Federal, provincial courts have concurrent jurisdiction over patent infringement: Alberta court

Alberta Limitations Act applied since cause of action arose in the province: Court of Appeal

Federal, provincial courts have concurrent jurisdiction over patent infringement: Alberta court
Patent infringement may be filed in either federal or provincial courts

The Alberta Court of Appeal has upheld the concurrent jurisdiction of the federal and provincial courts over patent infringement claims and, regardless of where it was filed, the Alberta Limitations Act still applied since the cause of action arose in Alberta.

In Secure Energy Services Inc. v. Canadian Energy Services Inc., 2022 ABCA 200, Canadian Energy Services Inc. (CES) sued Secure Energy Services Inc. (Secure) for patent infringement. CES alleged that Secure infringed its rights to Patent 834. As a defence, Secure claimed to be the rightful owner of the patent and further counterclaimed for a declaration that it owned the patent, a declaration of patent infringement, and damages.

The chambers judge dismissed Secure’s counterclaim and ruled that it was statute-barred by the Limitations Act, RSA 2000, c L-12 or, alternatively, that it was doomed to fail because of a mutual release of the patent.

On appeal, Secure alleged that the chambers judge mischaracterized the “threshold question” of whether the claim was statute-barred. It argued that it should have been on the inventive concept and that the issue must first be decided in a Federal Court pursuant to the Patent Act, RSC 1985, c P-4.

The appellate court disagreed, ruling that the concurrent jurisdiction of provincial superior courts and federal courts over infringement of patent cases is uncontested. While patent infringement actions are commonly brought in the Federal Courts as a practical matter, there is nothing in the Patent Act or the Federal Courts Act, RSC 1985, c F-7 that ousts jurisdiction of provincial relief in patent infringement cases, said the court.

Further, even assuming that the case was filed in the Federal Courts, the Alberta limitation periods would still apply since the cause of action arose in Alberta, said the court.

The appellate court also found no error in the chambers judge’s finding that Secure’s claim was remedial in nature, or that its claim flowed from the rights of a patent owner.

Finally, the conclusion that Secure’s predecessors had knowledge of the alleged misappropriation of confidential information and of the mutual release between was founded in evidence, said the court in dismissing the appeal.

Recent articles & video

Legal Innovation Zone launches program to help legal tech entrepreneurs turn ideas into businesses

Roundup of law firm hires, promotions, departures: February 26, 2024 update

Dickinson Wright, Pettle Law, Regency Law Group act in $10-million commercial case

Tax cases scheduled before Federal Court of Appeal this week

BC Supreme Court deals with complex property and separation agreement dispute

Federal Court criticizes immigration officer for not fully considering depth of abusive relationship

Most Read Articles

Alberta Court of King's Bench upholds tribunal decision on Calgary warehouse racking system

Redefining legal services: MT Align president Linda Beairsto on flexible work and diversity

Cross-border M&A will continue to deal with aggressive antitrust enforcement in 2024, says lawyer

BC's new family law legal aid funding resolves long-standing Charter challenge