On October 29, 2018, Bill C-86, the Budget Implementation Act (the “Bill”), received its first reading in the House of Commons. The Bill proposes many amendments to various pieces of legislation. Among these are amendments to the Patent Act aimed at introducing a regulatory framework around “written demands relating to patents” (i.e. demand letters or cease and desist letters). These changes seek to “discourage the sending of deceptive or unsubstantiated demand letters.”

The Bill proposes to add regulation on demand letters received in Canada, relating to Canadian or foreign patents protected by a certificate of supplementary protection in Canada or by analogous rights granted elsewhere.

Under the proposed regulation, any person aggrieved by a written demand would be able to bring a proceeding in the Federal Court seeking relief, including recovery of damages, punitive damages, an injunction, a declaration, or an award of costs (proposed section 76.2(2)-(3)). In special cases, agents of a corporation could be found jointly and severally liable if they send a written demand that does not comply with the prescribed requirements (proposed section 76.2(4)). The Bill specifies that the Governor in Council may make further regulations with respect to these proposed provisions, such as establishing the requirements of a written demand (proposed section 76.3).

As the Bill progresses through the legislative process, it remains to be seen what the final form of these proposed Patent Act amendments will be, however, following such developments is essential to ensuring that the content of the demand letters meets prescribed requirements once in force.

Summary By: Anna Troshchynsky


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