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.

Advanced search
  • Patent applications and processing times – What’s right for you

    Part 1: Four reasons to slow down and four reasons to speed up the process Part 2: Slowing down the process (CA, US, EP, PCT) Part 3: Fast track (CA, US, EP, PCT) Part 1: Why slow down or speed up the process? Slowing down the process Why would anyone want to slow down the process when it already usually takes several years for a patent to be issued? Cash flow Uncertainty for competitors Possibility of changing the scope Possibility of filing a divisional application In some cases, cash flow may justify spreading expenses over a longer period of time. Keeping an application pending longer may also be beneficial from a business perspective. In fact, it could create uncertainty for competitors, who cannot easily determine the scope of the exclusive right that may be granted to you. Moreover, claims are easier to amend while the application is pending. Lastly, filing a divisional application is usually only possible when the parent patent application is still pending. Speeding up the process If slowing down the process is so advantageous, why speed it up? Proof of patentability before expanding the patent application family Monetary valuation or capital raising Proceedings before the courts Strong negotiating position After filing a priority application, the applicant has 12 months to file corresponding applications in other countries. Filing abroad can entail considerable expenses. It may therefore be advantageous to obtain results quickly so you can make the best decision about filing applications in other countries. An issued patent is a far better indication of a technology’s value. This can have a major impact on a company’s valuation and, at the same time, allow for additional capital to be raised. Moreover, filing a patent application will not prevent infringers from marketing your technology; you may only commence proceedings in front of the court with an issued patent. The possibility of instituting legal proceedings could drastically change the tone of negotiations with your competitors—and sometimes your suppliers, too. Strategies and costs Special provisions exist to speed up and slow down the process in many territories. For the purposes of this exercise, we will discuss patent applications in Canada, the United States and Europe. We will also look at international patent applications, namely PCT applications. Part 2: Slowing down the process Canada With regard to slowing down the process, the simplest strategy in Canada is to wait before requesting examination as much as possible. While the provision for this has changed over the years, applicants now have four (4) years from the date of filing a Canadian application to request an examination. For PCT national phase entry, Canada allows an extension of the standard 30-month time limit to up to 42 months under certain conditions. However, examination request dates and maintenance fees remain the same. Therefore, this is beneficial in the short term only. For each examiner’s report (also called office action), it is possible to request an extension of the time limit by two months before the original time limit expires. This request must be accompanied by the late fee and is only accepted under certain conditions. The other option is to not reply to the examiner’s report and to wait until the application is deemed abandoned. The application may then be reinstated by filing a response to the examiner’s report and paying an additional fee. It is important to note that a Canadian application is no longer eligible for accelerated processing if an extension of the time limit was obtained for it or it was reinstated. Furthermore, while an application is abandoned, and even if it is later reinstated, third parties could obtain certain rights to the technology. United States In the United States, an extension of time fee may be paid at the same time as the reply to an examiner’s report is filed. However, the maximum time limit must not exceed six (6) months. It is also possible to file a request (or petition) for the suspension of the time limit for replying to an examiner’s report (by paying the relevant fee, of course). This request is only acceptable under certain conditions and cannot exceed six (6) months. Similarly, a request may be filed to defer the examination of the application, which may delay examination by up to three (3) years after the priority date. Once again, certain conditions must be met and there is a fee to pay. Europe As is the case for Canada, for each examiner’s report, a request can be made to extend the time limit by two (2) months before the original time limit expires. However, unlike in Canada, there are no fees or conditions for this request to be accepted. The other option is to not reply to the examiner’s report and to let the application lapse. The application may then be reinstated by filing a response to the examiner’s report and paying an additional fee. As for the 10-day rule, it will continue to apply until November 2023. This rule, which was established at a time when communications were still sent by mail, provides that a dated communication is deemed to have been delivered ten (10) days after the date of the document—the time limit is therefore automatically extended by ten (10) days. All things considered, the elimination of this rule is a plus in helping prevent various communication problems. PCT When it comes to slowing things down, the PCT application itself may be used to slow down the process. In fact, the international patent application system provides allows a decision on international applications to be made as late as 30 months from the priority date. The PCT system is based more on the reservation of rights than on slowing down the process. Nevertheless, both from cash flow and filing strategy standpoints, the longer time limit for making decisions may be beneficial. Summary–slowing down the process CA: Postpone filing the Canadian application or entering the national phase. Push back the examination request. Apply for an extension of the time limit. Do not respond, then apply for reinstatement. US: Pay time limit extension fees. Submit a request to suspend processing. Submit a request to defer the examination. EP: Apply for an extension of the time limit. Apply the 10-day rule. Do not respond, then pay the fees to have the application reinstated. PCT: Take advantage of the 30-to-42-month extension for each country. Part 3: Fast track Canada Of course, the best way to speed up the process is to request an examination as soon as possible and, above all, not put off replying to the examiner’s reports received. After requesting an examination and before receiving the first examiner’s report, it is possible to request that the application be processed expeditiously. The request requires that the Canadian application be published and it may be subject to a number of conditions. An applicant whose rights may be prejudiced by the examination time limit can pay an additional fee to expedite the process. When a patent application relates to so-called green technology or the COVID-19 pandemic, the notion of prejudice does not apply and no fee is due. Speeding up the process is also possible by taking advantage of the outcome of a corresponding application in another jurisdiction deemed credible by the Canadian Patent Office (e.g., Europe, United States, Japan, etc.). This is referred to as a PPH (patent prosecution highway) request (the French translation by “autoroute de traitement des demandes de brevet”, while quite accurate, is rarely used). United States Those who have the means to do so may pay an acceleration fee when filing the application in the US. The intent is then to complete the entire process within 12 months. The ability of the US Patent Office to meet the expectation is also taken into consideration before accepting the request. Special treatment may also be requested for a patent application where the health or age of one of the inventors warrants this. Such a request may also be made when the technology in the patent application is “green” or relates to “counterterrorism.” The US also takes part in the PPH system, and the decision made regarding a corresponding application in another jurisdiction can also help speed up the process. Evidently, it is important not to delay replying to the examiner’s reports received, no matter how else you may choose to accelerate the process. Europe The European Patent Office accepts PPH requests and also offers the “PACE” programme, which helps speed up processing times (search and/or examination) without any fees or specific conditions other than responding to examiner’s reports in a timely manner. The European Patent Office’s ability to handle the requests is also taken into account. PCT Quickly completing national phase entries (i.e., well before the 30-month time limit) makes it possible to proceed faster with the substantive examination in each jurisdiction. During the international phase of the PCT, attempts can be made to move the process along before entering the national phase. This procedure often dubbed as a “Chapter II request” does not guarantee that time will be saved, but certain questions may be anticipated thus avoid multiple delays in front of different examiners. Summary – speeding up the process CA: File the Canadian application or enter the national phase as soon as possible. Make the examination request as soon as possible. Respond quickly to examiner’s reports. Request accelerated processing based on PPH, green technology, COVID-19 technology or possible prejudice. US: Pay acceleration fees when filing. Request accelerated processing through the PPH system. Respond quickly to examiner’s reports. Submit a petition to make the application special (on the basis of age or health, green technology or counterterrorism technology). EP: Request access to PACE programme. Request accelerated processing through the PPH system. Quickly respond to examiner’s reports. PCT: Enter national phase as soon as possible. Apply for examination under “Chapter II.”

