IP Services
Patents
Patents form the core of any IP portfolio.
For over 125 years, Ridout & Maybee LLP has helped some of Canada’s most successful companies in all aspects of patent law.
We have extensive experience in helping our clients navigate the intellectual property regime while commercializing their developed technologies, from assessing freedom to operate, to preparing, filing and securing patent protection.
Along with our in-depth knowledge of the complexities and nuances of patent prosecution, we possess extensive experience in representing clients in patent litigation proceedings.
Our practice includes over 30 lawyers and patent agents, many of whom are registered to practice before both the Canadian Patent Office and the USPTO. All of our lawyers and patent agents have science or engineering backgrounds, and most hold advanced degrees and/or have worked in industry.
Patent Services
Have a patent question or need more information? Let’s talk – view our list of patent professionals below to see which members of our team can help you get started
Our People
Charles Boulakia
Lawyer, Patent & Trademark Agent - Partner
- 416-865-3518
- cboulakia@ridoutmaybee.com
Timothy Bourne
Lawyer, Patent & Trademark Agent - Partner
- 613-236-3807
- tbourne@ridoutmaybee.com
Ken Bousfield
Lawyer, Patent & Trademark Agent - Counsel
- 416-865-3517
- kbousfield@ridoutmaybee.com
Mitchell Charness
Lawyer, Patent & Trademark Agent - Partner*
- 613-566-2052
- mcharness@ridoutmaybee.com
Giselle Chin
Lawyer, Patent & Trademark Agent - Associate
- 905-363-3625
- gchin@ridoutmaybee.com
Dino Clarizio
Lawyer, Senior Litigator, Patent and Trademark Agent - Partner
- 416-865-3520
- dclarizio@ridoutmaybee.com
Peter Everitt
Lawyer, Patent & Trademark Agent - Partner*
- 905-363-3630
- peveritt@ridoutmaybee.com
Marcus Gallie
Lawyer, Patent & Trademark Agent - Partner*
- 613-566-2057
- mgallie@ridoutmaybee.com
David Heller
Lawyer, Patent & Trademark Agent - Partner*
- 416-865-3505
- dheller@ridoutmaybee.com
Roland Joachim
Lawyer, Patent & Trademark Agent - Partner*
- 416-865-3507
- rjoachim@ridoutmaybee.com
Steven Leach
Lawyer, Patent & Trademark Agent - Partner*
- 905-363-3620
- sleach@ridoutmaybee.com
Daphne Maravei
Lawyer, Patent & Trademark Agent - Partner
- 613-288-8015
- dmaravei@ridoutmaybee.com
Stephen Martin
Lawyer, Patent & Trademark Agent - Partner
- 416-865-3508
- smartin@ridoutmaybee.com
Mark Sajewycz
Lawyer, Patent & Trademark Agent - Partner
- 416-865-3515
- msajewycz@ridoutmaybee.com
Zhengxiao (Roy) Yang
Lawyer, Patent & Trademark Agent - Associate
- 613-288-8016
- ryang@ridoutmaybee.com
Recent IP & Firm News
Proposed legislation adds excess claims fees and “three strike” office actions
Proposed changes to Canadian law were published in early July, which, if passed, will have significant consequences for patent applicants.
Webinar: Patent Strategies for AI, Machine Learning and Big Data
In this webinar, Wael Nackasha and Matt Norwood will discuss strategies used to protect new artificial intelligence technologies using the patent system, in Canada, and abroad.
Admissibility of Foreign Prosecution History in Canada
On January 20, 2021, the Federal Court of Appeal (FCA) issued its much anticipated decision in CanMar Foods Ltd. v. TA Foods Ltd, 2021 FCA 7 [Canmar FCA]. In dismissing Canmar’s appeal of the earlier Federal Court (FC) decision by Justice Manson (2019 FC 1233), the FCA provided clarification on the scope of the recently introduced Section 53.1 of the Patent Act.
Partner Benjamin Mak Presenting at SR&ED Webcast on March 25, 2021
Partner Benjamin Mak will be presenting a session on Technological Advancement (TA) in Patents during an SR&ED webcast, hosted by SRED Stakeholder.
Extensions of time at the Canadian Patent Office become harder to obtain
During prosecution of a patent application, issues may be raised that require a response from the applicant within a prescribed time limit. For certain due dates as specified in the Patent Act and Patent Rules, the applicant may submit a request for an extension of time to provide their response.
