Publications

Packed with valuable information, our publications help you stay in touch with the latest developments in the fields of law affecting you, whatever your sector of activity. Our professionals are committed to keeping you informed of breaking legal news through their analysis of recent judgments, amendments, laws, and regulations.

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  • Celebrating youth innovation!

    This year’s World IP Day is upon us, with the theme “IP and Youth: Innovating for a Better Future”. In honor of this theme (and at the risk of making our adult readers feel a bit less accomplished), we thought it would be appropriate to highlight some of these wonderful inventions of young, innovative minds. US 8,371,246: Device for drying pets  In 2011, 9-year-old Marissa Streng invented a device to more effectively dry her pet dog Mojo after his baths. The product is now apparently sold under the brand Puff-N-Fluff. US 7,726,080: Under-floor storage   At the age of 14, Rebecca Hyndman patented an under-floor storage system intended for use in locations where tile floors are normally used, such as in kitchens and in bathrooms. As a result of this achievement, she was given the honor of introducing President Obama at the Thomas Jefferson High School for Science and Technology, immediately prior to his signing the America Invents Act into law. US 6,029,874: Article carrying device for attachment to a bicycle for carrying baseball bats, gloves and other sports equipment or objects   Biking to baseball practice can be quite the challenge when one has to carry both a bat and a glove simultaneously. From this problem sprang the “Glove and Battie Caddie”, invented by Austin Meggitt at the age of eleven. The Glove and Battie Caddie holds a baseball, bat, and glove on the front of a bike. US 7,374,228: Toy vehicle adapted for medical use   At the age of 8, young Spencer Whale invented a toy vehicle adapted for transporting a child and their required medical equipment. According to the patent, the toy allows children who are hooked up to medical equipment to move more freely around a hospital, with the intention of making their stay more enjoyable. US 5,231,733: Aid for grasping round knobs   One of the youngest people to obtain a patent was Sydney Dittman of Houston, Texas. In 1992, when Sydney was only 2 years old, she invented a tool out of parts of her toys in order to open kitchen drawers that her parents had told her to stay out of. Upon noticing that the device would be great for handicapped people to use, her father started the patenting process, and the resulting patent issued when Sydney was only 4 years old. Please join us to celebrate youth innovation on this World IP Day!

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  • Canadian Patent Practice Update: Act Now to Avoid Excess Claim Fees

    Excess claim fees on the horizon As reported earlier, the Canadian government published proposed amendments to the Patent Rules on July 3, 2021. A significant component of the proposal is the introduction of excess claim fees on the order of $100 CAD for each claim beyond 20 claims, which will be payable when requesting examination, and will be re-assessed upon allowance to determine if further claim fees are due when paying the final fee based on changes in the number of claims during examination. Consider acting now In anticipation of the likely introduction of such a regime in early 2022 (which may be announced with only 30 days’ notice), Applicants may wish to begin assessment of their Canadian patent matters and consider requesting examination by the end of 2021 to avoid the payment of such excess claim fees and retain the right to present a larger number of claims for examination. Based on the transitional provisions in the proposed Rules, taking such action now shall avoid payment of such excess claim fees when requesting examination and when paying the final fee upon allowance. We thus recommend that Applicants consider taking such action this year to retain the benefits of the current regime, particularly for cases with a large number of claims as well as those which were already being considered for requesting examination in the short term. Stay Tuned! While the exact details and timing of the upcoming changes remain unknown, the earlier proposal suggests that they will likely be soon and with little advance notice. Please stay tuned for upcoming news in due course, and do not hesitate to contact a member of our patent team for guidance through the ultimate transition.

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  • Further Streamlining of Canadian Patent Examination on the Horizon

    Canadian Patent Practice has undergone several changes in recent years, in many cases to fulfill the requirements of various international treaties/agreements, including those of the Patent Law Treaty (PLT) and the Comprehensive Economic and Trade Agreement (CETA). On July 3, 2021, the Canadian government published proposed amendments to the Patent Rules, primarily to further streamline Canadian patent examination to pave the way for a future patent term adjustment (PTA) system in Canada as per the Canada-United States-Mexico Agreement (CUSMA), as well as to bring Canadian practice in line with upcoming Patent Cooperation Treaty (PCT) sequence listing requirements. The proposed amendments have been published for a 30-day consultation period and may be subsequently modified. Therefore, it is unknown which of the proposed changes will be retained and in what form, and when the final version of the amended Rules will come into force. However, the proposals provide a preview of the types of changes being considered by the Canadian Intellectual Property Office, which notably include the following: Excess claim fees Like many jurisdictions, Canada is considering the introduction of government fees for excess claims. The proposal is a fee on the order of $100 CAD for each claim beyond 20 claims, which will be payable when requesting examination, and will be re-assessed upon allowance to determine if further claim fees are due when paying the final fee based on changes in the number of claims during examination. It will thus be prudent to voluntarily amend the claims prior to or when requesting examination to control such fees. Request for Continued Examination (RCE) The objective of the new system is to reduce the pendency of patent applications, with a goal of putting an application in condition for allowance with no more than three Examiner’s reports. Continuing examination beyond three reports would require the filing of an RCE, which would entitle the Applicant to up to two further Examiner’s reports. The filing of an RCE is also proposed for returning an allowed case to examination, which would replace the current (and relatively recent) mechanism to withdraw an application from allowance. The proposed RCE fee is on the order of $816 CAD. Conditional Notice of Allowance (CNOA) Rather than issuing further Examiner’s reports relating to any outstanding formalities, the Canadian Intellectual Property Office will have a new tool to issue a CNOA, indicating that the application is in condition for allowance as long as certain outstanding minor defects are corrected. This provides a more efficient path for Applicants in such situations to both correct the defects and pay the final fee, following which the case would proceed to grant. New PCT Sequence Listing Standard In view of the upcoming introduction (on January 1, 2022) of the new PCT “ST.26” sequence listing standard, Canada plans to bring its sequence listing requirements in line with those of the PCT, which will similarly be adopted by patent offices around the world. Housekeeping matters Otherwise, the proposed amendments aim to provide greater flexibility for Applicants in certain areas such as the correction of various types of errors and fee payments, notably in view of the practical application of recent changes to Canadian patent practice gleaned since they came into force in late 2019. Stay Tuned! As noted above, the final form and timing of the upcoming changes are unknown. Please stay tuned for upcoming news in due course, and do not hesitate to contact a member of our patent team for guidance through the ultimate transition.