    Read more
  • Ten things you should know about the amendments to Quebec’s Charter of the French language

    Quebec recently enacted Bill 96, entitled An Act respecting French, the official and common language of Québec, which aims to overhaul the Charter of the French language. Here are 10 key changes in this law that will impose significant obligations on businesses: As of June 1, 2025, businesses employing more than 25 people (currently the threshold is 50 people) for at least six months will be required to comply with various “francization”1 obligations. Businesses with between 25 and 99 employees may also be ordered by the Office québécois de la langue française (the OQLF)2 to form a francization committee. In addition, at the request of the OQLF, businesses may have to provide a francization program for review within three months. As of June 1, 2025, only trademarks registered in a language other than French (and for which no French version has been filed or registered) will be accepted as an exception to the general principle that trademarks must be translated into French. Unregistered trademarks that are not in French must be accompanied by their French equivalent. The rule is the same for products as well as their labelling and packaging; any writing must be in French. The French text may be accompanied by a translation or translations, but no text in another language may be given greater prominence than the text in French or be made available on more favourable terms. However, as of June 1, 2025, generic or descriptive terms included in a trademark registered in a language other than French (for which no French version has been registered) must be translated into French. In addition, as of June 1, 2025, on public signs and posters visible from outside the premises, (i) French must be markedly predominant (rather than being sufficiently present) and (ii) the display of trademarks that are not in French (for which no French version has been registered) will be limited to registered trademarks. As of June 1, 2022, businesses that offer goods or services to consumers must respect their right to be informed and served in French. In the event of breaches of this obligation, consumers have the right to file a complaint with the OQLF or to request an injunction unless the business has fewer than five employees. In addition, any legal person or company that provides services to the civil administration3 will be required to provide these services in French, including when the services are intended for the public. As of June 1, 2022, subject to certain criteria provided for in the bill, employers are required to draw up the following written documents in French: individual employment contracts4 and communications addressed to a worker or to an association of workers, including communications following the end of the employment relationship with an employee. In addition, other documents such as job application forms, documents relating to working conditions and training documents must be made available in French.5 As of June 1, 2022, employers who wish to require employees to have a certain level of proficiency in a language other than French in order to obtain a position must demonstrate that this requirement is necessary for the performance of the duties related to the position, that it is impossible to proceed using internal resources and that they have made efforts to limit the number of positions in their company requiring knowledge of a language other than French as much as possible. As of June 1, 2023, parties wishing to enter into a consumer contract in a language other than French, or, subject to various exceptions,6 a contract of adhesion that is not a consumer contract, must have received a French version of the contract before agreeing to it. Otherwise, a party can demand that the contract be cancelled without it being necessary to prove harm. As of June 1, 2023, the civil administration will be prohibited from entering into a contract with or granting a subsidy to a business that employs 25 or more people and that does not comply with the following obligations on the use of the French language: obtaining a certificate of registration, sending the OQLF an analysis of the language situation in the business within the time prescribed, or obtaining an attestation of implementation of a francization program or a francization certificate, depending on the case. As of June 1, 2023, all contracts and agreements entered into by the civil administration, as well as all written documents sent to an agency of the civil administration by a legal person or by a business to obtain a permit, an authorization or a subsidy or other form of financial assistance must be drawn up exclusively in French. As of September 1, 2022, a certified French translation must be attached to motions and other pleadings drawn up in English that emanate from a business or legal person that is a party to a pleading in Quebec. The legal person will bear the translation costs. The application of the provisions imposing this obligation has, however, been suspended for the time being by the Superior Court.7 As of September 1, 2022, registrations in the Register of Personal and Movable Real Rights and in the Land Registry Office, in particular registrations of securities, deeds of sale, leases and various other rights, must