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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.

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

Sherif Abdel-kader

Patent Agent - Associate

Toronto

Kazim Agha

Patent Agent - Partner

Toronto

Charles Boulakia

Lawyer, Patent & Trademark Agent - Partner

Toronto

Timothy Bourne

Lawyer, Patent & Trademark Agent - Partner

Ottawa

Ken Bousfield

Lawyer, Patent & Trademark Agent - Counsel

Toronto

Mitchell Charness

Lawyer, Patent & Trademark Agent - Partner*

Ottawa

Steven Cheng

Lawyer, Patent Agent - Associate

Toronto

Giselle Chin

Lawyer, Patent Agent - Associate

Burlington

Meika Ellis

Lawyer - Associate

Ottawa

Peter Everitt

Lawyer, Patent & Trademark Agent - Partner*

Burlington

Marcus Gallie

Lawyer, Patent & Trademark Agent - Partner*

Ottawa

Rita Gao

Lawyer, Patent Agent - Associate

Toronto

Elliott Gold

Lawyer, Patent & Trademark Agent - Partner

Toronto

Gerald Gowan

Patent & Trademark Agent - Counsel

Burlington

David Greer

Lawyer, Patent & Trademark Agent - Partner*

Toronto

David Heller

Lawyer, Patent & Trademark Agent - Partner*

Toronto

Roland Joachim

Lawyer, Patent & Trademark Agent - Partner*

Toronto

Abbas Kassam

Lawyer - Associate

Toronto

Steven Leach

Lawyer, Patent & Trademark Agent - Partner*

Burlington

Bobby Leung

Lawyer, Patent Agent - Associate

Toronto

Linli Liu

Patent Agent Trainee

Toronto

Ken Ma

Lawyer, Patent Agent - Associate

Ottawa

Benjamin Mak

Lawyer, Patent & Trademark Agent - Partner

Toronto

Daphne Maravei

Lawyer, Patent & Trademark Agent - Partner

Ottawa

Stephen Martin

Lawyer, Patent & Trademark Agent - Partner

Toronto

Matthew Norwood

Lawyer, Patent Agent - Partner

Toronto

Dan Raymond

Patent Agent - Associate

Ottawa

Mark Sajewycz

Lawyer, Patent & Trademark Agent - Partner

Toronto

Victoria Townsend

Patent Agent - Associate

Toronto

Christine Wong

Patent Agent - Partner

Toronto

Zhengxiao (Roy) Yang

Lawyer, Trademark Agent - Associate

Ottawa

Recent IP & Firm News

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.

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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?

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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.

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Binders of paper

“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.

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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.

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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.

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tablet screen with dashboard

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.

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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

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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.

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pills and drugs

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”).

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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.

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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.

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Building a Patent Portfolio

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.

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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, trademarks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties.

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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.

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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.

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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).

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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).

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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.

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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”.

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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).

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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.

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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.

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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.

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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.

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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.

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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.

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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.

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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.

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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

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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.

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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.

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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.

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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).

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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.

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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

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.

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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.

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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.

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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.

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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”.

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EPO Announces Fee Increases

The fees for a European patent application will increase on April 1, 2008 and again on April 1, 2009.

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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.

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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”.

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