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  • Ho-Ho Holiday Themed Patents

     At Lavery, we spend a lot of time searching patent databases on behalf of our clients. Occasionally, we come across certain patents/applications whose cleverness and creativity make a lasting impression. At this time of year, our attention is naturally drawn to those that are holiday themed. And so, in the spirit of the holidays, we thought it would be nice to share some of them with you. We hope that the following examples can help lift your spirits (or at least make you smile). CA 2500690 (application): Christmas tree watering system This setup is likely easier to use by those in the health-care sector. CA 2114854 (application): Santa claws No family member is left behind these holidays—here is a stocking to hang by the fireplace for Santa to leave some treats for your special pet.    US 20200329896 (application): Christmas tree with blades rotated by wind power This application is for a Christmas tree that has a “blade unit” that is mounted to a pole and is detachable. The blades are rotated around the pole by means of natural wind power, “thereby improving the fun of the Christmas tree.” US 6497071: Christmas tree self-watering system This patent is for an “improved watering system for a Christmas tree,” where the Christmas tree's watering basin can be refilled by filling up a nearby water-resistant container. The clever twist? The water-resistant container is disguised as a Christmas present.   US 7258592: Santa Claus visit kit This patent is for a kit for creating an illusion that suggests Santa Claus visited a home. The claimed kit includes items such as “a letter professing to be from Santa Claus” and the “means for making boot prints.” The patent even discloses a rather complicated set of instructions, with steps such as “removing a portion of the drink and/or snack” and, if your home has no chimney, “leaving a toy key outside.”    US 5523741: Santa Claus Detector This patent was for a “children's Christmas Stocking device useful for visually signalling the arrival of Santa Claus by illuminating an externally visible light source having power source located within said device.” Santa Claus is described as “a plump, white-bearded and red-suited gentleman who delivers presents to ‘good’ children at Christmas time.” US 3494235: Devices for dispensing tinsel and the like adaptable for decorating Christmas trees Faster decorating for sure—a gun-shaped device for dispensing tinsel.   All the best wishes for a patently wonderful holiday season!

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  • Canadian Patents: What to Keep in Mind One Year After the Coming into Force of the New Rules?

