What is Patent Impeachment?

The Patent Act in Canada allows you to challenge a patent in two ways - re-examination and patent impeachment. Pursuant to section 60 of the Patent Act, proceedings for impeachment may be brought before the Federal Court and may be instituted by the Attorney General of Canada or any interested person. Any person who wants to challenge a patent can file a petition with the Federal Court to commence the patent impeachment proceeding. At the end of these proceedings the patent in its entirety, or one or more of its claims, may be declared void or it may be held as valid.

In an impeachment proceeding, the burden is on the interested person to prove that the patent or one or more of its claims are invalid. A plaintiff may raise grounds for invalidity, which may be based on prior art or technical reasons linked to intrinsic defects in the patent. Generally, an interested person attempts to prove the patent invalid on the basis of novelty, inventiveness or utility. The interested person may allege that the claims are ambiguous or not supported by the description. Other reasons include overlap between two patents, disconformity between the issued patent and a pending or originally filed patent application.

Commencing a Patent Impeachment Proceeding

Receipt of a cease and desist letter is typically not a pre-requisite to commencing a patent impeachment proceeding. Such a proceeding is usually brought by filing an action before the Federal Court. The interested party files an action, including the allegations made, with the Federal Court. The patentee may counterclaim the infringement. If there is no settlement implemented, a trial is held before a judge. During the court proceedings, both parties get a chance to defend their position. The judge then renders the patent or one or more of its claims void or valid. Depending on the decision the plaintiff and the patentee can appeal to the Federal Court of Appeal.

Benefits of Patent Impeachment

Typically, impeachment proceeding requires 2-3 years to complete. Patent impeachment is a time consuming and costly process. However, such proceedings are preferable for various reasons. In contrast to re-examination impeachment has advantages since the party wishing to invalidate the patent can defend the allegations in front of the court, and also has an opportunity to lodge an appeal if the court rules against it. Also, patent impeachment proceedings allow for the attack of a patent in many ways, either on the basis of prior art and also intrinsic defects in the patent.

However, commencing a patent impeachment action depends on an assessment of issues like cost, time, and the importance of initiating such an action. Guidance of a patent agent can help determine the best solution for any given situation. Moreover, having a patent agent will also prove beneficial in enforcing patent impeachment.