What to expect: IP litigation in Canada

Patrick Smith: Hi, I'm Patrick Smith, head of Gowlings IP group in Calgary. I've practiced exclusively as an IP litigator throughout my career. And I thought some of you may be interested to know what is happening, and what is likely to happen to IP litigation in Canada, in 2020. So first, let me just say this, I know that IP litigation can take place in a variety of courts in Canada. But the reality is that most of it takes place in federal court. And so I'm going to restrict my comments to what's happening in the federal court. And before I do so, maybe useful just to understand what the typical scenario scenario is in the federal court with IP litigation, prior to the current pandemic. Well, first of all IP matters. There is a case manager that gets assigned to to the file, the case manager could either be a judge or .... And their job is to shepherd the case forward to the final hearing or to through to trial. Now they're going to hear all interlocutory matters. So motions, and the way they do so for most simple motions, they're heard either by teleconference or by video conference. Now with big international court, and IP being a national practice, it's typical for counsel to be located in different cities. And the judge may be from yet a different city. And so if in person motion is required to be conducted, then that necessarily involves travel by Council and the court as well. And that simply is not going to take place right now. And and with respect to final hearings, or trials, the current reality is that it's not safe to hold those in person and require people to travel. So for the, for the foreseeable future, that's not going to occur. And so what it does IP litigation look like now in Canada, well, let's just put our selves in the timeframe. It's been a month since about a month since the pandemic has been declared. And it's not been about the same period of time since the Canadian US border as close to all non essential travel. What has the federal court the Federal Court of Appeal done since then, they've imposed about nine practice directions between them, setting up the rules for how IP litigation is to be conducted. Now, here's my synopsis on those rules. First, both courts have imposed something called a suspension period, which means that if there was a deadline that occurred during the suspension period, that essentially is adjourned. And the activity that is at issue will have to recommence after the suspension period is over. So that's the the first thing. Now the courts recognize that for urgent or exceptional matters, there's gonna be have to be dealt with by the court. And so the court allows for those types of things to be determined either by video conference or teleconference, or possibly in writing. Now, the court has also imposed rules to make it easier for people to conduct a litigation practice during the current environment. So for example, the filing of paper documents is discouraged. The court allows in some circumstances to have affidavits commissioned remotely. But as I said before, currently there are no in person hearings or trials. That's what's happening right now. I want to say this, the Federal Court and the Federal Court of Appeal have been instrumental in terms of acting together with the IP bar. And everybody understands that, to get through this current situation, it's going to take some cooperation between parties. And it's also going to take some flexibility. So, right now, with the consent of parties, the court is allowing for civil motions, applications, or appeals to go forward, either by teleconference or by video conference. We're lucky that the federal court is a national court, and has previously invested in technology that allows these hearings to take place either by video conference or teleconference. But what comes next? No one knows how long this era of social distancing will remain in place. And it's not practical to think that the courts can simply adjourn complicated matters indefinitely. Some have statutory deadlines that have to take place before a certain time. And the courts recognize that it's important that some rules be put in place to allow those complicated trials to proceed.

Now, here's what I think is going to happen. What happens if witnesses cannot come to Canada or it's impractical to require them to self isolate before they come to a courtroom in Canada. I think the inevitable reality is that some litigation in Canada will either have to take place wholly or partially through remote resources. If social distancing is still in place, the judge, the registrar, the court reporter, counsel, witnesses, clients, they may all be in different locations. It's going to require that people use only electronic files in terms of