Life Sciences Collaborations and the Risk of Joint Patent Infringement

The life sciences business has a global reach, with companies often collaborating across national borders to bring new products and services to market. When such products and services are patent-protected, questions may arise as to who among the collaborators bears the risk of patent infringement, and in what country or countries.

Key Takeaways

• Activities related to experimental use, or to the development and submission of information required under the laws of any country which regulate any product, are exempt from patent infringement in Canada.
• Parties that act on a common plan, including a commercial agreement, that results in infringing conduct in Canada may each be jointly and severally liable for patent infringement.
• Commercial partners that practice or supply some but not all the essential elements in a Canadian patent claim may be liable for patent infringement when the resulting product or service is sold in Canada, even if they are located outside Canada.

Canadian Law Limits Patent Infringement Risks

Canadian law offers broad immunities to life sciences businesses. There is no infringement of a Canadian patent for any person who makes, constructs, uses or sells a patented invention solely for uses reasonably related to the development and submission of information required under the laws of any country that regulate the manufacture, construction, use or sale of any product (Patent Act, s 55.2(1)), or for experimental uses relating to the subject-matter of the relevant patent (s 55.3(1)). Moreover, merely contributing to patent infringement (for example, by supplying a patented component), without inducing another person to infringe, is not, by itself, an act of patent infringement.

Canadian courts had long envisaged that defendants could perhaps be jointly liable for patent infringement if they had a "common design" to infringe, but no party had ever been found liable on this basis. This changed in late 2025, when the Federal Court held cable provider Videotron liable for patent infringement on the theory of common design: Adeia Guides Inc v Videotron Ltd, 2025 FC 1725. How does this judgment impact the potential liability of life sciences partners and suppliers? As it turns out, the Adeia Guides case provides little practical guidance.

Common Design Patent Infringement in Canada

In Adeia Guides, the plaintiff alleged that Videotron was infringing several patents by providing internet protocol television (IPTV) services. Videotron did not itself perform all the steps involved in the patented methods and systems; rather, it subcontracted two US-based suppliers (Comcast and Brightcove) to operate the impugned services.  Comcast's, and especially Brightcove's, exact contributions to the infringing systems and methods are difficult to ascertain from the Court's reasons. In the end, however, the Court concluded that Videotron was liable for patent infringement based on the doctrine of common design infringement, given Videotron's contractual relationship with Comcast—even if Comcast was presumably operating outside of Canada. In contrast, the Court declined to hold Videotron liable for patent infringement based on Brightcove's services. In the Court's view, there was insufficient evidence about the contractual relationship between these companies.

While some may hail Adeia Guides as a jurisprudential milestone, it is unclear what role, if any, common design infringement played in the Court's conclusion. It was undisputed that Videotron was providing IPTV services to Canadian consumers, which included features that infringed some of Adeia's asserted patent claims. Therefore, Videotron was offering for sale or "selling" (an infringing act) those features in Canada, whether they were provided in fact by Comcast, Brightcove, or any other party. For this reason, common design infringement does not seem to have been necessary to find against Videotron. Moreover, neither Comcast nor Brightcove were defendants in the action; thus, the Court's discussion of common design appears to have been more precautionary than determinative.

The Adeia Guides court did not explain what features or provisions in the Videotron-Comcast contract (but not in the Brightcove agreement) made Videotron liable for patent infringement.  Relatedly, the Court did not explain what role the Saccharin doctrine, according to which a defendant's conduct outside Canada may lead to infringement of a Canadian patent, played in its decision, if at all. That the Court did not apply Saccharin seems to flow from the fact that the sole defendant, Videotron, was a Canadian company, but this interpretation only underscores that common design infringement ultimately played little role in the assessment of Videotron's liability.

How Should Life Sciences Companies Assess the Risk of Joint Patent Liability in Canada?

It is textbook patent law that a Canadian patent claim will only be infringed if all its essential elements are present. In what circumstances, then, may a defendant be liable even although it does not, itself, practice all, or any, of the asserted claims' essential elements? The Adeia Guides case does not answer this question clearly. However, it remains Canadian law that a party will not infringe a Canadian patent if they supply only one element of a patented system or method, even if they know that this element will be used in an infringing combination or method. In this respect, the Adeia Guides Court drew no distinction between the system and method claims at issue in that case. Relatedly, the Federal Court of Appeal recently confirmed that product development activities do not pose a risk of patent infringement in Canada, provided that they fall short of an actual making or using of the patented invention.

Adeia Guides does not clarify where to draw the line between parties having a common plan to engage in conduct that infringes a Canadian patent, and individual parties simply supplying individual components, or separately performing steps in a patented product, system or method. Clearly, the existence of a contract may help establish such common purpose, as it did for Comcast and Videotron, but the object of this agreement is probably relevant. For example, in Genentech, Inc v Celltrion Healthcare Co, Ltd, 2019 FC 293, the Federal Court allowed a pleading amendment that alleged that two companies had entered into an exclusive partnership to commercialize a biologic product in Canada, that they were both involved in the preparation of the biologic's Canadian new drug submission, and that they would both work in concert to manufacture, import and sell the biologic product for use in Canada, in violation of a Canadian patent. However, whether these facts, even if proven, would suffice to hold a non-Canadian party liable for patent infringement in Canada may depend on the specific patent claims being asserted. An agreement to collaborate in respect of a drug product's label may be sufficient to evidence a common design to infringe a therapeutic use patent but fail to evidence an agreement to engage in conduct that infringes process claims if only one defendant is responsible for product manufacture.

The Canadian Patent Act provides generous immunities for life science companies developing new products and services. However, to what extent the later sale of such products or services in Canada could give rise to liability for development partners and suppliers located outside of Canada is a question that the Adeia Guides case does not answer clearly.

If you have further questions about this update or life sciences issues more generally, please contact the authors or a member of the Life Sciences Group.