This article was prepared with the assistance of Hailey Min.
2025 saw a significant statutory change and the long-awaited Supreme Court of Canada hearing of an appeal regarding the patentability of methods of medical treatment. The courts also considered due care in the context of paying maintenance fees, the principle of claim differentiation and the Canadian Patent Office’s assessment of subject-matter patentability.
In our annual review of developments in Canadian patent law, we highlight the significant statutory change, and a selection of interesting points addressed in the reported decisions.
On January 28, 2026, join our presenters Andrea Berenbaum, Reshika Dhir, Michael Sgro and Iris Ngo for an insightful webinar as they provide an annual summary of key developments in Canadian patent law. It offers a valuable opportunity for legal professionals and others interested in Canadian patent law to gain an overview of developments in 2025.
For a comprehensive review of Canadian pharmaceutical decisions and developments, read our 2025 highlights in Canadian life sciences IP and regulatory law.
Table of contents
- Canada’s Patent Term Adjustment system is now available.
- Supreme Court of Canada hears appeal relating to methods of medical treatment.
- The Federal Court of Appeal considers the “due care” standard.
- Federal Court finds Commissioner erred in assessing subject-matter patentability.
- Federal Court of Appeal clarifies principle of claim differentiation and affirms double patenting continues to apply for divisional patents.
- Can multiple documents be used when assessing novelty?
- Infringement by common design: a new cause of action.
- Claim construction: there is no presumption of essentiality.
- Federal Court of Appeal affirms second person not required to address patent submitted before its submission filing date but listed after.
- Next Generation Patents: modernization of Canadian Intellectual Property Office patent IT systems.
1. Canada’s Patent Term Adjustment system is now available.
Canada’s Patent Term Adjustment (PTA) system came into force on January 1, 2025. PTA is only potentially available for patents that issue on or after December 2, 2025, with a filing date on or after December 1, 2020. Accordingly, the PTA system is still in its infancy.
PTA is meant to compensate patentees for unreasonable delays by the Canadian Intellectual Property Office in processing their patent applications. The official 2026 fee to apply for PTA is CAD $2,567.50 and the request must be filed within three months of issuance of the patent. Few patents are expected to qualify for PTA, but a patentee can adopt certain practices to maximize their chances at obtaining PTA. For more details, please see our article: “A practical guide to Canada’s new Patent Term Adjustment (PTA) system” and summary of the changes: “Patent Term Adjustment available for Canadian patents issued on or after December 2, 2025”.
2. Supreme Court of Canada hears appeal relating to methods of medical treatment.
Methods of medical treatment are not considered patentable in Canada, whereas claims directed to a medical “use” are. However, there has existed a fair amount of uncertainty regarding the patentability of medical use claims involving dosage ranges and regimens.
Over ten years have passed since the Federal Court of Appeal (FCA) flagged the patentability of methods of medical treatment as being worthy of full consideration by the Supreme Court of Canada. This issue finally came before the Court in Pharmascience Inc v Janssen Inc (Supreme Court File No 41209) on October 9, 2025. The sole issue on appeal was whether Janssen’s Canadian Patent No 2,655,335 relating to paliperidone palmitate (INVEGA SUSTENNA) is invalid for claiming an unpatentable method of medical treatment. The claims at issue include the features of a paliperidone palmitate formulation dosing regimen for treatment of schizophrenia. The Supreme Court reserved its decision.
For a further discussion, please see our article, “Supreme Court of Canada reserves decision on appeal relating to the patentability of methods of medical treatment”.
3. The Federal Court of Appeal considers the “due care” standard.
The Patent Law Treaty was implemented in Canada through amendments to the Patent Act and Patent Rules on October 30, 2019. As part of these amendments, a showing of “due care” must be made in some instances to excuse a missed maintenance fee payment or failure to request examination. The Canadian Intellectual Property Office (CIPO) has adopted a stringent standard when assessing whether the due care required by the circumstances was taken. In 2025, the Federal Court of Appeal (FCA) had two opportunities to consider what the “due care” standard entails. Both of these decisions are reflective of CIPO’s stringent standard.
In Taillefer v Canada (Attorney General), 2025 FCA 28, the FCA considered circumstances where the patentee and his patent agent failed to timely pay a maintenance fee for a patent after all emails from the patentee’s agent were caught by the patentee’s spam filter. The patentee and his agent had previously communicated by email for close to 10 years without issue. The Commissioner of Patents denied the request to reverse the deemed expiry of the patent, not being satisfied that the failure to pay the maintenance fee by the prescribed due date occurred in spite of the due care required by the circumstances. The Federal Court found the Commissioner’s decision reasonable, affirming the standard applied, and the reasoning that a reasonably prudent patentee and agent would have looked at steps to avoid the communication failure. In its decision released on February 4, 2025, the FCA dismissed the appeal from the Federal Court decision with brief reasons.
In Canada (Attorney General) v Matco Tools Corporation, 2025 FCA 156, the FCA considered the due care standard in complex circumstances in which many parties were involved.
