Intellectual Property Litigation at the Federal Court

Canada’s Federal Court is the go-to forum for intellectual property litigation in Canada. While provincial superior courts have concurrent jurisdiction over infringement proceedings, for several reasons, rights owners often look to the Federal Court to start their proceedings and some recent announcements have reinforced this dominance of the Federal Court for intellectual property matters.

Legislative Background

The Patent Act, Trademarks Act and Copyright Act all include provisions granting concurrent jurisdiction to the Federal Court alongside the provincial superior courts. For example, section 54(1) of the Patent Act states that infringement may be brought in superior courts which is concurrent with the Federal Court’s jurisdiction under section 20 of the Federal Courts Act.

The Federal Court does have some areas of exclusive jurisdiction for intellectual property matters including granting orders amending records at the Canadian Intellectual Property Office and in rem validity orders pursuant to section 20(1)(b) of the Federal Courts Act and section 60 of the Patent Act.

The Federal Court is a national court, so while it has regional offices, the same pool of judges hear proceedings across the country no matter where the proceeding is started or where the hearing takes place.

Chambers of Judges

Because of its emphasis on certain areas of law under Federal jurisdiction, including intellectual property, certain judges have informally focused on certain areas of law. This has been outlined in a practice notice issued earlier this year identifying 24 judges who are part of the Intellectual Property and Competition Chamber. The Court also identified judges for the Maritime and Admiralty Chamber and Class Proceedings Chamber.

This practice notice said that the court would try to allocate the hearing of motions and trials to the judges in the appropriate Chamber. The judges identified as being part of the Intellectual Property chamber have typically have experience hearing intellectual property cases and/or practiced in the area of intellectual property. The practice notice says that, “For assignments to the Intellectual Property and Competition Chambers, the Judicial Administrator will also consider sub-specialties related to practice areas particular to IP (e.g., copyright, trade-marks, patents and competition).”

Appointments

In addition to identify Chambers of judges having familiarity with certain areas of law, several recent judicial appointments to the Federal Court have practiced in the area of intellectual property. Since the start of the pandemic in early 2020, the appointments have included The Honourable Ekaterina Tsimberis (appointed February 2023), Associate Judge Michael Crinson (appointed February 2023), Associate Judge L.E. Trent Horne (August 2021), and the Honourable Angela Furlanetto (February 2021) all of whom practiced in the area of intellectual property prior to their appointments.

Clarification on Scope of Jurisdiction

Another development in the last couple of years which makes the Federal Court more attractive for intellectual property litigation is the clarification in 2020 by the Federal Court of Appeal of the court’s jurisdiction to handle contractual interpretation when those issues arise in its core jurisdiction, such as intellectual property. The Federal Court of Appeal wrote in Salt Canada Inc. v. Baker, 2020 FCA 127 at paragraph 40:

This express rejection tears at the notion that Parliament regards the interpretation of agreements as a task alien to the Federal Courts or that its judges are incapable of applying contractual principles. Sometimes the Federal Courts have to do it under the jurisdiction they have lawfully been given. Where contractual disputes arise within its jurisdiction, the Federal Courts are empowered to resolve these disputes just as any other court does, and they do so all the time.

This clarification, particularly in the context of interpreting contracts that arise in intellectual property disputes, means that there is less risk that a defendant will seek to stay a proceeding in favour of a provincial superior court. Uncertainty about the Federal Court’s jurisdiction has arisen in enforcing settlement jurisdictions, and ownership disputes based on employment and assignment contracts. In one example, a defendant in an intellectual property case brought a third party claims for indemnity, which was found to be within the court’s jurisdiction. (see my earlier post, Indemnity Claims in Federal Court IP Disputes).

Filing of Intellectual Property Proceedings

These developments over the last few years have strengthened the Federal Court’s role as the primary court for adjudicating intellectual property matters in Canada. In a typical year, about two to three hundred new intellectual property proceedings are filed with the Federal Court with about four to five hundred being active in a given year.