    The first anniversary of the entry into force of the new Canadian Patent Rules, which significantly changed certain practices surrounding the filing and prosecution of patent applications in Canada, is an opportunity to look back at the major changes that have had a significant impact on Canadian patent practice. Indeed, the past year has allowed us to observe the changes, which in certain aspects seem to be confusing for patent applicants, and to observe their effect in practical terms. We discuss below the scope of some of the legislative amendments that came into force on October 30, 2019, to clarify such issues and assist patent applicants in Canada. Things are moving faster Under the new Rules, the time limit for filing a request for examination has been reduced from 5 years to 4 years, and the time limit for responding to an examination report is now 4 months instead of 6 months, thus shortening the process of obtaining a patent in Canada. Although there are mechanisms to extend these time limits by a few months, they result in additional costs to patent applicants and may also jeopardize priority examination procedures under paragraph 84(1)(a) of the Patent Rules. As a result, we have noted a generally accelerated pace of examination over the past year.  Time is running out for “latecomers” Canada was for a long time one of the only jurisdictions where it was possible to defer entry into the national phase until the 42nd month after the priority date as a matter of right by simply paying a late filing surcharge. However, under the new Rules, PCT applications will only be eligible for so-called “late” national phase entry if the failure to meet the initial 30-month deadline occurred despite "due care" (a suitable explanation will be required to demonstrate such a showing of due care). It is important to note that PCT applications with an international filing date (not a national phase entry date) prior to October 30, 2019 are subject to the old Rules in this respect, and therefore ”late” national phase entry in Canada between the 30th and 42nd month following the priority date is still possible for such PCT applications by paying the surcharge, without justification. Patent applicants would be advised to identify their pending PCT patent applications that are still eligible for “late” national phase entry under the old Rules, and file in Canada before the 42nd month expires in those cases where protection in Canada is desired.  Stricter deadlines for examination requests and maintenance fees – be careful Under the old Rules, for most of the time limits set by the Patent Act or the Commissioner of Patents, failure to meet such a time limit triggered a further 12-month period to fulfil the requirement in question via the abandonment and reinstatement system (applications), or the late payment of maintenance fees system (patents). Under the new Rules, this additional 12-month period no longer applies in cases of failure to meet the deadline for requests for examination and maintenance fees. However, the new system offers additional protection to applicants since failure to comply with the time limits for these actions triggers the issuance of a CIPO notice requesting the completion of the required action within a new time limit (usually 2 months). However, a “due care” requirement comes into effect after the expiry of the period specified in the notice or six months after the initial missed deadline, whichever is later. In addition to the “due care” requirement, third party rights may apply during the abandonment period. This leads to situations where a patent application is abandoned for two different reasons, with different deadlines and requirements for reinstatement, increasing the risk of confusion for applicants. Consider a hypothetical case where an applicant who was unsure whether they wanted to pursue a patent application decided to allow the application to become abandoned by not responding to an examination report by the November 1, 2019, deadline, and to retain the option of reinstatement the following year. In this now abandoned application, the applicant also did not pay the maintenance fee initially due on December 1, 2019, triggering a 6-month delay to pay the maintenance fee and a late fee. Non-payment of the maintenance fee and late fee by June 1, 2020 would thus result in a second reason for abandonment. However, in October 2020, the applicant finally decided to continue with the application, and to respond to the examination report with a request for reinstatement and payment of the reinstatement fee, thereby removing the first reason for abandonment. However, for the second reason for abandonment, the request for reinstatement must also include a statement that the non-payment of the maintenance fee and late fee within the prescribed time limit occurred despite the fact that the applicant exercised “due care” in attempting to make the payment. It is therefore important that patent applicants who deliberately abandon an application, but wish to retain the possibility of reinstatement at a later date, be well aware of the “due care” requirement and of the third party rights that may apply in certain circumstances, including ensuring that the time limits for requests for examination and maintenance fees are respected in order to avoid loss of rights. Manage your priorities well You are now required to file a certified copy of any priority application, or to refer to a digital library providing access to this document (CIPO accepts the “WIPO-DAS” code assigned to a priority application in this regard). For Canadian applications resulting from PCT applications, if the PCT requirements for a certified copy in the international phase have been met, it is not necessary to resubmit a certified copy upon entry into the Canadian national phase. However, for Canadian applications with a priority claim under the Paris Convention, the certified copy or digital library reference must be filed within 4 months of filing or 16 months of the priority date, whichever is later. Also, it is now possible to restore the priority of a Canadian application within 14 months of the priority date where the failure to file an application within the prescribed 12-month period was unintentional. The time limit for requesting restoration of priority is two months from the filing date for non-PCT filings, and one month from the national phase entry date for PCT filings. No longer lost in translation – more flexibility for non-PCT filings Prior to October 30, 2019, it was required to submit a patent application in one of Canada’s two official languages (English/French) and pay the prescribed filing fee at the time of filing to get a filing date in Canada for both non-PCT filings and PCT national phase entries. Under the new Rules, and only for non-PCT filings, it is possible to file an application in a language other than the two official languages and/or not to pay the prescribed fee at the time of filing. In such cases, CIPO will issue a notice requiring that a French or English translation of the application be provided and/or that the filing fee be paid within a specified period of time. This flexibility for non-PCT filings does not apply to filings based on PCT applications. For national phase entries of a PCT application filed in a language other than English or French, applicants must ensure that they have a translation of the application on hand at PCT national phase entry in Canada. Registration of documents and transfers It was previously necessary to register a copy of a document evidencing a transfer of rights (e.g., an assignment) and pay a registration fee in order to effect a change in ownership of a patent application or patent. However, under the new Rules, the registration of a transfer of ownership and the registration of evidence of the transfer (e.g., a signed transfer document) are separate actions for which separate fees must be paid. It is important to note that the mere registration of a document evidencing a transfer only results in that document being recorded, but is not treated as a request to record a transfer.   It is also important to note that former section 51 of the Patent Act—which provided that any assignment is void against any subsequent assignee, unless the assignment is registered as prescribed by those sections, before the registration of the instrument under which the subsequent assignee claims—has been repealed and replaced by subsection 49(4), which in turn refers only to transfers of patents. Thus, the priority is to record the transfer. In light of this, it is strongly recommended that patent applicants and patent holders promptly register any transfer of rights with CIPO in order to update their Canadian file and to prevent any subsequent and illegitimate transfer registration in favour of a third party. Conclusion If you have any questions or require further information on these or any other aspects of Canadian patent practice, feel free to contact a member of our team!

