Federal Court Re-affirms No File Wrapper Estoppel in Canada, but Rebukes Patent Owner for Taking Inconsistent Position
In Pollard Banknote v Babn Technologies, Justice Locke of the Federal Court recently re-affirmed the conventional view that the prosecution history of a patent or 'file wrapper' is irrelevant to claim construction in Canada. As a result, the patentee in Pollard was not estopped from arguing for a claim construction that contradicted its previous submissions to the Patent Office during prosecution. This resulted in a very different claim construction than would otherwise have been the case.
New Fee Consultations for Upcoming Trademark Amendments Suggest Now Is The Time to File Multi-Class Applications in Canada
The Canadian Intellectual Property Office (CIPO) has confirmed what many have suspected. Class-based fees are coming to Canada. As a result, Applicants with multi-class applications may benefit from filing now, before these changes come into effect, likely in 2018.
World Industrial Design Day (WIDD) began in 2007, with a goal to recognize the impact that industrial design has in our every day lives and how it plays an essential role in economic growth.
How Does Brexit Affect Your Intellectual Property?
The historic United Kingdom vote to leave the European Union will have resounding effects, including upon some forms of intellectual property rights. At present there is tremendous uncertainty over what will happen next in the process, but the following is based on preliminary comments that we have received from our UK and European colleagues on the issue.
The most important changes include: (a) goods and services that are currently described using just a category heading (that is, without listing each type of product encompassed by the heading) will be limited to those specific goods identified in the heading unless a broader description is submitted by September 24, 2016; and (b) filing fees will be reduced for applications that cover only one class of goods and service.
Government of Quebec announces in its budget an IP tax incentive that will come into effect on January 1, 2017.
Ridout & Maybee LLP
On October 5, 2015, 12 countries including Canada signed the final draft of the Trans-Pacific Partnership Agreement ("TPP"). Ratification must occur within two years. Intellectual property was a contentious issue during negotiations, in particular aspects relating to pharmaceuticals, such as patent term extensions, data protection and patent/drug approval "linkage" mechanisms.
Ridout & Maybee LLP is pleased to announce that effective November 2, 2015 the practice of Gowan Intellectual Property merged with Ridout & Maybee LLP. The principal of Gowan Intellectual Property, Gerald Gowan, has joined the Ridout & Maybee LLP team and will be located in our Mississauga office.
By Kenneth Ma
The Patent Prosecution Highway (PPH) pilot program between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) came into effect on January 6, 2015. The program will last for a period of three years, ending on January 5, 2018. If past history is any guide, the CIPO-EPO PPH program will be extended or made permanent at that time. The program aims to accelerate patent examination for applicants who file in both CIPO and EPO.
Bill C-59, the Economic Action Plan 2015, No 1, received Royal Assent on June 23, 2015 and has passed into law. The Bill presents amendments which introduce several changes to the Patent Act, Trademarks Act and Industrial Design Act.
Trademark and Copyright Owners Can Formally Ask Canada Border Services To Restrict Importation of Counterfeit Goods
The owner of a Canadian trademark registration can now file a Request for Assistance (RFA) application with the Canada Border Services Agency (CBSA), as can the owner of a registered or unregistered copyright.
On December 17, 2014, the Canadian government took initial steps to proceed with the enactment of significant amendments to Canada's patent and industrial designs laws, as part of an omnibus budget bill. The actual implementation date for these changes has not been set. We will be monitoring the progress of these amendments and will advise as implementation time lines are ascertained.
The findings of the application judge demonstrates the Court's understanding of the implications of conducting business abroad from Canada, the interplay of domestic and international laws and provides a sensible commercial result as between the parties that supports the intention of Parliament in enacting the Patent Act.
In preparation for Canada's upcoming adherence to the Madrid Protocol and Singapore Treaty (together, the main system for registering trademarks in multiple jurisdictions), substantial amendments to the Trademarks Act were passed into law in June 2014 ("2014 Amendments"). The new regime will come into effect when the Canadian Intellectual Property Office ("CIPO") has prepared the supporting regulations and practice notices, which is expected to occur by early- to mid-2018.
A granted patent gives its owner the right to recover damages when others implement the patented technology. However, the decision to begin building a patent portfolio is sometimes difficult to justify, as the initial investment in time and money can be hefty.
