or process to the final product sold into Canada. Where the use is incidental, non-essential or could readily be substituted, a Court might be less inclined to find infringement;
• Whether the final product actually contains all or part of the patented product. Where the patented product can actually be identified in the product sold into Canada, there may be a strong case for a finding of infringement;
• The stage at which the patented product or process is used. For example, use of a process as a preliminary step of a lengthy production process may lead to a conclusion that the patentee has suffered little deprivation;
• The number of instances of use made of the patented product or process. Where the same patented product is used repetitively through the production of the non-patented end product, there may be clearer evidence that the advantage of the patentee has been impaired; and
• The strength of the evidence demonstrating that, if carried out or used in Canada, the product or process would constitute infringement. The patentee bears the burden of proving infringement.³

As will be noted, the ability to enforce one’s patent against unlawful importation may be limited in that the patentee may only have recourse as against the importer and not the manufacturer. In order to be able to pursue the manufacturer extraterritorially, the patentee must demonstrate that the manufacturer induced the importer to commit the infringing acts in Canada.

Pursuing a patent infringement action in Canada over a manufacturer of a product which is manufactured abroad, requires the patentee to demonstrate that the court can assert jurisdiction over the manufacturer. This can be accomplished in three (3) ways: (1) if the manufacturer has a presence in Canada; (2) the manufacturer consents to submit to the jurisdiction of the court in Canada; or (3) if there is a “real and substantial connection” between the parties, the court can declare itself competent to hear the case.

This article is for information purposes only and does not constitute legal or professional advice.

Author: Kenneth Hanna

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¹Monsanto Canada Inc. v. Schmeiser, [2004] 1 S.C.R. 902 at ¶43-44

²Saccharine Corp. Ltd. V. Anglo-Continental Chemical Works, Ltd., (1900), 17 R.P.C. 307 (H.C.J.); Pfizer Canada Inc. v. Canada (Minister of Health), (2007), 61 C.P.R. (4^th) 137 (F.C.) at ¶78

³Pfizer Canada Inc. v. Canada (Minister of Health), 2007 FC 898 at ¶90

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Tags: Kenneth Hanna, Litigation, Patent Infringement