Inventions, i.e. new, useful and inventive products, methods and uses, can be protected with patents.

We offer a full range of services related Canadian and foreign patents, including:

  • prior art searches and impact analysis on the patentability of inventions,
  • drafting, filing and prosecuting patent applications in Canada, the United States, Europe, at the international level (PCT) and abroad (over 130 countries),
  • research, analysis, and legal opinions regarding infringement, validity, freedom to operate as well as the state of the art, and
  • monitoring of new technologies.

We also offer IP advice and our services in litigation and arbitration and contracts, titles, and due diligence reviews related to patents.

We have a particular expertise in the following areas:

Canadian Legal Lexpert Directory

  1. Implicit inducement of patent infringement – The Federal Court of Appeal hands down its ruling

    Can a patent be infringed even if the patented product is not manufactured, assembled, or even used?  Indeed, such infringement is possible. In fact, this is known as the theory of inducement of infringement. Naturally, acts of “inducement” must meet certain conditions before inducement of infringement can be found. The Federal Court of Appeal recently clarified these conditions. Inducing infringement and the applicable test For example, if the patented invention is a solution containing components A, B, and C of a drink where component C is water, it is likely that if components A and B are sold to a consumer and said consumer is told to add a certain amount of water, mix well, and drink, the consumer can be said to have been induced to infringe the patent. To determine whether inducement of infringement has occurred, the courts apply a three-prong test. First, the acts of infringement must have been completed by the direct infringer. In the previous example, this would be the consumer.  There can be no inducement of infringement if there has been no direct infringement. Second, the completion of the acts of infringement must be influenced by the acts of the alleged inducer to the point that, without the influence, direct infringement would not take place (for example, by selling the material and providing instructions). Third, influence must be knowingly exercised by the inducer; in other words, the inducer knows that this influence will result in the completion of the acts of infringement. The Federal Court case Returning to the Court of Appeal’s decision: in this case, Janssen had sued Apotex for inducing infringement of a patent.  An important point is that the patent on the drug had expired. However, Janssen claimed that Apotex was inducing physicians to prescribe the drug in combination with a specific inhibitor to treat a rare condition called pulmonary arterial hypertension (PAH). Janssen’s patent covers the combination of the drug and the inhibitor to treat PAH. Apotex would have sold the drug alone, without including the inhibitor or the combination, had Health Canada authorized its drug.1 Nowhere in the product monograph is it suggested that the drug be used in combination with the inhibitor in question. However, the drug was being prescribed to treat PAH. The parties agreed that the first prong of the test had been met, namely that the drug was likely to be prescribed with the inhibitor to treat PAH. It was the second and third prongs that were actually at issue: Could Apotex be inducing infringement even though its product monograph contains no suggestion for use in combination with the inhibitor in question? The Federal Court had concluded that the second and third prongs of the test for inducing infringement had been met. It ruled that the product monograph sufficiently influenced physicians to prescribe the drug in combination with the inhibitor, and that Apotex knew that marketing the drug along with the product monograph would influence physicians to prescribe it with the inhibitor. This reasoning is based primarily on a study cited in the product monograph, which showed that the drug, whether prescribed alone or with the inhibitor, was safe and effective.  The Federal Court of Appeal’s decision The Court of Appeal upheld the Federal Court’s decision, adding that influence need not be explicit. The Court thus affirmed that the absence of explicit instruction and of intention that direct infringement should result does not mean that there is no influence sufficient to satisfy the second prong. Therefore, while explicit instruction and intention may be relevant to assessing influence, they are not required. The Court of Appeal stated that: “Even without explicit reference to combination treatment, the Federal Court was entitled to find that the Apo-Macitentan PM would influence use of macitentan in that way.”2 With respect to the third prong, the Court of Appeal reiterated that the inducer must know that their actions or influence will lead another party to engage in specific activity, but that it is not necessary to prove that the inducer knows that such activity will constitute patent infringement.  The Court of Appeal upheld the conclusion that, in the circumstances, Apotex knew or should have known that the product monograph for its drug would influence physicians to prescribe it in combination with the inhibitor to treat PAH. Conclusion Implicit influence can lead to findings of patent infringement when it can be said that the inducer should have been aware of the consequences of their actions. This decision confirms that Canadian courts have a flexible legal tool to protect inventions. The text is in the conditional tense because the action was brought under the Patented Medicines (Notice of Compliance) Regulations, which establish specific rules regarding litigation in the pharmaceutical industry and prevent Health Canada from authorizing the sale of a generic version of a drug that would infringe certain patents in certain circumstances. Apotex Inc. v. Janssen Inc., 2023 FCA 220 (CanLII), para. 17.

