Virtual intellectual property litigation in Canada

The COVID-19 pandemic has been an unprecedented disruption that forced individuals, businesses and entire professions to adapt to a new reality. The legal industry was no exception. To stop the spread of COVID-19, Canadian courts and lawyers were forced to go “virtual”. The Federal Court of Canada, which has inherent jurisdiction over intellectual property disputes in Canada, quickly became a leader in accommodating virtual litigation. This has made the Federal Court an attractive venue for intellectual property owners looking to enforce their intellectual property rights.

The Federal Court swiftly developed new rules and protocols that enabled litigation to proceed virtually. Using these measures, the Federal Court has been able to continue adjudicating proceedings fairly and efficiently despite the challenges presented by the COVID-19 pandemic. The implementation of these protocols ultimately led to 2020 being a very productive year for intellectual property litigation, with more intellectual property trials being heard by the Federal Court in 2020 than any of the three preceding years.

To promote virtual litigation, the Federal Court has adopted the use of video hearings, expanded e-filing, and modified procedures that are impractical due to COVID-19‎. Combined with the Federal Court’s case management process, these virtual provisions provide significant flexibility to litigants during the pandemic.

Virtual hearings

‎The Federal Court adopted virtual hearings early in the pandemic and heard its first virtual patent infringement trial in May/June 2020. The Federal Court has since transitioned almost exclusively to virtual hearings over Zoom, though flexibility remains for in person hearings in exceptional circumstances. Litigants are also strongly encouraged to conduct examinations for discovery and cross-examinations of affiants virtually. While the primary purpose of virtual proceedings is to restrict transmission of COVID-19, there are also substantial benefits to litigants through increased convenience and efficiency. For example, clients may observe or participate virtually without significant disruption to their typical routines. Eliminating the need for travel also provides substantial cost savings, especially in intellectual property matters where clients, witnesses and experts are often located around the world and need to travel to Canada to participate in a lengthy trial.

The Federal Court has developed standard protocols and best practices for virtual hearings, with input from members of the judiciary and Counsel experienced with virtual hearings. The protocols and best practices provide counsel and litigants with practical guidance to efficiently navigating virtual hearings. At the same time, Court’s procedures remain flexible to suit the needs of the litigants in any particular case. The Federal Court’s early adoption of virtual hearings has helped it gain valuable insight and become a frontrunner in virtual litigation.

E-filing and e-commissioning of affidavits

The Federal Court has also modified its rules relating to filing, service and commissioning of documents.  All documents can now be filed electronically with the Federal Court using its e-filing portal, eliminating the need for multiple hardcopies to be filed. The Federal Court has also eased procedural rules for those seeking substituted ‎service or to validate service, as parties may have difficulties effecting personal service during the pandemic. The Federal Court has also adopted provincial guidelines allowing for remote commissioning of affidavits, eliminating the need for litigants to physically meet with their counsel. Overall, the Federal Court has been proactive in ensuring that intellectual property litigation can effectively continue despite any COVID-19 restrictions in place.

Case management

Case management has long been the norm in intellectual property litigation before the Federal Court. A case management judge is assigned to a proceeding and is able to resolve procedural disputes informally without the need for motions or written submissions. In the context of virtual litigation, case management allows litigants a flexible application of the rules to adapt to rapidly changing circumstances based on principles of fairness, proportionality and efficiency. The Federal Court’s use of case management has helped ease the transition to virtual litigation by providing parties with an efficient means of dealing with issues related to the pandemic and virtual litigation.

Conclusion

The past year brought many unprecedented challenges. Despite this, the Federal Court of Canada has done a superb job of adapting to the circumstances and ensuring that its litigants can effectively and efficiently enforce their intellectual property rights. To discuss, how best to enforce your intellectual property rights, please contact DLA Piper’s leading Intellectual Property & Technology team. Our team at DLA Piper has extensive experience successfully navigating the Federal Court’s virtual practices, including acting as Counsel in Canada’s first virtual patent infringement trial.

This article provides only general information about legal issues and developments, and is not intended to provide specific legal advice. Please see our disclaimer for more details.