Co-authored by: Eliane Leal da Silva, Business Advisor
In response to the COVID-19 crisis and in consideration of the public health emergency, on March 25, 2020 the Federal Government of Canada enacted Bill C-13, amending numerous statutes and regulations, including the Patent Act R.S.C., 1985, c. P-4 (the “Patent Act”) regarding the use of patents by the government.
Bill C-13 part 12 temporarily amends Section 19 of the Patent Act, adding section 19.4 to authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to a public health emergency that is a matter of national concern.
The application must be made by the Minister of Health and the Commissioner of Patents (appointed pursuant to the Patent Act) shall authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application.
This differs from the original language in Section 19.1 which stated that the Commissioner “may” make an authorization, while the new rules remove discretion from the decision maker.
According to section 19.4 (1) of the Patent Act, the application must be made by the Minister of Health and shall:
- set out the name of the patentee and the number, as recorded in the Patent Office, of the patent issued in respect of the patented invention;
- include a confirmation that the Chief Public Health Officer, appointed under subsection 6(1) of the Public Health Agency of Canada Act C.2006, c. 5, believes that there is a public health emergency that is a matter of national concern;
- include a description of the public health emergency; and
- specify a person, if any, that is to be authorized to make, construct, use and sell the patented invention for the purposes of responding to the public health emergency.
Cessation of effect
The authorization granted is temporary and shall cease to have effect the earlier of (i) the day on which the Minister of Health notifies the Commissioner that the authorization is no longer necessary to respond to the public health emergency set out in the application, and (ii) one year after the day on which it is granted.
The new provisions establish that once an authorization is being granted, the Commissioner shall notify the patentee and provide all information required for the application.
Payment of remuneration
Under the new provisions, the Commissioner shall evaluate an adequate remuneration in the circumstances of each application, taking into account the economic value of the authorization and the extent to which they make, construct, use and sell the patented invention. The Government of Canada and any other authorized person shall pay the determined amount.
Section 19.2 of the Patent Act grants the patentee the right to appeal the Commissioner’s decision to the Federal Court, including application and remuneration. However, section 19.2 does not apply to section 19.4.
The new regulation grants the Federal Court the right to make an order requiring the Government of Canada or any authorized person to cease making, constructing, using or selling the patented invention only in a manner that is inconsistent with the granted authorization.
Temporal limit on authorizations
The changes are temporary and the Commissioner shall not make an authorization under the new conditions imposed on the amendments after September 30, 2020.
Under the new rules, a granted authorization cannot be transferred and the use or sale of a patented invention in relation to a public health emergency cannot be considered an infringement of the patent.
If you have a Canadian patent that may be affected by the new legislation, please contact one of our intellectual property lawyers for specific advice.
Miller Thomson is closely monitoring the COVID-19 situation to ensure that we provide our clients with appropriate support in this rapidly changing environment. For articles, information updates and firm developments, please visit our COVID-19 Resources page.