The Canadian government made a big bang on Canada Day... only not with fireworks. The Canadian Anti-spam Legislation, or CASL, came into force on July 1, 2014, and it has many scrambling to figure out ways to comply with the legislation. One of the main problems is that it's broadly worded, arguably clutching within its grasp much more than what the public would traditionally perceive to be "spam".
Numerous Changes on the Horizon in Canadian IP Law: Five Multilateral IP Treaties on Track for Ratification
On January 27, 2014, five multilateral treaties pertaining to patents, trade-marks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties. The effects could be far-reaching. No official explanation has been offered for the government's movement on these five treaties but it is speculated that ratification of these treaties is a condition of Canada's acceptance into the Canada – EU Trade Agreement and/or the Trans-Pacific Partnership. None of these treaties are new; they have all been discussed in Canada, inside and outside of government, for many years.
If these five treaties are ratified, many of the changes will be procedural in nature, thereby primarily affecting IP practitioners. However, some provisions of the treaties will have broader implications and will affect IP owners. The treaties, and their possible implications, are summarized below.
Canada's Supreme Court takes a holistic approach to assessing copyright infringement in cases of non-literal copying
In many cases of alleged copyright infringement, it is clear when infringement has occurred; a protected work has been copied verbatim, without the permission of the copyright owner. However, when only a portion of a protected work has been copied, it can be difficult to determine whether enough of the work has been copied to constitute infringement. Things become even more difficult in cases of non-literal infringement, when nothing has been directly copied, but the works at issue are very similar nonetheless.
"Final action" practice in Canadian patent prosecution will change when amendments to the Patent Rules come into force on December 28, 2013.
Three years after the passage of Canada's "anti-spam" law, the enabling regulations have been passed. The law will be implemented in stages over several years, starting July 1, 2014. The new law is similar in many respects to legislation in the US, UK and Australia.
Patent applicants from the United States have a new route to the patent prosecution highway in Canada. The Canadian patent office (CIPO) recently introduced a Patent Prosecution Highway (PPH) pilot project, which allows applicants to expedite and simplify Canadian prosecution based on a corresponding U.S. Patent Cooperation Treaty (PCT) application. This supplements an existing PPH provision which provides a similar pathway to the PPH from a Canadian PCT application.
The Internet Corporation for Assigned Names and Numbers ("ICANN") is currently overseeing a process by which new generic top level domains ("gTLDs") will be made available to the public. The new gTLDs include generic terms such as.law and .auto and brand-specific terms incorporating well-known trade-marks.
On March 8, 2013, the Canadian Patent Office released new examination guidelines to account for the Federal Court of Appeal decision in Canada (Attorney General) v Amazon.com Inc., 2011 FCA 328 (Amazon FCA Decision).
Forget Paris - Federal Court rules that there must have been trade-mark use in applicant’s country of origin at the Canadian filing date to rely on its country of origin registration as a basis for registration in Canada
As in the United States, Canadian trade-mark applications must contain a basis for registration (a claim to the right to register). Amongst these possible bases is use and registration in applicant's country of origin pursuant to the provisions of Section 16(2) of the Trade-marks Act. Unlike The United States, or for that matter any jurisdiction we are aware of, the Act requires that in order to rely on a country of origin registration as a basis for registration in Canada the mark must also have been used. The formal application requirements attaching to a Section 16(2) basis for registration are set out in Section 30(d).
The Canadian Government introduced Bill C-56 on March 1, 2013. The Bill focuses on curtailing counterfeit activity and amends the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and new border measures in both Acts, in order to strengthen the enforcement of copyright and trade-mark rights.
We advise that unscrupulous companies use the publicly available information about trade-mark applications as a basis to send trade-mark owners an invoice-like document which appears to offer rights in international or other registries, or trade-mark monitoring services, in exchange for substantial sums of money. Please ignore such solicitations.
World Intellectual Property Day is celebrated around the world to recognize how protection of intellectual property encourages innovation and creativity.
The Canadian Trade-marks Office now is accepting applications for sound marks.
After many years of prosecution and court battles, the Commissioner of Patents has allowed the patent application of Amazon.com, Inc. (Amazon.com).