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  2. Advancing Patent Fee Payments in Canada to Avoid Significant 2024 Fee Increases

    Canadian patent government fees will increase up to 36% on January 1, 2024. The main fee increases are presented in the table below. Applicants may therefore wish to take certain actions and pay the accompanying fees in Canada by the end of 2023 to benefit from the lower 2023 rates at least in the following circumstances: Early filing of divisional applications may be especially advantageous as they involve high government fees. Retroactive maintenance fees from the second anniversary onward of the parent case are payable when divisional applications are filed, along with the filing fee. Examination fees are also typically paid at divisional filing, as they generally need to be paid within three months of filing the divisional application.1 Applicants who intend to file the national phase of international patent applications in Canada can reduce filing cost by advancing national entry in 2023. Single or multiple future maintenance fees due in 2024 or later in each patent or patent application could be anticipated and paid in 2023. Finally, examination fees due in 2024 or later may also be anticipated in 2023 to benefit from the lower rate. CIPO Fee 2023* 2024* Filing fee $421.02 $555.00 Examination or request for continued examination (RCE) fee $816.00 $1,111.00 Excess claim fee for each claim over 20 $100.00 $110.00 Advanced examination fee $526.29 $694.00 Maintenance fee: 2nd to 4th anniversary $100.00 $125.00 Maintenance fee: 5th to 9th anniversary $210.51 $277.00 Maintenance fee: 10th to 14th anniversary $263.14 $347.00 Maintenance fee: 15th to 19th anniversary $473.65 $624.00 *Undiscounted fees applicable to applicants not eligible for small entity rate Divisional practice is very strict in Canada, in that divisional applications are generally only filed to pursue a non-elected invention that was identified in a lack of unity objection in the parent case.

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  3. Canadian Intellectual Property Office (CIPO): Fee Increase

    CIPO has announced an increase in their fees as of January 1, 2024. Their current fees will be increased by at least 25%. This increase will apply not only to trademarks, but also to patents, industrial designs and copyrights. For example, the anticipated official fee to file an application for registration of a trademark is being increased from $347.35 to $458.00 for the first class, and from $105.26 to $139.00 for each additional class. A majority of CIPO’s other fees are subject to a similar adjustment. As such, this increase will have an impact not only upon filing an application for registration, but also during the registration process and upon renewal. We therefore recommend that you review your intellectual property portfolio to determine if new applications should be filed or renewals effected before the end of the year. CIPO indicates that the increase will contribute to supporting its strategy on intellectual property which is aimed at offering services comparable to those offered worldwide. We hope that it will also reduce turnaround times!

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  4. Powerful Data, Powerful Business

