Canada and India have a very significant trading relationship. A large number of Indian companies operate in Canada, particularly in the information technology, software, steel, natural resources and banking sectors.[1] Similarly, India’s economy offers tremendous opportunities for Canadian companies in emerging sectors such as transportation, infrastructure, life sciences, clean energy technology (e.g. integration of renewable energy/smart grid; carbon capture, use and storage; and energy efficiency) and renewable energy, as well as in traditional sectors such as natural resources, defence, food products, mining, and oil and gas. The bilateral ties between India and Canada are underpinned by shared values of democracy, pluralism, and a legal system rooted in the common law.
Both countries also share a commitment to the protection and enforcement of intellectual property rights, which is reflected by the adoption of international treaties and the enactment of domestic legislation. Strong intellectual property rights create a legal framework that allows businesses to protect their innovations, maintain competitive advantages, enhance profitability, and facilitate growth. Intellectual property is a powerful strategic asset for business success, but owning such rights is not enough if they cannot be effectively enforced against infringers.
This article provides an overview of the patent litigation process in Canada and compares it to the system in India. Both countries’ systems share many similarities, but there are also some important differences. While this publication is intended to be accurate and informative, it is not legal advice and should not be relied upon for that purpose.
- The Forum
In Canada, the Federal Court (FC) and provincial superior courts have jurisdiction to hear cases and provide remedies in respect of patent infringement. In practice, many patent holders prefer litigating before the FC since its orders can be enforced throughout the country, the proceedings are often quicker, its judges have extensive experience in IP, and the FC has exclusive jurisdiction to vary, invalidate, or expunge patents[2]. Patent impeachment proceedings may be brought by an interested person in the FC.
On the other hand, in India, a suit for patent infringement can be initiated in either a district court or a High Court[3], depending upon the pecuniary jurisdiction[4]. If the defendant makes a counterclaim for revocation of the patent, then the proceedings are necessarily transferred to the High Court. In practice, patent infringement suits of substantial value are usually instituted before the High Courts of Delhi, Bombay, Calcutta, or Madras, by invoking their original jurisdiction. The bulk of patent infringement matters are filed before the High Court of Delhi,[5] which created the “Intellectual Property Division” (IPD)[6] in 2021 and subsequently formulated corresponding rules for governing IP matters that have made procedures, timelines and adjudication of the suits related to IP more efficient. The relevant forum for instituting a standalone revocation is also the relevant High Court[7].
Canada and India do not have jury trials in IP litigation. Also, in both jurisdictions, an unsuccessful litigant has an automatic right of appeal to a first level appellate court, and the possibility of a further review by the national Supreme Courts, subject to obtaining leave from such court.
- Prior to Initiating an Action
In Canada, the patent owner is not required to give notice to an infringer prior to filing suit. Hence, a patent owner in Canada can proceed directly to initiating an action for a declaration of infringement. Likewise, where a person has reasonable cause to believe that any process that is being used (or proposed to be used) or any article that is made, used or sold (or proposed to be made, used or sold) might be alleged by a patentee to constitute infringement, that person may bring an action in the Federal Court against the patentee for a declaration that the process or article does not or would not constitute an act of infringement.
In India, while not required, it is considered to be a good practice for the patent owner to send a cease-and-desist notice to the alleged infringer. The courts in India usually expect the parties to exhaust all possible remedies before initiating litigation. However, if “any person interested” wishes to invalidate a granted patent, it can directly file a petition for revocation before the relevant High Court, by invoking its original jurisdiction. A revocation can also be sought as a counterclaim by the defendant in a patent infringement suit without prior notice.
- Overall Timeline
In Canada, the FC is known for its efficient case management and timely disposal of IP suits. A typical patent infringement or impeachment suit is likely to proceed to trial within 24 to 36 months of filing the claim.
In India, the timelines vary significantly based on the forum selected for the litigation and various other factors[8]. The Commercial Courts Act, 2015 was enacted by the Parliament of India to ensure timely adjudication of commercial disputes, and if the timelines mentioned therein are followed, a patent infringement suit can be concluded within 12 months. However, in practice the overall process takes longer owing to systemic issues, including vacant judicial positions and backlogs. In most cases, it is expected that the overall process of patent infringement suits, i.e., from the date of the institution of suit to the conclusion of trial, takes between three and five years[9], and patent litigation can extend beyond the term of the patent itself.
- Pleadings
In both Canada and India, pleadings are filed by the patent owner (plaintiff) to initiate a patent infringement suit. In the case of a patent impeachment action in Canada or a revocation petition in India, the roles of the parties are interchanged and the interested party files the initial pleadings seeking to invalidate a patent or any of its claims.