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  • Federal Court clarifies the assessment of patent-eligible subject matter in Canada

    In Yves Choueifaty v. Attorney General of Canada1, the Federal Court of Canada has issued a significant decision concerning the assessment of patent-eligible subject matter, including the approach to be used for such assessment during the examination of Canadian patent applications. Historical perspective In keeping in step with advances in technology, the Canadian Courts have assessed and established certain principles in assessing patent-eligible subject matter. A key decision in this regard related to the patentability of Amazon.com’s “one-click” method for online purchasing. In the Amazon decision2, the Federal Court of Appeal in particular established that the assessment of patent-eligible subject matter requires a “purposive construction” of the claims, utilizing the criteria and approach long established by the Supreme Court3, and notably requiring the assessment as to whether or not a claim element is essential. As summarized by the Federal Court, two questions in particular are to be asked in this regard: Would it be obvious to a skilled reader that varying a particular element would not effect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential. Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element. Importantly, the Supreme Court established that such an assessment should not be based on what is considered to be the “substance of the invention.” Subsequent to the Amazon decision, the Canadian Intellectual Property Office (CIPO) established examination guidelines to assess the patent-eligibility of subject matter in various technology areas. Such guidelines in particular followed a problem-solution approach to determine whether an element is essential and in turn the patent eligibility of a claim. Background The Choueifaty case concerns Canadian Patent Application No. 2,635,393 entitled “Method and Systems for Provision of an Anti-Benchmark Portfolio”, claiming a computer-implemented method for providing an anti-benchmark portfolio. Briefly, the method entails acquiring and processing data regarding securities in a portfolio via particular steps and calculations to generate an anti-benchmark portfolio, the various steps being carried out using a computer. During examination and appeal proceedings at CIPO, the assessment of patentable subject matter was performed via the problem-solution approach set forth in the examination guidelines relating to computer-implemented inventions. Using this approach, it was determined that the solution and in turn the essential elements of the claims were “directed to a scheme or rules involving mere calculations”, and that using a computer was not an essential element of the claims. The claims were thus rejected by CIPO on the basis that: When a claim’s essential elements are only the rules and steps of an abstract algorithm, however, that claim is non-statutory. The Court’s decision On appeal to the Federal Court, it was determined that CIPO did not apply the proper test, noting that the problem-solution approach of CIPO’s examination guidelines not only did not follow the purposive construction test of the Supreme Court, but further is an approach that the Supreme Court established should not be used: The Appellant submits, and I agree, that using the problem-solution approach to claims construction is akin to using the “substance of the invention” approach discredited by the Supreme Court of Canada ... Notably, the Court noted that CIPO’s approach failed to consider the second factor noted above, concerning the inventor’s intention, which is contrary to the test established by the Supreme Court. The Court thus allowed the appeal and set aside CIPO’s decision to reject the application, requesting that CIPO undertake a fresh assessment of this issue in accordance with the Court’s reasons. Future considerations This decision brings much needed clarity to the assessment of patentable subject matter in Canada and is a welcome development for patent applicants in a variety of technology areas. The Court’s clear instructions to use the criteria of purposive construction established by the Supreme Court will assist in the analyses of various issues of patentability during patent examination. It will be interesting to see how CIPO will proceed in light of the decision, in respect of its fresh assessment as directed by the Court and also the possibility of pursuing an appeal. Stay tuned and please do not hesitate to contact a professional of our Patents team for more information!   2020 FC 837. Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 328. Free World Trust v. Électro Santé Inc., 2000 SCC 66; Whirlpool Corp. v. Camco Inc., 2000 SCC 67

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  • Further COVID-19 Update on Canadian IP

    The Canadian Intellectual Property Office (CIPO) has now made a further announcement concerning the extension of deadlines, to the effect that  deadlines falling within March 16 to August 7, 2020, are extended to August 10, 2020. CIPO is otherwise still open for business and our IP team members have been continuing operations and transacting with CIPO on a regular basis, in a remote and secure manner. Please do not hesitate to contact a member of our IP group should you have any questions. In addition, the Canadian government has enacted the COVID-19 Emergency Response Act, which, inter alia, has amended the Canadian Patent Act to add new section 19.4. This amendment provides a type of temporary compulsory licensing regime for patented technologies necessary to respond to a public health emergency. This is a temporary measure, since (1) if such authorization is granted, it will not last longer than 1 year (or may end sooner if the Minister of Health determines that such authorization is no longer necessary), and (2) no such authorization will be granted after Sept. 30, 2020. Under this provision, the authorized party may make, construct, use and sell the patented invention to the extent necessary to respond to public the health emergency. In return, the authorized party must pay the patentee what the Commissioner of Patents considers to be adequate remuneration under the circumstances. Rest assured that we remain at your service for all your legal needs, including those required to manage this pandemic, and that we will keep you informed as the situation evolves. We would like to offer our thoughts and support during these challenging times.

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  • COVID-19: Update on Canadian IP

     The Canadian Intellectual Property Office (CIPO) has made a further announcement concerning the extension of deadlines, to the effect that deadlines falling within March 16 to April 30, 2020 are extended to May 1, 2020. CIPO is otherwise still open for business and our intellectual property team members have been continuing operations and transacting with CIPO on a regular basis, in a remote and secure manner. Please do not hesitate to contact a member of our IP group should you have any questions. Rest assured that we remain at your service for all your legal needs, including those required to manage this pandemic, and that we will keep you informed as the situation evolves. We would like to offer our thoughts and support during these challenging times.

