www.lexpert.ca/usguide | LEXPERT • June 2018 | 47
By Steven Garland and Jean-Sébastien Dupont
Sponsored by
5 Reasons Why Canada is a Favorable
Jurisdiction for Patent Litigation
C
anada has historically been a
much less active jurisdiction for
patent litigation compared to
the United States, which can be
explained in part by the simple
fact that the United States' mar-
ket is almost 10 times the size of
the Canadian market. However,
there are a few notable differences in the proce-
dure and substantive law applied in both juris-
dictions that have resulted in Canada becoming
an increasingly attractive option for high-stakes
patent litigation in recent years.
#1 - No forum shopping
There is essentially no issue with forum shopping
in Canada as the vast majority of patent infringe-
ment proceedings are brought before the Federal
Court, a specialized and bilingual Court of single,
national jurisdiction across Canada. The jurisdic-
tion of the Federal Court is limited by Federal
legislation to matters of intellectual property,
immigration, admiralty and judicial review of
decisions of federal governmental bodies and
tribunals. As a result, a number of judges (includ-
ing a few who were intellectual property litiga-
tors before their appointment) hear a significant
number of intellectual property cases and have
thus developed an in-depth knowledge of the
subject matter.
The Federal Court is said to be an "itinerant
court". All judges are ap-
pointed and reside in Ottawa
but travel across Canada to sit
in all major business centers
such as Vancouver, Calgary,
Toronto and Montréal. There
are also no districts or circuits.
As such, it makes no difference
in practice where proceed-
ings are initiated on who the
ultimate trial judge will be or
where the trial will be held. A
plaintiff could initiate proceed-
ings in the Montréal office of
the Federal Court against a
party located in Toronto. The
trial could eventually be heard
in either city or, if the par-
ties cannot agree, in a neutral
location such as Ottawa. In all
cases it will be the same judge,
without any jury as discussed
below, who will decide of the
matter and whose decision
(e.g., a permanent injunction)
will apply throughout Canada.
While the Federal Court
has concurrent jurisdiction
with the provinces' courts over
matters of infringement, the
Federal Court has exclusive
jurisdiction to hear patent
impeachment proceedings
(similar to US declaratory
judgement actions). As such,
irrespective of which party
may start the proceeding,
patent infringement/validity
proceedings will usually end
up in the same Court in front
of the same judge. Accord-
ingly, there is typically little
concern in sending cease and
desist letters to infringers in
Canada as it does not open the
door to a potential defendant
pre-emptively starting an
impeachment proceeding in a
more favorable jurisdiction.
The fact that most intellec-
tual property cases are heard
by the Federal Court has given
the Court the ability over the
years to develop procedural
rules and practices that are spe-
cifically designed for complex
patent litigation. For instance,
the Federal Court offers a
very robust case management
system that allows for added
flexibility over the rules and
ensures that cases proceed to