    A patent landscape provides a bird’s-eye view of the patenting activity related to a specific technology. It can be an invaluable tool for your organization as the analysis of patent data reveals business, scientific and technological trends. Indeed, many industries increasingly rely on patent landscapes to provides a basis for understanding innovation activity in their field. A landscape can tell you which organizations are working in your field, where they file their patents, who are their key inventors, and much more. The information derived from a patent landscape analysis can help you identify whether competitors are encroaching on your core market, design around others’ technology, identify licensing and M&A targets, headhunt new talent, and reduce legal risks, among others. A patent landscape analysis is a powerful tool as the insights it uncovers allow for forward-thinking, data-backed decision-making in business strategy, R&D investments, and IP strategy. To illustrate the usefulness of patent landscapes, we provide you below with some very high-level data on the patenting of cannabis-related technologies. Keep in mind that, when performing a patent landscape analysis with the help of your patent agent, much more information is provided and each set of data can be further drilled down to get ever more detailed information. Below, you will see how we could easily identify and measure the impact of the recent changes in the legal status of cannabis. This is a convincing demonstration of the power of patent landscape analysis to identify trends in a given industry. Please contact us to explore how a patent landscape analysis can provide your business with similarly powerful data in your field of expertise. Cannabis Patent Landscape analysis Let’s start with the number of patent applications filed each year. Variations in the number of patent applications filed tell you whether your industry is growing, declining, or mature (stable). Also, the appearance of patent applications tends to correlate with new innovative products entering the market. An increased number of recent applications foreshadows the apparition in your market of more numerous innovative products, thus increased competition. A low or decreasing number of recent applications indicates a less active area to technology where any new innovative product you launch may more easily distinguish itself from those of your (decreasingly innovative) competitors. For cannabis technologies, figure 1 shows that, after remaining more or less stable from 2000-2013, the number of patent applications filed doubled in 2014 and then continued to increase rapidly in the following years. This trend is expected to continue, albeit slower, with a predicted number of patent filings reaching 3000 in 2025. The 2013 inflection point clearly shows the impact of the changes in the worldwide legal landscape regarding cannabis throughout the years. Indeed, on November 6 and 10, 2012, the recreational use of cannabis was legalized for the first time in the American states of Washington and Colorado. These events signaled the opening of a very large market and triggered a so-called “Green Rush”, which saw the birth of multiple companies and the creation of hundreds of thousands of jobs in this new industry. Figure 1. Nb of patent applications filed per year Let’s turn now to the countries from which these patent applications originate. The country of origin of the patent applications in your field indicate where your innovative competitors are located. A large number of patent application originating from a given country may be reflective of the quality of the local environment supporting innovation in the field in term of, for example, increased access to capital, a larger pool of skilled talent, advantageous legislation, etc. Hence, such a country could be a worthwhile option to consider when opening a new branch, seeking a new partnership, or looking to acquire smaller innovative competitors. Also, an increasing number of countries from which technologies originate is indicative of growing global interest in your field. Conversely, a decreasing number of countries indicates that innovation in your field is being consolidated in specific geographical areas and could prompt you to research the reasons behind this shift e.g., market interest, legislative environment, extensive M&A, etc.   Fig. 2 below shows the countries from which the cannabis-related patent applications originate. The number of countries producing these patent applications nearly doubled, going from 34 for the period between 2000 and 2013 to 59 since, showing increased global interest. Nevertheless, innovation on cannabis is now more concentrated as a larger share of the applications come from the top 4 jurisdictions showing that this global interest did not raise equally everywhere. Indeed, together the United States, China, Great Britain, and Europe account for 89% of the patent applications filed since 2014, whereas they accounted for only 79.5% of those filed before 2013. Also, a larger proportion of the applications now originates from the United-States (from 39% to 58%) showing that the activity has greatly increased in this country thanks to the abovementioned legislative changes. This happened at the expense of almost all other jurisdictions, which have seen their share of the patent applications decline, with the exception of China, which kept about the same share (i.e., 20%-21%). This data shows that, if one were to look for a partner in the industry, the USA and China would be good places to start with. Figure 2. Jurisdictions from which the patent applications originated We can turn now to the jurisdictions in which the patent applications were filed. By looking at the countries in which your competitors field their patent applications, we can deduce where they believe their main markets are and where they believe their technologies is most promising. Again, the reasons underneath these numbers could be investigated: is a country selected because of the size of its market, its accommodating legislations, its business incentives, or other reasons? This can tell you where to file your own patent applications. It may also help you identify underserved markets that you may want to develop in with lesser interference from your competitors’ patents. Fig. 3 below shows the jurisdictions where patent applications related to cannabis were filed before 2013 and have been filed since 2014. Patent applicants now seek to protect their innovation in a greater variety of jurisdictions (57 compared to 66) indicating that cannabis innovators believe their market is now more global. On the other hand, patent filings have become more concentrated with the top 5 jurisdictions (China, the United States, WIPO, EPO, and Canada), which have increased their total share from 60% to 78.5% of all patent applications. This indicates that, despite the above, cannabis innovators are concentrating their marketing efforts in the USA, in Europe, and in China. Figure 3 also clearly reveals the impact of the 2018 legalization of cannabis in Canada. Indeed, it has had a clear effect with the country share of patent applications increasing from 6% to 9%. In other words, cannabis innovators are now filing twice as many patent applications in our country, showing it is now a more interesting market to them, probably due to the legalization of cannabis. Figure 3. Jurisdictions in which the patent applications were filed Let’s continue by looking at the technological sub-fields to which the patent applications belong. This provide a high-level snapshot of which technologies are being developed. More interestingly, this can be drilled down to narrower technological sub-fields, or by various countries, or by specific competitor to have yet more information on “who is doing what and where”. Figure 4 shows the technological sub-fields to which the cannabis-related patent applications filed since 2014 belonged. We can clearly see, somewhat unexpectedly, that the recreational use of cannabis, while responsible for generating initial business interest in the field, does not seem to be the driving force behind patenting activities. Indeed, one might have expected activities ancillary to such use including technologies to grow, cultivate, track, and store cannabis, would be prominent. It rather seems that the health industry dominates since most of the patent applications relate to medicinal preparations and drugs for specific disorders. A smaller number of patent applications relate to foods with modified nutritive qualities and methods of isolation (extraction). Interestingly, after some drilling down, we noted that China has the largest number of patent application filed in the following classifications: A61K36 – traditional medicines, and A61P1 – drugs for the digestion system, perhaps indicating a larger potential market for this type of innovation in this country. Meanwhile, the United States dominates in the following classifications: A61K31 – medicines containing organic ingredient and A61K9 – medicines having a special physical form. Figure 4. Patent classification distribution (the size of the boxes indicate their relative prominence) A patent landscape can help you identify who exactly is patenting technologies in your field. This allows you to identify your competitors as well as potential partners, licensees, or licensors. It also tells you whether innovation is driven by academic institutions (potential licensors) or by companies. You can also look at the size of your competitors to assess whether you are evolving among many small startups, competing against giants, etc. You can even look at the past litigation/enforcement behavior of the top patent filers as part of a risk assessment analysis. Again, this data can be drilled down to see what each top competitor is patenting, where, and when and where they themselves are located. Therefore, to conclude this “Patent Landscape Teaser”, figures 5 and 6 show the top 15 owners of the cannabis patent applications filed between 2000-2013 and since 2014, respectively. GW, a British pharmaceutics company focused on cannabis products, has consistently been the top filer in this field. In contrast, all the other top filers have changed denoting a fundamental change in the cannabis industry landscape. Before, 2014, the top filers were mostly pharmaceutical companies and large corporations with varied business interests indicating that, for most patent filers, cannabis was more or less a side project. After 2014, many cannabis-focused companies appear and take top spots: Canopy Growth, Hexo Operations, Zelira, Bazelet, Syqe, Receptor, Nextleaf, Hanyi, and Radient. This trend clearly reflects the fundamental change brought upon the industry by the Green Rush, which led to the creation of numerous new players in the field. A company before 2014 clearly did not face the same challenges and opportunities as one evolving now. Figure 5. Top 15 owners of the patent applications filed between 2000-2013 Figure 6. Top 15 owners of the patent applications filed since 2014 In summary, the data shown above clearly illustrates the rapid and profound impact that the legalization of cannabis has had on cannabis innovation. The patent landscape analysis allowed identifying many trends and facts indicative of a nascent technological field or one having received a recent boost. In other circumstances, other trends would have been observed. For example, we can expect to see a reversal of most of the above trends as the technology matures yielding fewer patent applications, as less proficient companies fail yielding fewer patent applicants, and as the market stabilizes resulting in patent applications being filed in possibly fewer and more well-defined markets.