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  • Changes to the Canadian Patent Rules came into force on October 30th 2019

    The new Patent Rules, as well as certain amendments to the Patent Act, came into force on October 30, 2019. These changes implement the Patent Law Treaty and reduce the risk to applicants of a loss of rights but also bring about practice changes worthy of mention. Canadian national phase of a PCT application For applications filed in Canada via PCT national phase entry: A little bit faster… Under the new system, the deadline to request examination will be reduced to 4 years from the PCT international filing date (currently 5 years). The shortened deadline will apply to cases having a PCT international filing date on or after October 30, 2019. Further, the deadline to respond to an Office Action will be reduced to 4 months with possible fee-based extension to 6 months (currently 6 months with no extension).That means that prosecution shall take less time overall. “Late” national phase entry It is currently possible to enter the CA national phase past the 30-month deadline and up to 42 months from the priority date, as a matter of right. Under the transitional provisions, the current system shall continue to apply to PCT applications with a PCT international filing date prior to October 30, 2019. Subsequently, for cases with a PCT international filing date on or after October 30, 2019, such “late” national phase entry will only be possible if missing the original 30-month deadline was unintentional. A statement must be submitted to that effect. The Canadian Intellectual Property Office (CIPO) will have the discretion to accept or refuse such declarations. So it will be wise to consider the 30-month deadline a hard deadline for CA national phase entry. Missing deadlines for requesting examination or paying maintenance fees Under the current system, if such a deadline is missed, a further 12 months would be available via the abandonment/reinstatement system (for applications) or the late payment system (for patents), as a matter of right. The new system will provide an additional safeguard to applicants, as missing such deadlines will trigger the issuance of a CIPO notice requesting that the required action be taken within a new deadline. However, missing the new deadline will result in a new category of abandonment requiring reinstatement under a “due care” standard. A statement must be submitted to show “due care”. Once again CIPO will have discretion to accept or refuse declarations of “due care”. This new system will apply to any deadline to request examination or pay a maintenance fee that falls on or after October 30, 2019. The prudent approach will be to avoid relying on a showing of due care by meeting all deadlines. Restoration of priority Canadian practice will come into line with the restoration of priority provisions of the PCT. This extends the usual 12-month priority period by a further 2 months if missing the original 12-month deadline was unintentional (the standard to be used in CA), and will apply to cases with a PCT international filing date on or after October 30, 2019. Therefore, applicants can rest easy that such a restoration of priority will also be available in Canada. Certified copies of priority applications Under the new system, it will become necessary to file a certified copy of any priority applications (or refer to a digital library to access the document). Note that satisfying the PCT certified copy requirements during the international phase will also satisfy the new Canadian requirements for the national phase application. “Regular” Canadian applications For Canadian applications directly filed with the CIPO (i.e., not via the PCT), equivalent changes to those noted above (with the exception of “late” national phase entry, which is not applicable) will be implemented by comparable provisions. The following additional changes are also noteworthy: Certified copies of priority applications For Canadian applications claiming priority under the Paris Convention, it will become necessary to file a certified copy of any priority applications or refer CIPO to a digital library such as WIPO-DAS to access the document. The deadline will be the later of 4 months from filing and 16 months from priority. It will of course be good practice to have such certified copies available upon filing in Canada. Easier to secure a Canadian filing date It will be easier to obtain a filing date for such direct-filed applications, as various requirements may be fulfilled shortly after filing. Notably, a translation into English or French, if applicable, may be submitted post-filing, in contrast to Canadian national phase applications filed via the PCT. It will nonetheless be good practice to have all documents and information ready at filing. We can show you the way! We can help guide applicants as we transition to this new era of Canadian patent practice. Feel free to contact a member of our team!

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  • Ready, set go! Changes to Canadian patent practice coming into force later this year

    The Government of Canada has just announced that the new Patent Rules, as well as certain amendments to the Patent Act, will come into force on October 30, 2019. These changes implement the Patent Law Treaty and reduce the risk of a loss of rights to Applicants but also bring about practice changes worthy of mention: Canadian national phase of a PCT application For applications filed in Canada via PCT national phase entry: Things will be getting faster Under the new system, the deadline to request examination will be reduced to 4 years from the PCT filing date (currently 5 years) and the typical deadline to respond to an Office Action will be reduced to 4 months with possible fee-based extension to 6 months (currently 6 months with no extension). Therefore, CA prosecution shall be shorter overall. “Late” national phase entry It is currently possible to enter the CA national phase past the 30-month deadline and up to 42 months from priority, as a matter of right. Under the new rules, such “late” national phase entry will only be possible if missing the original 30-month deadline was unintentional (a statement must be submitted to that effect). The Canadian Intellectual Property Office (CIPO) will exercise its discretion to accept or refuse such declarations. Therefore, it would be prudent to consider the 30-month deadline as a hard deadline for CA national phase entry. New system for dealing with missed deadlines to request examination or pay maintenance fees Under the current system, if such a deadline is missed, a further 12 months would be available via the abandonment/reinstatement system (applications) or late payment system (patents), as a matter of right. The new system will provide an additional safeguard to Applicants, as missing such deadlines will trigger the issuance of a CIPO notice requesting that the required action be taken within a new deadline. However, missing the new deadline will result in a new category of abandonment requiring reinstatement under a “due care” standard (a statement must be submitted to show “due care”). Once again CIPO will have discretion to accept or refuse declarations of “due care”. The prudent approach will be to avoid relying on showings of due care by meeting all deadlines. Restoration of priority Canadian practice will come into line with the restoration of priority provisions of the PCT. Such a procedure extends the usual 12-month priority period by a further 2 months if missing the original 12-month deadline was unintentional (the standard to be used in CA). Therefore, Applicants can rest easy that such a restoration of priority will also be available in Canada. Sequence listing page fees While sequence listings have been submitted in electronic form for a number of years, they were nonetheless included in the calculation of CIPO excess page fees payable with the issue fee. Under the new practice, a sequence listing submitted in electronic form will no longer be considered in such calculations. This will greatly benefit Applicants who file cases with large sequence listings. “Regular” Canadian applications For Canadian applications directly filed at CIPO (i.e., not via the PCT), equivalent changes to those noted above (with the exception of “late” national phase entry, which is not applicable) will be implemented by comparable provisions. The following additional changes are also noteworthy: Filing certified copies of priority applications For Canadian applications claiming priority under the Paris Convention, it will become necessary to file a certified copy of any priority applications (or refer CIPO to a digital library to access the document). The deadline will be the later of 4 months from filing and 16 months from priority. It will of course be good practice to have such certified copies available at CA filing. Fewer requirements to secure a CA filing date It will be easier to obtain a filing date for such direct-filed applications, as various requirements may be fulfilled shortly after filing. Notably, a translation into English or French, if applicable, may be submitted post-filing (in contrast to CA national phase applications filed via the PCT). It will nonetheless be good practice to have all documents and information ready at filing. We can show you the way! We are here to help guide Applicants as we transition to this new era of Canadian patent practice! Please do not hesitate to contact a member of our team!

