Using a US-patented invention in Canada

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Are there any limitations or processes for using a patent in Canada that is registered only in the US?

Are there any liability issues? Would I be infringing?

jim

Posted 2016-07-15T02:00:18.577

Reputation: 41

7A patent for the US applies to the manufacture, sale, offer to sale, or use in the United States. If all of these activities are going to happen outside the US, then the US patent is not relevant. You should probably check to ensure that there is not a PCT application filed for this patent family. Canada is unusual in that it allows entry into Canada from the PCT process 42 months after the original filing date. You should have competent patent counsel check the Canadian patent data files to ensure that there is not a sibling application or another application from a third party. – Kevin E Flynn – 2016-07-15T18:04:35.467

2@KevinEFlynn Your comment is a perfectly reasonable answer. I would encourage you to post is as such. Comments are not permanent. – Eric S – 2017-03-19T15:40:15.423

Answers

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With few exceptions, patents apply only to activities within the borders of the countries that issue them. Therefore, generally, a US patent has no effect on use of the patented invention in Canada. The user would have no liability for infringement.

In 2018 the US Supreme Court, in the case of WesternGeco v ION Geophysical Corp, 138 S.Ct. 2129 (2018), said that a patent owner can recover lost profits that they could have made but for an infringer's conduct inside the US that led to use of the patented invention outside of the US. That would be an uncommon situation that is probably not within the intended scope of the question.

Of course, if the invention is or becomes patented in Canada, there could be liability to the owner of the Canadian patent for infringing use.

Jonah Probell

Posted 2016-07-15T02:00:18.577

Reputation: 346