A “data migration error” had prevented the application at issue from being entered into a third-party annuity service’s database. The annuity service notified the applicant of the error, but this went unnoticed by the applicant. The Canadian patent agent of record received instructions solely from US counsel and had been advised by US counsel that the maintenance fees were being handled by a third-party annuity service. When the maintenance fee went unpaid by the original deadline, the Canadian agent forwarded the notice for non-payment to US counsel. US counsel did not flag or forward the notice to the applicant in view of instructions “to take no further action … with regard to payment of annuities and maintenance fees”. The application went abandoned when the maintenance fee and late fee were not paid and the request to reinstate the application was refused by the Commissioner.
On judicial review, the Federal Court in Matco Tools Corporation v Canada (Attorney General), 2025 FC 118 set aside the Commissioner’s decision, finding two aspects of the analysis concerning. First, the Federal Court disagreed that the initial data-migration error was irrelevant in assessing whether due care was taken. Second, the Federal Court found that the Commissioner’s assertion that “[n]o explanation has been provided as to why the Notice was not forwarded to the applicant” to be not supported by the evidence as it omitted key facts.
However, the FCA set aside the decision of the Federal Court and restored the Commissioner’s decision. The FCA held that the obligation to exercise due care applied to all parties, including the Canadian agent, US counsel and annuity service. The FCA also found that both aspects of the Commissioner’s analysis which the Federal Court found concerning were reasonable.
For a further discussion of the Matco Tools decisions, please see our article "Federal Court of Appeal sets aside two-stage test for assessing ‘due care’".
4. Federal Court finds Commissioner erred in assessing subject-matter patentability.
The decision of the Federal Court in Dusome v Canada (Attorney General), 2025 FC 1809 considered aspects of the Commissioner of Patent’s approach to determining subject-matter patentability following the decisions of the FCA in Canada (Attorney General) v Amazon.com, Inc, 2011 FCA 328 and Canada (Attorney General) v Benjamin Moore & Co, 2023 FCA 168. For a discussion regarding the Benjamin Moore decision, please see our article in the Canadian Patent Law 2023: A Year in Review.
In Dusome, the Commissioner had refused Canadian Patent Application Number 2,701,028 (the 028 Application) with claims relating to a wagering poker game that can be played with conventional physical cards or on a computerized system on two grounds: the “actual invention” did not meet the definition of “invention”, and the subject-matter was excluded as being an abstract algorithm for playing a game.
The Federal Court found that the Commissioner committed four errors: (1) a failure to properly construe the claims – even though the Commissioner’s decision correctly stated the law on purposive construction; (2) assessing subject-matter patentability based on what the Commissioner considered to be the “actual invention” of the 028 Application (which was squarely rejected by the FCA in Amazon); (3) an improper approach to and application of the actual invention question, by stripping away all of the physical elements of the invention thereby leaving only the new knowledge added to the art of poker; and (4) applying an improper definition of patentable “art”. The Federal Court remitted the 028 Application back to the Commissioner for re-examination on an expedited basis.
5. Federal Court of Appeal clarifies principle of claim differentiation and affirms double patenting continues to apply for divisional patents.
NCS and Kobold each provide specialized downhole equipment used in fracking, a method of extracting oil and gas from underground hydrocarbon formations. In NCS Multistage Inc v Kobold Corporation, 2023 FC 1486, the Federal Court had dismissed NCS’s actions alleging Kobold had infringed certain of its patents and allowed Kobald’s counterclaim asserting NCS had infringed its Canadian Patent No. 3,027,571 (571 Patent), a “voluntary” divisional application of Canadian Patent No. 2,856,830 (830 Patent). The Federal Court decision warranted mention in our Canadian Patent Law 2023: A Year in Review.
A key issue on appeal in NCS Multistage Inc v Kobold Corporation, 2025 FCA 187 related to the Federal Court’s construction of the asserted claims of the 571 Patent. In allowing NCS’s appeal of the construction of these claims, the FCA held that the Federal Court had misapplied the principle of claim differentiation in finding that a limitation of a dependent claim must be excluded from the independent claim. The FCA clarified that this principle creates a rebuttable presumption that the limitations of a dependent claim should not be read into the independent claim; in other words, an independent claim encompasses but is not limited to an embodiment contemplated by a dependent claim.
Because of its finding that the Federal Court erred in construing the asserted claims, the FCA held that the Federal Court’s conclusion that those claims are not invalid for obviousness double patenting over certain claims of the 830 Patent must be set aside for re-determination. In its reasons, the FCA affirmed that invalidity on the ground of double patenting continues to apply to divisional patents, even though “evergreening” is not a concern, and that the test for obviousness double patenting centres on whether the differences between the claims of the first and second patents constitute obvious steps to a person skilled in the art. While many questions remain, double patenting remains a significant issue for applicants and patentees in Canada, and there are no terminal disclaimers or similar mechanisms to obviate double patenting attacks. For practical strategies on navigating such issues in Canada, please see our article, “Navigating unity of invention and double patenting issues: practical strategies for patent protection in Canada”.