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  • The United States–Mexico–Canada Agreement (USMCA): What this means for Canadian IP law

    As we reported on October 15, 2018, Canada, Mexico, and the United States were finally able to agree on the terms of the United States–Mexico–Canada Agreement (USMCA) on September 30, 2018. The USMCA is intended to replace the North American Free Trade Agreement (NAFTA), which has been in place for over 20 years. The USMCA comprises 34 Chapters, one of which is dedicated entirely to Intellectual Property. With such a focus on Intellectual Property, it is worth asking what changes this agreement will bring forth to current Canadian IP laws. While this Chapter may seem extensive, many of its provisions reflect what is already provided for under Canadian law. However, there are several changes worth noting, most of which will bring our IP regime closer to that of our US counterparts. What follows is a brief summary of the more significant changes the USMCA will bring to the fields of patents, trademarks, copyrights, industrial designs and border measures. Patents and Undisclosed Test or Other Data Patent term adjustment The USMCA will provide for a patent term adjustment for unreasonable delays in the issuance of patents. This means that the Canadian Intellectual Property Office (CIPO) will compensate for such delays by adjusting the terms of issued patents, similar in principle to the current system at the United States Patent and Trademark Office. These “unreasonable delays” will include delays where the issuance of a patent occurs more than five years after the filing date, or three years after a request for examination has been made, whichever is later. Canada will have 4.5 years to implement this change once the USMCA enters into force. Patent Law Treaty Under the USMCA, the parties shall give due consideration to ratifying or acceding to the Patent Law Treaty (PLT), or adopt or maintain procedural standards consistent with the objective of the PLT. The Canadian Patent Act has already been amended to this end, however the relevant provisions are not yet in force pending the preparation of amended Patent Rules to implement such changes. Extended data protection for biologics Another significant change concerns data protection for biologics (patented or not), which will be increased from 8 years to 10 years (still 2 years less than what is presently available in the US) from the date of first marketing approval. Canada will have 5 years to implement this change once the USMCA enters into force. Trademarks The USMCA describes a number of obligations related to Canadian trademarks. However, many of these obligations are already met or will soon be, once Canada implements the amendments to its trademark laws in 2019. This includes not denying registration to sound marks and making “best efforts” to register scent marks, as well as adopting the Madrid Protocol, the Singapore Treaty and a trademark classification system consistent with the Nice Agreement. It appears however that amendments may be required to include protection for “collective marks” (i.e. marks used by members of cooperative, association or other collective group or organization) and some changes may also be necessary with respect to geographical indications As for “well known-marks”, it is questionable whether additional statutory protection will be necessary to meet the requirements of the USMCA. Furthermore, the USMCA requires that Canada implement a system that provides for “pre-established damages” or “additional damages” in civil proceedings with respect to trademark counterfeiting, to deter infringement and fully compensate trademark owners. As “additional damages” seem to include exemplary or punitive damages, no change to the law would be required to meet USMCA requirements. The Canadian government could however seize this opportunity to incorporate the concept of “statutory damages”, as is the case under the Copyright Act. Under such a system, those alleging infringement could elect to obtain damages in an amount that is explicitly stated in law, rather than having to prove such damages based on the level of harm they have suffered. Copyrights Canadian copyrights will experience at least one significant change: an increase in the term of protection from 50 to 70 years after the author’s death. Once again, this change will further align our copyright law scheme with that of the US. It is also worth noting that the USMCA includes copyright provisions related to Internet Service Providers, including legal incentives for ISPs to cooperate with copyright holders, as well as limitations in the law that preclude monetary relief from copyright infringement that ISPs do not control, initiate, or direct. In order to benefit from this regime, ISPs will have to implement expeditious measures for removing access to infringing content and adopt a policy for terminating the accounts of repeat infringers. Industrial designs Consistent with the Hague Agreement, the USMCA notably sets forth a term of industrial design protection of a maximum of 15 years, which is 5 years longer than the current 10 year term under Canadian practice. Canada has already joined the Hague Agreement and is implementing its provisions, including the maximum 15 year term, which shall come into force on November 5, 2018. Border Measures A welcome change under USMCA will be the increased power for customs officials including the authority to initiate border measures against suspected counterfeits or pirated goods imported or destined for export. Such authority will extend to goods in transit or admitted into or exiting from a free trade zone or bonded warehouse. Summary While the final form of the USMCA remains to be seen (it still needs to be ratified by the three countries), the above changes point to a consistent trend: the strengthening of Canadian intellectual property rights. It remains to be seen how and when these provisions will be implemented into current Canadian laws, as well as how they will be enforced once adopted. The Agreement, in addition to the Chapter pertaining to IP law, can be accessed using the following links: USMCA and Chapter 20 (Intellectual Property).

