Intellectual Property in Canada's Federal Courts: An Empirical Review of Proceedings

AuthorJeremy de Beer & Ryan Pistorius
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Intellectual Property in Canada’s
Federal Courts: An Empirical
Review of Proceedings
Jeremy de Beer & Ryan Pistorius
     a lot in the twenty-f‌ive
years since Professor Ian Bushnell wrote the f‌irst book to record a history of
the Federal Court of Canada. In that chronicle of the court’s history from
 to , the phrase “intellectual property” appears four times in 
pages, including the index.1 “Industrial property” also appears four times as,
in eect, a synonym. e terms are used to list specialized f‌ields over which
the Federal Court was given jurisdiction a list that typically includes
industrial/intellectual property, tax, and admiralty.
ree pages elaborate on the Exchequer Court’s early role in relation to
patents, copyrights, trademarks, and industrial designs.2 at story is quite
interesting. Take patents, for example. Initially, the Minister of Agriculture
was designated the Commissioner of Patents. at Minister settled disputes
about patent validity based on laws enacted in  and .3 Until ,
appeals of those decisions went to the federal cabinet, not the courts.4 e
1 See Ian Bushnell, The Federal Court of Canada: A History, 1875–1992 (Toronto: Univer-
sity of Toronto Press, 1997) at 442.
2 Ibid at 77–80.
3 The Patent Act of 1869, SC 1869, c 11; The Patent Act of 1872, SC 1872, c 26; Harold
G Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed
(Toronto: Carswell, 1969) at 5–7.
4 Bushnell, above note 1 at 78.
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        
Exchequer Court acquired jurisdiction over government challenges to patent
validity in , and it acquired concurrent jurisdiction with provincial courts
over patent impeachment cases in .5 It was autumn of  when the
Exchequer Court was assigned jurisdiction over actions between private indi-
viduals concerning patents. e story is similar for copyrights, trademarks,
and designs. In the late nineteenth century, the Exchequer Court became
a place — but not the only place where intellectual property matters were
litigated. e Federal Court inherited this role when it was created in .6
In , on the eve of the f‌iftieth anniversary of Canada’s federal courts,
intellectual property is a mainstream legal topic. As intellectual property has
emerged to drive the economy,7 it has become a staple course in law school
curricula. While parts of intellectual property remain rather technical even
for specialists, the topic is no longer taboo for generalists.
e growth of intellectual property over the last quarter century has
aected the federal courts’ work. is chapter explores empirical data show-
ing how the courts’ engagement with intellectual property has evolved. Inter-
views with dozens of current and former judges yield qualitative insights into
the nature of the courts’ contributions to the f‌ield. And a customized, longi-
tudinal dataset from the courts’ own administrative service quantitatively
charts patterns in intellectual property litigation over twenty-f‌ive years, from
 to . We combine this data with statistics from leading intellectual
property lawyers and our own supplemental data collection and verif‌ication.
Perhaps surprisingly, it seems at f‌irst glance that, quantitatively, intel-
lectual property matters are being litigated less frequently now than they
were twenty-f‌ive years ago. e trend is apparent across all kinds of proceed-
ings: actions, applications for judicial review, and appeals. e trend is also
apparent across most kinds of intellectual property rights: patents, copyrights,
trademarks, and industrial designs.
Exceptions exist. For example, there are now numerous proceedings
involving the notice of compliance regulations for patented medicines that
were introduced in . e number of annual Patented Medicines (Notice
of Compliance) Regulations (PMNOC) proceedings peaked in the mid-s.
5 An Act to amend “The Supreme and Exchequer Courts Act,” SC 1887, c 16, s 17(b); An
Act to amend the “Patent Act,” SC 1890, c 13, s 1.
6 Federal Court Act, SC 1970, c 1, ss 3 and 20.
7 See Jeremy de Beer, “Evidence-Based Intellectual Property Policymaking: An Inte-
grated Review of Methods and Conclusions” (2016) 19:5–6 Journal of World Intellec-
tual Property 150.
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Intellectual Property in Canada’s Federal Courts
But the overhaul of PMNOC procedures that happened in , following
implementation of the Canada-European Union Comprehensive Economic and Trade
Agreement,8 could reverse the trend. Substantial changes to copyright, trade-
mark, and design law resulting from international treaty implementation
over the last several years will probably also lead to more litigation.
For twenty-f‌ive years, intellectual property has been among the busiest
f‌ields for the Fe deral Court. Intellectual property proceedings consistently
comprise about one-f‌ifth of the overall workload, regardless of whether the
raw number of IP proceedings is rising or falling. But numbers do not tell
nearly the whole story. Qualitative data conf‌irm that intellectual property has
become one of the courts’ main areas of real and perceived strength. Evidence
from judges themselves suggests that the intellectual property cases heard
today are more complex and signif‌icant than before.
Our main goal is to tell an empirical story of what has happened with
intellectual property in Canada’s federal courts over the last twenty-f‌ive or,
where possible, f‌ifty years. But the combination of qualitative and quantita-
tive evidence leads us to two further hypotheses.
e f‌irst one is that alternative dispute resolution (ADR) may partly
explain why the raw number of intellectual property cases is decreasing while
the diculty and importance of those cases is increasing. Complex IP ques-
tions where the law is unsettled are being presented to the federal courts.
More straightforward matters might be handled through mediation and arbi-
tration. is instinct is shared by the senior intellectual property scholars and
litigators with whom we spoke. While fully testing our hypothesis is beyond
the scope of this chapter, it seems the intellectual property cases in the federal
courts are getting harder.
Second, in our view, the signif‌icant increase in the volume of proceed-
ings observed in the mid/late s and early s, and subsequent leveling
o in the s, could portend another rise forthcoming in the s. If we
are correct — that major economic and technological shifts around the turn
of the century and corresponding international and national IP law reforms
at least partly explain the busiest periods in the federal courts’ history — we
could be on the cusp of seeing such changes again. Entering the fourth
industrial revolution, involving the conf‌luence of digital and biological tech-
nologies, artif‌icial intelligence, and big data, we might now be seeing a “calm
before the storm,” so to speak.
8 Canada-European Union Comprehensive Economic and Trade Agreement, 30 October
2016 (entered into force 21 September 2017).

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