Thursday, November 8, 2018

Canadian Government Proposes That FRAND Commitments Should Bind Subsequent Assignees

Hat tip to Norman Siebrasse for calling to my attention a series of amendments to Canada's Patent Act proposed by the Government of Canada as part of a budget bill introduced in the House of Commons on October 29.  If you access the bill and scroll down to Division 7, titled "Intellectual Property Strategy," you will find the proposed amendments under Subdivision A.  Regarding standard-essential patents, the bill would add two new provisions, sections 52.1 and 52.2, to the Patent Act, as follows:
Subsequent patentee or holder bound
52.1(1)A licensing commitment in respect of a standard-essential patent that binds the patentee, binds any subsequent patentee and any holder of any certificate of supplementary protection that sets out that patent.
Subsequent holder bound
(2)If a certificate of supplementary protection sets out a standard-essential patent, a licensing commitment that binds the holder of that certificate of supplementary protection, binds any subsequent holder of the certificate of supplementary protection.
(3)Subsections (1) and (2) apply despite any other Act of Parliament and any decision or order made under such an Act.
52.2The Governor in Council may make regulations, for the purposes of section 52.‍1, respecting what constitutes, or does not constitute, a licensing commitment or a standard-essential patent.
The bill also would, among other things, add new provisions permitting the use of prosecution history "[i]n any action or proceeding respecting a patent," authorizing the regulation of demand letters, and establishing a statutory experimental use defense.

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