What to consider when patenting AI
Innovations in artificial intelligence (AI), and more specifically machine learning, have been increasing at a rapid rate, both in Canada and internationally. AI has been behind the growth in a number of industries, ranging from online commerce to medical treatments to manufacturing.
Who’s Leading the Way in Cryptocurrency-Related Inventions
As of December 8, 2020, the price of a single bitcoin is approximately US$ 18,891. In January 2016, the unit price of a bitcoin hovered around US$ 380 at one point. The rise of the bitcoin, along with other types of cryptocurrency, has led to one of the fastest growing trends in patent applications worldwide.
Compulsory Patent Licensing in the Time of COVID-19
There has been speculation about a potential role for compulsory patent licensing if a COVID-19 treatment is discovered but the supply of the treatment cannot meet the demand for treating all afflicted individuals.
Patentable Subject Matter: Distinction Without a Difference?
Following the Federal Court's overturning of CIPO's oft-maligned "problem-solution approach" to determining patentable subject matter, CIPO has issued a new Practice Notice in response to the recent case law, Yves Choueifaty v Attorney General of Canada, 2020 FC 837 (Choueifaty).
NASA was recently granted a US patent for a method for placing a spacecraft into a selected orbit. The patent is intended to assist NASA in its Dark Ages Radio Explorer (DARE) mission which will place the DARE spacecraft into the moon’s orbit for a period of time. Patenting such a method for placing a spacecraft into a specific orbit raises a few questions as to how the patent might actually be practiced or enforced against an infringer.
Federal Court Overturns MOPOP and Patent Office Practice Notices on Subject Matter Eligibility
For several years now, patent practitioners in Canada have argued with the Patent Office that their Practice Notices on Subject Matter Eligibility, and the Manual of Patent Office Practice (MOPOP) "problem-solution approach" were not correct application of Canadian law, and were therefore ultra vires. These arguments have largely fell on deaf ears.
Deadline Extensions at the Canadian Intellectual Property Office Due To COVID-19
In a notice dated March 16, 2020, the Canadian Intellectual Property Office has announced that they are invoking “unforeseen circumstances” and “public interest” provisions to implement extensions of time limits for all deadlines fixed under the Patent Act, the Trademarks Act, and the Industrial Design Act.
Partner Benjamin Mak assisted in the writing for Nerds On Site Inc.'s ("NERDS") patent for "METHOD AND ROUTER TO PERMIT OR BLOCK INTERNET PROTOCOL (IP) CONNECTIVITY BASED ON ORIGINATING DOMAIN NAME SERVER (DNS) REQUESTS."
Infringement by Common Design - Part IV
Patent infringement proceedings can be daunting at the best of times, but what does a patentee do when it believes multiple third parties are infringing its process? In this article, we will explore some of the issues that arise in pursuing infringement proceedings relating to a patented process and the hurdles to overcome.
Inducing Infringement of Process Patents - Part III
In our third scenario, a patentee has an issued patent for a process with respect to the use of a product. A third party has knowingly induced or procured another to infringe the process patent. What recourse is available as against the third party that has knowingly induced or procured infringement?
“Consisting essentially of” in Canadian Claim Construction
Due to the flexible nature of the law of claims construction in Canada, the construction of the commonly used transitional phrase, “consisting essentially of,” may surprise those not familiar with Canadian patent practice. As such, when preparing patent applications for filing in Canada, the term should be used with caution.
NAFTA Tribunal rules against Eli Lilly in “promise of the patent” dispute
In a much–anticipated decision on March 16, 2017, a NAFTA tribunal ruled against the pharmaceutical company Eli Lilly and Company, in favour of the Canadian government. Lily had launched the arbitration in 2012 before the International Centre for Settlement of Investment Disputes, seeking compensation for the invalidation of two of its patents by Canadian courts.
Alice Counterpart Decision in Canada: One and the Same
In August 2016, the Patent Appeal Board (“PAB”) in Canada issued a decision (PAB 1408) regarding Canadian application No. 2,163,768 (“the ‘768 application”), entitled “Methods and Apparatus Relating to the Formulation and Trading of Risk Management Contracts”, owned by Alice Corporation Pty Ltd.
Ten Reasons you Need a Canadian Patent
You may have heard that it’s not worthwhile to patent your company’s technology in Canada, with its smaller market, its conservative judicial remedies and its skepticism toward software-based patents.
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
Pokémon Go: A global game with limited patent protection
Despite the popularity of Pokémon Go, the game may find itself undercut by imitators due to choices made during the course of filing for patent protection. In particular, the decision to request non-publication in the U.S. has limited patent protection to only the United States.