In Canada, a patent infringement action is commenced by the issuance of a “Statement of Claim”. This document is a concise statement of the material facts underlying the cause of action and proposed remedies. Infringement is proven at trial by establishing the material facts set out in the Statement of Claim. In response to the Statement of Claim, the defendant files a responding pleading, known as a “Statement of Defence”, and may also include a “Counterclaim” to invalidate the asserted IP right. The plaintiff is entitled to “Reply” to the Statement of Defence, and to defend against any allegations of invalidity. If either party believes that certain material facts have not been disclosed in a pleading, it can bring a motion for particulars or a motion to strike the pleading. In the case of a patent impeachment proceeding, the interested party serves a Statement of Claim, and the patent owner serves and files a Statement of Defence to defend its patent and may serve and file a counterclaim for infringement.
In India, the initial pleading, or plaint, is also a concise statement of the material facts. The plaint does not include evidence or any argumentative matter. The plaint must contain the identifying information identifying the parties, the facts pertaining to what and when of the cause of action, the facts to establish the jurisdiction of such court, the specific relief claimed in the suit, and the suit value to establish jurisdiction and court’s administrative fees. There are further nuances for specific courts. For example, in the High Court of Delhi, the parties may file claim construction, invalidity, and infringement briefs, and technical primers which can then be used by the court in the initial case management hearing to frame the issues. In response to a plaint, the defendant files its responding pleadings, i.e., written statement.
- Discovery
The main difference between Canadian and Indian patent litigation is the discovery process.
In Canada, the discovery process is very holistic. Parties have a continuing obligation to disclose all non-privileged documents that are relevant to the issues in the suit. The FC’s rules provide for both oral and written examinations for discovery. Oral examinations are a significant part of the patent litigation process. When the party is a corporation, which is often the case in patent litigation, an authorized representative of the company and the named inventors may be examined. The transcripts of the oral examinations of the party can be “read-in” as evidence for the purposes of trial, but not the transcripts of the inventors’ examinations. The use of oral examinations in Canada makes the discovery process very comprehensive. This discovery process provides predictability, reveals relevant facts known to the other party, provides insight into the strength of each party’s case, and saves parties the costs of a trial where the matter can otherwise be settled. Oral examination requires the parties and their lawyers to spend time and resources in the early stages of the patent litigation, prior to the trial.
In India, in addition to the admission and denial of the documents filed by the other parties, the parties can also seek discovery, inspection, or production of documents from the other party by making an application seeking such discovery. On such an application, the court may require the responding party to answer written interrogatories of the moving party, direct the inspection of the defendant and/or order production of relevant documents. The courts in India are vigilant to avoiding “fishing expeditions”[10] and “data-flooding”[11]. India does not have any formal process for pre-trial oral examinations and the discovery process in India is largely done in a written manner. Hence, oral examinations, including cross-examinations, normally take place only at trial.
- Case Management
In Canada, a case management judge is typically appointed by the FC in patent cases to assist with scheduling of pre-trial steps, motions and dispute resolution. The extensive discovery process and pre-trial motions in patent cases requires active case management. Case management judges play an active role and hold multiple case management conferences to ensure the litigation progresses efficiently.
In India, the initial case management hearing take place after completion of the pleadings and subsequent to admissions and denials of the documents. The Commercial Courts Act, 2015 and the rules of the specific court set timelines and guidelines in respect of the case management hearings for patent suits. There are three case management conferences in the High Court of Delhi[12]. In patent suits before the High Court of Delhi, in the initial case management hearing, a single judge decides the disputed issues of fact and law that are to be adjudicated, makes orders for the filing of evidence, and sets the trial and final hearing’s schedule. The court also encourages settlement through alternative dispute resolution during the case management hearings. In the second and third case management hearings, the court reviews the proposed evidence to try to streamline the case, may opt for hot-tubbing[13] of witnesses in complex cases, and addresses any other concerns. The court may also appoint independent scientific experts to provide assistance, and may order that the technical experts of the respective parties and the independent scientific experts be present during the trial.
- Motions
In both Canada and India, the parties can file motions to address procedural and substantive issues before the trial begins.
In Canada, pre-trial motions may include requests for particulars of a pleading[14],an interlocutory injunction[15], confidentiality or protective orders[16], answers to discovery questions[17], bifurcation[18], and summary judgement or summary trial.
In India, a party can bring applications before the court to address similar procedural and substantive issues. In a patent suit before the High Court of Delhi, typical applications include those seeking, inter alia, interim injunctions or its modification, discovery using written interrogatories, summary adjudication, to record additional evidence, to record evidence of a witness via videoconferencing, hot-tubbing, confidentiality club[19] and redaction of confidential information.
One particular motion/application that operates in a significantly different way in Canada and India is where a party seeks an interlocutory injunction. Interestingly, the three essential thresholds that a moving party must establish to successfully obtain an interlocutory injunction have their roots in common law and are very similar in Canada and India. These thresholds require the moving party to prove that (i) it has a prima facie case, (ii) irreparable harm will result if the relief is not granted, and (iii) the balance of convenience favours the moving party. However, it is difficult to obtain interlocutory injunctions in patent cases in Canada because of the high threshold to prove irreparable harm. On the other hand, interlocutory injunctions are readily granted in India, which is beneficial given the overall longer time it takes for a patent case to proceed to trial.
