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ARTICLE · 28 FEBRUARY 2019

Prosecution History Estoppel Comes To Canada

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The December 2018 Royal Assent of Bill C-861 introduced new section 53.1 to the Patent Act, which brought prosecution history estoppel to Canada. This amendment removes the bar

CanadaIntellectual Property
Karen Townsend
Karen Townsend
Teresa Reguly
Teresa Reguly
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The December 2018 Royal Assent of Bill C-861 introduced new section 53.1 to the Patent Act, which brought prosecution history estoppel to Canada. This amendment removes the bar on the use of prosecution history during subsequent litigation, that has endured since the Supreme Court of Canada’s 2000 judgment in Free World Trust.2 While the impact of the prosecution history of a patent has long been a point of consideration in respect of U.S. proceedings, this amendment introduces a new element to patent prosecution and litigation in Canada.

What you need to know

  • Patent prosecution history is admissible into any action or proceedings that was not finally disposed of as of December 13, 2018.3

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