The Federal Court considered the current section 56 of the Patent Act on prior user rights for the first time in Kobold Corporation v NCS Multistage Inc, 2021 FC 1437. The current subsection 56(1) was amended in December 2018 and provides that if a person committed an act before the claim date that would have otherwise constituted an infringement, it is not an infringement if the person commits that “same act” on or after the claim date. The key question was what does the “same act” mean?
The Court concluded that “same” means that the pre-and post-patent acts must be identical (vs. the less stringent “substantially the same” standard referred to in the other prior use defences under subsections 56(6) & (9)). For example, if a person only manufactured and used the patented invention pre-patent, then they can continue manufacturing and using it post-patent, but cannot sell it because selling was not an act done pre-patent. In addition, the relevant part of the invention (i.e. the inventive concept) must also be identical.