6. Can multiple documents be used when assessing novelty?
In Canada, the test for anticipation is a two-step test considering both prior disclosure and enablement. Typically, the disclosure must be found in a single publication. However, two decisions in 2025 considered the use of multiple documents in assessing anticipation.
In Alexion Pharmaceuticals, Inc v Amgen Canada Inc, 2025 FC 754, the Federal Court accepted that a prior anticipatory disclosure could comprise teachings from more than a single document in instances where documents are “incorporated by reference”. The Federal Court held that the critical factor is whether a prior reference provides clear direction so that the person skilled in the art arrives inevitably at the claimed invention and where an incorporation by reference is used, this will depend on what directions are provided in the primary source as to how the incorporated reference is to be used. Clear direction may be provided where the primary source makes explicit reference to specific teachings in the incorporated reference, such that the skilled person is given precise direction to the specific information that is to be included in the disclosure. That is, the skilled person should not be left to look at multiple sources to determine what information to combine. For a further discussion of this decision, please see our article, “Court considers anticipation by incorporation by reference”.
In AGI Suretrack LLC v Farmers Edge Inc, 2025 FCA 134, the FCA highlighted that although the anticipation analysis is necessarily limited to a single piece of prior art, the single piece of prior art need not be a document. As such, in cases where anticipation is assessed based on prior sale and use of a single physical product, multiple documents describing the functions and properties of the physical product can be considered.
7. Infringement by common design: a new cause of action.
Infringement by common design is where two parties agree on a common action and, in carrying out that action together, infringe on the rights of the patentee. Although the common design doctrine is well-established in Canadian tort law, the doctrine had not been applied to find patent infringement in Canada before Adeia Guides Inc v Videotron Ltd, 2025 FC 1725.
In this decision, the Federal Court held Videotron liable for the infringement of two of Adeia’s patents on the theory of common design, finding that Videotron sub-contracted part of its patent infringement to Comcast by engaging in a partnership with Comcast to provide its Helix TV system to customers. Although Comcast was not a party to the litigation, this was found to not be a bar to finding infringement by common design, as both parties need not be named defendants.
By contrast, the Federal Court held that infringement by common design was not made out against Videotron with respect to a VRAI “Resume Viewing” menu. Although the VRAI interface contained all of the essential elements of one of Adeia’s patents, Adeia had not met its burden to prove that Videotron would have participated in the design of the interface.
Adeia has appealed the decision (Federal Court of Appeal files A-393-25, A-394-25, and A-395-25). Videotron has cross-appealed.
8. Claim construction: there is no presumption of essentiality.
It is well-accepted in Canadian patent law that prior to assessing validity or infringement, the claims are to be construed, and that claim construction involves an assessment of the essentiality of claim elements. In the leading case of Free World Trust v Électro Santé, 2000 SCC 66, the Supreme Court of Canada indicated that for a claim element to be considered non-essential, it must be shown either: (1) that on a purposive construction of the words of the claim it was clearly not intended to be essential; or (2) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention.
It has been over twenty-five years since the decision in Free World Trust was released, and there remain questions regarding the application of its test for essentiality.
In Canada (Attorney General) v Benjamin Moore & Co, 2023 FCA 168, the FCA acknowledged that judges were “relying more and more often on the presumption that all elements of a claim are essential unless otherwise established by the patentee”. In AGI Suretrack LLC v Farmers Edge Inc, 2025 FCA 134, the FCA clarified that “all elements of a claim are not to be presumed essential but, where a patentee asserts non-essentiality, they bear the burden of proof under the test enunciated in Free World Trust.”
9. Federal Court of Appeal affirms second person not required to address patent submitted before its submission filing date but listed after.
The Patented Medicines (Notice of Compliance) Regulations (the Regulations) provide a link between regulatory approval of a subsequent entry drug to the patent status of the drug to which a comparison or reference is made. The Regulations mandate the Minister of Health to maintain a Patent Register for approved drugs. A second person who seeks to market its own version of the patented drug must address any patents already listed on the Register.
In Bayer Inc v Amgen Canada Inc, 2025 FCA 142, the Federal Court of Appeal affirmed the reasonableness of the Minister of Health’s decision to list a patent on the Register only when it was determined to be eligible, eight days after it was submitted to Health Canada, and finding that a second person is not obligated to address patents submitted but not yet listed on the Register. As a result, as Amgen filed its submission after the patent was submitted but before it was determined eligible and therefore listed, it was not required to address the patent.
For a further discussion, please see our article, “Federal Court of Appeal confirms generic not required to address patent submitted before ANDS filing but listed after”.
10. Next Generation Patents: modernization of Canadian Intellectual Property Office patent IT systems.
On July 17, 2024, the Canadian Intellectual Property Office (CIPO) launched MyCIPO Patents, a new online portal for patent services. A modernization effort was crucial to replace outdated legacy systems, and this upgrade has great promise once fully operational. However, the launch has been fraught with difficulties and the situation continues to evolve over time.
For our most recent update on the current status of operations, please see our article, “Canadian Intellectual Property Office ‘Next Generation Patents’ update and status”.
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The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.