Court answers the “primordial” question of what constitutes use of a patented invention in Canada

Scott Foster

The Federal Court of Appeal held that when determining infringing use, the “primordial” question is whether the claimed invention is utilized. Once the claimed invention is determined through claim construction, one must assess whether the defendant has used that invention. So, for example, if the claim is to an apparatus or a physical object, leaving aside a quia timet claim, the defendant must use an apparatus or physical object that falls within the claims.

In the case before it, the defendants used drawings and plans that, if made, would allegedly fall within the scope of the patent. The defendants had not made any physical object according to the plans.

The trial judge dismissed the infringement claim at summary trial and the Federal Court of Appeal dismissed the appeal.

The appellate court held the defendants had not used the claimed invention through preparation of drawings and conceptual documents. The claims at issue were to physical apparatus and the defendants had not made such objects in Canada (or elsewhere).

The Court confirmed the trial judge’s interpretation of section 42 of the Patent Act and criticized the plaintiff’s strained interpretation of Monsanto v Schmeiser, 2004 SCC 34 from the Supreme Court of Canada.

While the result is not surprising, the decision is worth a read for its analysis of “use” which includes commentary of some interesting ancient decisions.

At the end of its reasons, the appellate court made the obvious statement that “recourse may lie elsewhere” and referred to “the protection of other forms of intellectual property including copyright and moral rights, or in the enforcement of any non-disclosure agreements between the parties respecting any confidential information”. The court also noted that the plaintiff had commenced a proceeding in the Supreme Court of British Columbia to address these other rights. So it seems that the appeal was largely an interesting academic exercise. 

Steelhead Lng (Aslng) Ltd. v. Arc Resources Ltd., 2024 FCA 67