The Patent Office has recently been tasked with revisiting its position in an ongoing dispute over the patentability of so-called “business methods” in Canada. On November 24, 2011, the Federal Court of Appeal (FCA) issued its decision in The Attorney General of Canada and The Commissioner of Patents v. Amazon.com, Inc., the latest appeal of a Patent Appeal Board (PAB) decision in 2009 which had denied patent protection to a “one-click” shopping system and method used by the online retail company Amazon.com, Inc. (Amazon).
Upcoming Changes to U.S. Patent Law Make Canada a More Attractive Jurisdiction for Initial Patent Filings
On September 16, 2011, the United States enacted the Leahy Smith America Invents Act (AIA). The Act revises U.S. patent law in several important ways, including changing the U.S. patent system from "first-to-invent" to "first-inventor-to-file", changing the way in which foreign priority claims are handled, and changing the calculation of the one-year "grace period".
In 2010, Google earned US$28 billion in advertising revenues. Thus it is no surprise that Google is vigorously defending its ADWORDS program, the main source of such revenues, in the United States Court of Appeals.
Bar Raised for Attacking Patent Validity in Canada; Duty of Candour Narrowed - by David Heller and Vanessa Komarnicki
In a decision released on July 18th, 2011, the Federal Court of Appeal found that the duty of good faith from s. 73(1)(a) of the Canadian Patent Act cannot be relied upon to attack the validity of an issued patent (Corlac Inc v Weatherford Canada Ltd("Weatherford"), 2011 FCA 228).
Recently, the Internet Corporation for Assigned Names and Numbers ("ICANN") voted to accept applications for new top level domains ("TLDs"). Such applications will be accepted between January 12, 2012 and April 12, 2012. The recent ICANN vote means that corporations or organizations may apply to register a generic term, such as .food and .law as a TLD. Alternatively, a corporation or organization may apply to use a trade-mark as a TLD.
In September 2011, the rollout of the .xxx domain will commence. Domain names incorporating the .xxx top level domain ("TLD") are intended to be used for adult entertainment websites. However, brand owners outside of the adult entertainment industry should take notice since a party may attempt to register a .xxx domain name incorporating a brand owner's trade-mark.
A recent modification of the Patent Prosecution Highway (PPH) has introduced a significant new benefit to applicants. The PPH, first introduced into Canada in 2008, allows applicants to expedite and simplify prosecution of a Canadian patent application if at least some of the claims of the application have been allowed in another participating jurisdiction.
A legal battle initiated by Canadian software companies i4i Limited Partnership and Infrastructures for Information Inc. (collectively referred to as i4i) in 2007 against Microsoft Corporation ended on June 9, 2011 with i4i as the victor.
In its May 26, 2011 decision, the Supreme Court of Canada reversed the Federal Court's finding of no likelihood of confusion between Alavida's registered trade-mark MASTERPIECE LIVING and Masterpiece Inc.'s previously-used trade-mark MASTERPIECE ART OF LIVING, both for the operation of retirement residences. Because the marks were confusingly similar, Alavida's registration was ordered expunged (cancelled).
Canadian Patent Rules amendments relating to green technology applications and applications under Special Order
Recently, the provisions of the Canadian Patent Rules relating to applications under Special Order for expedited examination were amended.
In an October 14, 2010, decision, Amazon.com, Inc. v. The Commissioner of Patents, the Honourable Mr. Justice Phelan for the Federal Court overturned the Commissioner of Patents and concluded that a "business method" can be patented in appropriate circumstances.
Recent trade-mark law amendments by G8 countries have prompted the Canadian Intellectual Property Office to re-assess Canada's trade-mark regime. While revisions are necessary, it is essential that they protect the interests of Canadian trade-mark owners and maintain the current benefits of Canadian practice.
In its long-awaited decision in Bilski v. Kappos, the US Supreme Court confirmed that it may be possible to obtain patent protection on at least some methods of doing business, even though they rejected Bilski's appeal, holding that Bilski's claims to a “method of managing the consumption risk costs of a commodity," were not eligible for patent protection under the US Patent Act. The majority of the court rejected Bilski's claims because they attempted to monopolize the abstract idea of hedging in commodity and energy markets.
In a key decision in May 2010 the Federal Court of Appeal found that music previews used by consumers before deciding to buy a particular piece of music online constitutes fair dealing under the Copyright Act.