Much ado about nothing? Pharmaceuticals and the Trans-Pacific Partnership Agreement in Canada
On October 5, 2015, 12 countries including Canada signed the final draft of the Trans-Pacific Partnership Agreement (“TPP”).
CIPO-EPO “Highway” Fast-tracks Your Canadian and European Patent Applications
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.
Communications Privilege Extended to Patent and Trademark Agents in Canada
Bill C-59, the Economic Action Plan 2015 Act, 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.
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.
On January 27, 2014, five multilateral treaties pertaining to patents, trademarks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties.
Patent Rules amended to simplify, streamline "final action" procedures
"Final action" practice in Canadian patent prosecution will change when amendments to the Patent Rules come into force on December 28, 2013.
A new route to the Patent Prosecution Highway: U.S. PCT applications
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.
New Canadian Examination Guidelines: Claim Construction and Computer-related Subject Matter
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).
Amazon.com application allowed by Canadian Patent Office
After many years of prosecution and court battles, the Commissioner of Patents has allowed the patent application of Amazon.com, Inc. (Amazon.com).
Update on Amazon.com Decision: Federal Court of Appeal Refers Application Back to Patent Office
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 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”.
Bar Raised for Attacking Patent Validity in Canada; Duty of Candour Narrowed
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).
The Patent Prosecution Highway adds a faster lane
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.
Success for Canadian company i4i at all levels of the US Court System
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.
Recently, the provisions of the Canadian Patent Rules relating to applications under Special Order for expedited examination were amended.
So-called “Business Methods” Patentable in Canada
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.
US Supreme Court refuses to outlaw business method patents
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.
Canadian Patent Office launches Green Technology Initiative
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.
Functional Pharma Claim Flawed, Finds Federal Court of Canada
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.
Beware of What Your Canadian Patent Lawyer is Saying
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.
Update of Amazon.com Patent Decision
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
Federal Court Decision Has Implications for Patent Drafting
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.
Federal Court Revives Applicant Duty of Candour in Patent Prosecution
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 “Vancouver Group” Set to Ease Patent Prosecution in Canada, Australia and the UK
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.
More Lanes Added to the Patent Prosecution Highway
The Canadian Intellectual Property Office (CIPO) recently extended the Patent Prosecution Highway (PPH) pilot program to include agreements with the Japan Patent Office (JPO), the Danish Patent and Trademark Office (DKPTO) and the Korean Intellectual Property Office (KIPO).
Federal Court Provides Clarity on Final Action Process for Patent Applications
The Federal Court of Canada has issued a decision providing much-needed clarity on the process for final actions on patent applications by the Commissioner of Patents.
On November 6, 2008, selection patents were upheld by a unanimous Supreme Court of Canada. A selection patent is based on a selection of chemical compounds (including pharmaceuticals) from an originating (or genus) patent that describes a class of compounds or reactions in general terms.
Patent Prosecution Highway between Canada and United States extended for two years
The Canadian and United States patent offices have announced a two year extension of the Patent Prosecution Highway (“PPH”) Pilot Program. The pilot program, originally scheduled to expire on January 28, 2009, will now run until January 28, 2011.
National Law Journal – U.S., Canada partnership to speed up patent exams is extended
A partnership program designed to accelerate examinations of patent applications in the United States and Canada has been extended by another two years, until 2011.
IP Law 360 – Plavix: A Significant Decision for Patent Holders
In a significant decision, the Supreme Court of Canada (Apotex Inc. v. Sanofi-Synthelabo Canada et al (2008 SCC 61)) upheld pharmaceutical selection patents but defined potentially more stringent tests for anticipation and obviousness.
Amendment to Canada’s Drug Patent Rules Closes a Loophole
A recent amendment to Canada’s drug patent “linkage” rules removes a risk faced by originator drug companies that their patents on the Patent Register could be summarily “de-listed”.
The fees for a European patent application will increase on April 1, 2008 and again on April 1, 2009.
Implementation of New U.S. Patent Rules Delayed Due to Injunction
The United States Patent and Trademark Office is attempting to implement new rules which will set significant limits on the number of claims allowed in patent applications, and on the number of continuing applications and requests for continued examination that may be filed.
Patent Costs Lowered in Europe
The cost of obtaining European patents will drop significantly in 2008 as a result of France’s move on October 10, 2007 to adopt the “London Agreement”.