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  1. Lavery supports Domain Therapeutics in obtaining US $42M in financing

    On May 10, 2022, Domain Therapeutics, a Franco-Canadian biopharmaceutical corporation specializing in research and development of innovative immuno-oncology treatments, announced the close of a US $42 million Series A financing round. This investment is a major step in the Franco-Canadian firm’s growth that aims to provide cancer patients with treatment solutions to overcome GPCR-mediated immunosuppression mechanisms. Mr. Alain Dumont, a partner at Lavery, had the privilege of supporting the corporation through this important transaction. Throughout his long-standing relationship with Domain Therapeutics, Mr. Dumont has lent his expertise to protect the company’s technologies and innovations by answering questions from investors, in particular. Lavery is immensely proud of Mr. Dumont’s work in securing this funding. — Domain Therapeutics, a biopharmaceutical company, based in France and Canada, is dedicated to discovering and developing novel medicine candidates targeting G-protein-coupled receptors (GPCRs), a key drug target class. The company focuses on producing high value-added immuno-oncology drug candidates.

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  2. Serge Shahinian is recognized as a leading patent practitioner in the 2021 IAM Patent 1000: The World’s Leading Patent Professionals

    Serge Shahinian, partner and patent agent in the firm’s Intellectual Property Group, has been recognized as a leading patent practitioner in the 2021 edition of the directory IAM Patent 1000: The World’s Leading Patent Professionals. This distinction was determined, among other things, through exhaustive peer-reviewed surveys. The professionals are ranked in the directory based on a recognition of market share, exceptional skills, and in-depth knowledge of patent matters.

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