The Canadian Intellectual Property Office ("CIPO") recently announced that they are developing a new initiative that would expedite the examination of patent applications related to green technology.
Third time’s a charm? Canadian Copyright Act reform bill tabled on June 2, 2010 - by Mala Joshi and Paul Tackaberry
On June 2, 2010, Industry Minister Tony Clement and Heritage Minister James Moore introduced the Copyright Modernization Act (otherwise known as Bill C-32) for its first reading before the House of Commons. Bill C-32 has been billed as an attempt to modernize the outdated Canadian Copyright Act ("Act") following years of failed attempts.
In the U.S., section 2173.05(g) of MPEP defines a functional limitation as an attempt to define something by what it does, rather than by what it is. MPEP dictates that a functional limitation is to be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used.
On April 26, parties who own a registered trade-mark in any jurisdiction may apply for a .co domain name. .co is formerly the top level country code for Columbia and .co domain names are regarded as having some value as an abbreviation for the term “company”.
Canada has joined Europe, Japan and several other jurisdictions in providing an administrative pathway for approval of "bio-similar" drugs. These drugs, known in Canada as "Subsequent Entry Biologics" or "SEB's", consist of biological drugs (proteins, antibodies, and other products derived from biological sources.) which are similar to previously-approved biological drugs. These are sometimes - inaccurately - referred to as "biogeneric" drugs. However, unlike a true generic drug, the complex nature of biological products often makes the active component of an SEB different from the original drug. Until now, approval of SEB's has been largely stalled, pending clarification as to how such products would be reviewed - only a single SEB has been approved.
Without Clear Evidence of its Confidential Nature, Drug Data can be Released Under Access to Information Rules
In Canada, as elsewhere, pharmaceutical companies must submit voluminous information to the Federal government (Health Canada) for approval of a new drug. Much of this information is confidential. Therein lies a quandary: submission of the information is mandatory, but government agencies are under legal pressure to release such information to the public on request. While Canada is probably better than many other countries in maintaining the confidentiality of drug information, a recent decision of the Federal Court of Appeal has exposed a vulnerability under Canada's Access to Information Act.
Recent case law has transformed Canada from a jurisdiction in which the file wrapper was not relevant to validity, to one in which the file wrapper is extremely important.
On March 5, 2009, the Patent Appeal Board (PAB) rejected Amazon's patent application No. 2,246,933, which claimed “one click” purchasing of products. The application included method claims as well as machine claims implementing the method. The PAB rejected all of the claims in Amazon's application on the ground that a business method cannot be patented.
In a recent decision with implications for patent drafting, the Federal Court of Canada determined that a patent claim can be invalid if the written description insufficiently defines terminology found in the claim. The patent in this case related to a drug formulation with improved stability. The patent claimed an "anhydrous" composition (literally, "without water"). To a chemist, this term can have different meanings, depending on the context.
The Canadian Intellectual Property Office recently published a new practice notice entitled "Extensions of Time in Examination", which takes effect on March 11, 2010.
According to the Internet Corporation for Assigned Names and Numbers (ICANN), the organization that coordinates website addresses, including domain names, it will soon be possible to register internet addresses in non-Latin-based scripts such as Chinese, Arabic and Hindi.
Justice Mactavish has breathed life into the applicant duty of candour when communicating with the Patent Office. Justice Mactavish applied the reasoning of Justice Hughes from the overturned G.D. Searle decision that a duty of candour is implied by the obligation under section 73(1)(a) of the Patent Act to reply in good faith to any requisition of the examiner.
The Canadian IP Office (CIPO) has reached an agreement with its counterparts in the UK and Australia to cooperate in key aspects of patent prosecution. The three offices, known as the "Vancouver Group", have been discussing this project since April 2008 and it is expected that the new system will be implemented soon. The aim is eliminate duplication of effort between the offices, by sharing information and relying on examinations performed by other offices within the group.
October 27, 2009
In Nuclear Power Business, Not Relevant That Homer Simpson May Be Confused - Atomic Energy of Canada Limited v. AREVA NP Canada Ltd et al., 2009 FC 980 by D. Paul Tackaberry
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Supreme Court of Canada takes on selection patents; clarifies the law of anticipation and obviousness for all patents: A win for patentees? - Sanofi v. Apotex , 2008 SCC 61 by Paul Lomic and Doug Wilson
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