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  • Use it and (maybe) lose it : Prior use and patentability

    It is generally universal in patenting that an invention cannot have been previously disclosed to the public in order to qualify for patent protection. Canadian law stipulates that the subject matter of a patent claim must not have been disclosed “in such a manner that the subject-matter became available to the public in Canada or elsewhere”1 before a critical date. The critical date is typically the priority date of the patent application, however Canada also provides a one-year grace period for applicant/inventor-derived public disclosures. Thus the critical date varies, depending on whether the public disclosure is by/derived from the applicant/inventor, or made by a third party. It is important to note that the Canadian one-year grace period is calculated back from the CA or PCT filing date (i.e. not from a foreign priority date), as illustrated in Fig. 1. Figure 1: Timing requirements for the Canadian grace period for applicant/inventor-derived disclosures Development of an invention typically entails some testing prior to preparing and filing a patent application. While such pre-filing activities can often be restricted to a closed workshop or laboratory, others, due to their very nature, may entail experimentation or trials in a less restricted environment. Further, an independent inventor may not necessarily have access to special facilities to test an invention. The impact of such pre-filing activities or prior uses on patentability have been assessed by the Canadian Courts, a few examples of which are discussed below. Taking the invention out on the road In Conway v. Ottawa Electric Railway Co.2, the invention related to a snowplow for attachment to streetcars to clear city rail lines. A key consideration by the Court, which upheld the patent, was that the invention required prior testing which by its very nature couldn’t really be performed in a closed environment, and thus such a prior experimental use did not preclude patentability. In Gibney v. Ford Motor Co. of Canada Ltd.3, the invention related to a protective cover for a generator of a motor vehicle. The inventor (an automobile mechanic) installed a makeshift version of the device on an unidentified customer’s car, years before filing a patent application. The Court concluded that such an activity represented a prior public use that bars patentability, noting that no restriction was placed on the customer’s use of the device, nor was the customer told to keep the device secret. Further, the use was not considered to be experimental in nature. Taking the invention out on the ice In Bauer Hockey Corp. and Nike International Ltd. v. Easton Sports Canada Inc.4, the invention related to a (hockey) skate boot, which was used during games of a test league composed of Bauer employees and others covered by a confidentiality agreement, at a hockey arena which was however open to the public. The Court concluded that the games did not represent a public disclosure of the invention, since the skates were only available for visual inspection and were not available for testing or dismantling, and therefore someone merely attending the games would not be able to learn the features of the invention in an enabling manner. Taking the invention to a job site In Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd.5, the invention related to a bearing assembly for use in oil drilling. An assembly falling within the patent was built and rented to another company for use on a job site, prior to the patentee’s patent filing. The bearing assembly was encased in a steel tube and thus its inner workings could not be revealed by visual inspection. While the tool could have been dismantled for further inspection and the users could have requested to see e.g., technical drawings, there was no evidence of such further inspection or request. The Court however concluded that the use on the job site represented a novelty-destroying prior public use, noting that there was no requirement (explicit or implied) of confidentiality, and further that it was sufficient that the users had the opportunity to examine the invention, and the fact that they actually did not do so was irrelevant. Another case on the oil patch had a different outcome. In Varco Canada Ltd. v Pason Systems Corp.6, the invention related to an automatic drilling system. The inventor built an initial prototype but needed to test it, and, having no testing facility of his own, asked if he could test the autodriller on an oil rig. The inventor was on the rig and personally did the drilling, and locked the device when he was not on the rig so that no one could examine it. The Court upheld the patent, noting that the testing was experimental and required, and while no confidentiality agreement was in place, confidentiality was implicit based on the inventor’s efforts to keep the invention secret during testing. Taking the invention to the clinic In Bayer Inc. v. Apotex Inc.7, it was alleged that the invention was disclosed to the public more than one year before the patent filing date via certain clinical trials. While the trial participants did not sign confidentiality agreements and were aware of the active ingredients of the tablets and their intended use as oral contraceptives, they did not know all of the details of the make-up of the tablets, and were asked to return any unused tablets (a number of tablets were nonetheless recorded as “lost” or “not returned”). The Court did consider that there was a theoretical possibility that the tablets could have been analyzed (there was no evidence to that effect), but found that such experimental use was not a public disclosure, noting that carrying out the clinical trial was necessary, and that reasonable steps were taken to ensure confidentiality and that any unused tablets would be returned. Thus the experimental nature of the trials and the manner in which they were carried out outweighed any theoretical possibility that some tablets could have been kept and analyzed. Later analysis of the same patent came to the same conclusion, the Court further concluding in that case that even such a theoretical analysis would likely have been insufficient8,. Interestingly, corresponding analysis of the U.S. counterpart patent by the U.S. Courts reached a similar conclusion9, whereas the European Patent Office came to the opposite conclusion10 in that jurisdiction’s counterpart. Where does this take us? Any prior public disclosure of an invention should of course be avoided, particularly in the context of a worldwide patent strategy, where laws and criteria vary between jurisdictions. In the Canadian context, some leeway is provided by the grace period, as well as some deference if a prior use is experimental in nature, a principle which continues to be recognized by the Canadian Courts11. While each case turns on its specific details, the confidentiality and experimental nature of such prior uses are important factors.   Patent Act, R.S.C. 1985, c. P-4, article 28.2. 8 ExCR 432 (1904). 2 ExCR 279 (1967). 2010 FC 361 (2010), aff’d 2011 FCA 83 (2011). 2011 FC 1323 (2011), aff’d 2012 FCAF 333 (2012). 2013 FC 750 (2013). 2014 FC 436. Bayer Inc. v. Apotex Inc., 2016 FC 1013 (2016). Bayer Schering Pharma AG v. Barr Laboratories, Inc., U.S. District Court for the District of New Jersey, No. 05-CV-2308 (2008), aff’d U.S. Court of Appeals for the Federal Circuit, No. 08-1282 (2009). Décision T0007/07 – 3.3.02 (2011) of the Technical Board of Appeal of the European Patent Office Bombardier Recreational Products Inc. v. Arctic Cat Inc., 2017 FC 207 (2017); Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2018 FC 259 (2018).