- Trial
In Canada and India, the issue of claims construction is decided at trial, unlike the U.S. where there is a separate procedural step for claims construction (the “Markman hearing”). Hence, in both jurisdictions, expert evidence is usually not tainted by the court’s claim construction. Both India and Canada have similar procedures for opening and closing statements during a trial.
In Canada, examinations-in-chief[20] and cross-examinations of witnesses are conducted orally in person, although the FC is flexible in allowing witnesses to testify by videoconferencing where necessary. Since the parties have already gone through the extensive oral discovery process prior to trial, there are usually no big surprises that come up at trial.
In India, examinations-in-chief are mandatorily done through an affidavit, and cross-examination and re-examination are done orally before the court. The Indian courts are flexible and usually allow witnesses in foreign jurisdictions to provide their evidence through videoconferencing. Since evidentiary procedures in India are less rigorous in the initial stages, there is a more flexibility available to parties when presenting their cases at the trial, which can lead to unexpected surprises.
- Remedies
The remedies for patent infringement are similar in Canada and India. In both jurisdictions, the successful patent owner can seek a permanent injunction to restrain the infringer from continuing with any of the infringing activities until expiry of the patent. The patent owner can also obtain financial compensation by electing either damages or an accounting of profits. The extent of damages is the quantum that will restore the patent owner to where they would have been if the infringing acts never took place. Additionally, the courts in both jurisdictions can also award punitive damages as a deterrence in exceptional cases where there has been egregious conduct.
In Canada, the successful patent litigant in the FC is usually entitled to recover between 25-40% of its legal costs. In India, the costs are usually determined on case-to-case basis.
- Cultural and Other Considerations
Lastly, it is important to recognize the cultural and nuances of practicing law in Canada and India. Both Canadian and Indian legal culture emphasizes professionalism, punctuality, and adherence to procedural rules.
In Canada, professionalism when interacting with opposing counsel is even more important because of the extensive oral discovery process which takes place outside the courtroom. Further, Canadian courts encourage joint submissions of both parties, as far as possible, to narrow down the substantive and procedural issues, which require opposing counsel to try to work collaboratively.
In India, patent suits are largely litigated before the constitutional courts (the High Courts) in India, and Indian courts have a wider discretion and can interpret the facts and law of a case with more flexibility in the public interest.
[1] Consulate General of India Vancouver,BC,Canada
[2] Invalidity can still be raised as a defence in provincial superior courts, however, any such determination by a provincial superior court is applicable to the specific proceeding only (in personam and not in rem).
[3] High Courts in India are constitutional courts created by the Constitution of India and are the highest courts in a specific state/province.
[4] Except for the district courts within the jurisdictions of the High Courts of Delhi, Bombay, Calcutta, Shimla and Madras, the district courts generally have unlimited pecuniary jurisdiction.
[5] The High Court of Delhi has pecuniary jurisdiction above INR 2 crores (around 330,000 CAD).
[6] IPD is a division of judges within the High Court of Delhi who specialize in IP and adjudicates exclusively in matters pertaining to IP.
[7] Based on where the ‘cause of action’ lies.
[8] Complexity of the case, eagerness of the parties, public interest, backlogs and vacancies in a particular court during litigation.
[9] In some exceptional cases, patent suits in India have been concluded in less than one year.
[10] A request for discovery can be considered to be speculative or a “fishing expedition” if the moving party is unable to show the relevance of what is being sought and its reasonable connection to the specific infringement questions.
[11] Data flooding is a practice where the responding party against whom discovery is ordered floods the moving party with large volume of documents to mask the relevant material.
[12] In accordance with the High Court of Delhi Patent Rules, 2022.
[13] Hot-tubbing is a practice where experts of all parties are brought to testify before the court simultaneously on a specific issue, which is particularly useful for the court to determine complex technical issues.
[14] Seeks disclosure of sufficient material facts by the other party in their pleading.
[15] The court may direct the allegedly infringing parties to halt their infringing actions for a certain period time or until the final determination of the suit.
[16] Orders to keep documents and information disclosed by the parties during the proceedings confidential.
[17] Motions seeking an order directing the other party to answer questions that were refused during oral examinations.
[18] Seeks to divide the issues into multiple phases, typically dividing the issue of the quantum of damages or profits until after the issue of liability has been decided.
[19] Confidentiality club is a close circle of people handpicked by the court, such as counsel and some of the parties’ authorized representatives, who are provided with limited access to certain documents/information.
[20] With the leave of the court, the witness may have the entirety of their affidavit or report read into evidence.