COVID-19 Emergency Response Act: Amendments to the Patent Act

26 March 2020

After lengthy deliberations, the Federal Government has passed an aid bill in response to the COVID-19 pandemic (COVID-19 Emergency Response Act). The legislation received royal assent at roughly 1:30 p.m. on March 25.



The new legislation introduces significant amendments to the Patent Act (the "Act"). Specifically, section 19 of the Act ("Use of Patents by Government") is amended by adding the new section 19.4 that says, upon Application of the Minister of Health, the Commissioner of Patents shall authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application.

The application must:

  • set out the name of the patentee and the patent number;
     
  • include a confirmation that the Chief Public Health Officer believes that there is a public health emergency that is a matter of national concern;
     
  • include a description of the public health emergency; and
     
  • specify a person, if any, that is to be authorized to make, construct, use and sell the patented invention for the purposes of responding to the public health emergency.

The Commissioner shall notify the patentee of any authorization that is granted under this section and provide them with the information set out in the application, as noted above.

Any such authorization ceases to have effect on the earlier of: (1) the day on which the Minister of Health notifies the Commissioner that the authorization is no longer necessary to respond to the public health emergency set out in the application; and, (2) one year after the day on which it is granted.

The Commissioner is not permitted to make any authorization under the new section 19.4 after September 30, 2020.

What's different from the existing regime?

Authorization: Under the existing sections 19 and 19.1 of the Act the Commissioner may, on application by the Government of Canada or the government of a province, authorize the use of a patented invention by that government for such purpose, for such period and on such other terms as the Commissioner considers expedient.

Under the new section 19.4, upon Application by the Minister of Health, the Commissioner of Patents shall authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application.

Under the existing section 19.1, the Government had to establish that it had made efforts to obtain from the patentee on reasonable commercial terms and conditions the authority to use the patented invention, and its efforts have not been successful within a reasonable period.

Under the new section 19.4 there is no such requirement.

Remuneration: Where the use of the patented invention is authorized under the existing sections 19 and 19.1, the authorized user shall pay to the patentee such amount as the Commissioner considers to be adequate remuneration in the circumstances, taking into account the economic value of the authorization.

Under the new section 19.4, the Government of Canada and any authorized person shall pay the patentee any amount that the Commissioner considers to be adequate remuneration in the circumstances, taking into account the economic value of the authorization and the extent to which they make, construct, use and sell the patented invention.


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