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  • Medical use claims not involving the professional skill of a physician are patent-eligible in Canada.

    In a previous newsletter 1, we discussed a change in Canadian patent practice in respect of the patent-eligibility of claims relating to medical uses, further to a decision from the Federal Court 2. Following this decision, the Canadian Intellectual Property Office (CIPO) issued a revised Practice Notice 3 concerning the examination of medical use claims, indicating that claims defining as an inventive feature a fixed dosage or fixed dosing schedule, are patent-eligible. In contrast, claims defining as an inventive feature a dosage range or a dosing schedule that includes a range, are considered to interfere with or require the professional skill of a medical professional and are thus generally rejected by Canadian Examiners. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> In a recent decision 4, the Patent Appeal Board (PAB) has determined that claims defining as an inventive feature a dosage regimen that includes a range do not necessarily interfere with the professional skill of a physician and may be acceptable, depending on the circumstances, in contrast to the more strict position taken during examination. Claim 1 under review in this case reads as follows: Use of calcitonin (CT) in combination with one or more oral delivery agents selected from N-(5-chlorosalicyloyl)-8-aminocaprylic acid, N-(10-[2-hydroxybenzoyl] aminodecanoic acid or N-(8-[2-hydroxybenzoyl]amino) caprylic acid, or a disodium salt, hydrate or solvate thereof for the manufacture of a medicament for the treatment of a disorder responsive to the action of calcitonin, wherein said medicament is for oral administration to a human host from about 5 minutes to 2 hours prior to a meal. The goal of the invention is to solve the problem of low bioavailability of calcitonin (CT) that arises when an oral formulation comprising CT is taken with food. The solution proposed is to orally administer the pharmaceutical composition comprising CT during a short time window prior to food intake, i.e. from about 5 minutes to 2 hours prior to a meal, as recited in claim 1.  The Examiner rejected the claims under section 2 of the Patent Act, alleging that the claims related to a method of medical treatment involving the professional skill of a physician because the essential element only serves to instruct a medical professional “how” to treat a patient, notably the instructions to take the formulation during the period of time from about 5 minutes to 2 hours prior to a meal. The PAB overturned the Examiner’s final decision, asserting that a person of ordinary skill in the art would appreciate that any time during the recited time window would overcome the low bioavailability observed when administering an oral formulation of CT with a meal, and thus a physician’s judgment is not required in selecting a particular time within this range. Stated otherwise, once the physician has decided to prescribe the oral CT formulation to be taken shortly before a meal, no exercise of the physician’s skill or judgment is required. The PAB thus concluded that the subject matter defined by the claims does not amount to a method of medical treatment, and thus falls within the definition of “invention” under section 2 of the Patent Act. This decision confirms that claims relating to medical uses may constitute patent-eligible subject matter, even when the inventive feature of the claims is somehow based on a dosage or dosing schedule defined in terms of a range, as long as it may be established that practicing the claimed invention does not interfere with or require the professional skill of a physician. Patent applicants would be well advised to consider this change to Canadian patent practice when seeking patent protection in Canada for these types of inventions.   Recent developments on patent-eligibility of medical use claims in Canada AbbVie Biotechnology Ltd. v Canada (Attorney General), 2014 FC 1251. PN 2015-01, issued March 18, 2015. Commissioner’s Decision 1418

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