be made in French. Note that declarations of co-ownership must be filed at the Land Registry Office in French as of June 1, 2022. The lawyers at Lavery know Quebec’s language laws and can help you understand the impact of Bill 96 on your business, as well as inform you of the steps to take to meet these new obligations. Please do not hesitate to contact one of the Lavery team members named in this article for assistance. We invite you to consult the other articles concerning the modifications made to Quebec’s Charter of the French language: Trademarks and Charter of the French language: What can you expect from Bill 96? Amendments to the Charter of the French Language: Impacts on the Insurance Sector “Francization” refers to a process established by the Charter of the French language to ensure the generalized use of French in businesses. The OQLF is the regulatory body responsible for enforcing the Charter of the French language. The civil administration in this law includes any public body in the broad sense of the term. An employee who signed an individual employment contract before June 1, 2022, will have until June 1, 2023, to ask their employer to provide them with a French translation if the employee so wishes. If the individual employment contract is a fixed-term employment contract that ends before June 1, 2024, the employer is not obliged to have it translated into French at the request of the employee. Employers have until June 1, 2023, to have job application forms, documents related to work conditions and training documents translated into French if these are not already available to employees in French. Among these exceptions are employment contracts, loan contracts and contracts used in “relations with persons outside Quebec.” There seems to be a contradiction in the law with regard to individual employment contracts which are contracts of adhesion and for which the obligation to provide a French translation nevertheless seems to apply. Mitchell c. Procureur général du Québec, 2022 QCCS 2983.

    Read more
  • Kickstarting Examination in View of Upcoming Changes to Canadian Patenting Practice

    As we reported earlier, the Canadian government published proposed amendments to the Patent Rules in July 2021, 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 the new Patent Cooperation Treaty (PCT) ST.26 sequence listing standard. The amended Patent Rules (the “new Rules”) have now been published in their final version and are substantially the same as the 2021 proposal. Since most of the new Rules will come into force on October 3, 2022, Applicants should strongly consider requesting examination by Friday, September 30, 2022, to avoid the new excess claim fee and RCE regimes, as elaborated below. Excess claim fees The new Rules will introduce government excess claim fees of $100 CAD for each claim beyond 20 claims. These fees 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 fees, based on changes in claim number during examination. A multiple-dependent claim or a claim listing alternative elements will count as a single claim for fee calculations, thus using such claim formats will not further increase such fees. Importantly, such fees will be determined based on the maximum number of claims present in the case at any time during examination, therefore the addition of claims beyond 20 during examination will incur fees that cannot later be reduced or avoided by subsequently removing claims before allowance. For example, if an application contained 15 claims when requesting examination, which were amended to 30 claims during examination and later reduced to 18 claims for allowance, excess claim fees of $1000 CAD ((30-20) x $100) would still be payable at allowance, even though the application did not contain more than 20 claims when requesting examination or at allowance. Therefore, under the new system, minimizing or avoiding claim fees shall require not only limiting the number of claims when requesting examination, but also limiting their number throughout examination. Since many applications are originally filed with numerous claims, controlling such fees shall entail amending the claims prior to or when requesting examination. It should be noted that Canadian patent law, unlike that of the United States, does not include a continuation practice. Therefore, voluntary divisional applications are generally not recommended in Canada in view of double patenting under Canadian law, and there are no terminal disclaimers or equivalent remedies to address double patenting objections in Canada. These unique aspects of Canadian patent practice may limit the subject matter that may be pursued in divisional applications and will need to be given careful consideration by Applicants when devising a strategy to reduce the number of claims in view of the new Rules. Request for Continued Examination (RCE) The new Rules will also introduce an RCE system, with the 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 additional Examiner’s reports, following which a further RCE would be required to continue examination, and so on. The filing of an RCE may also be used to return an allowed case to examination, allowing the filing of amendments after allowance, thus replacing the current practice of requesting withdrawal of the Notice of Allowance. The RCE fee is on the order of $816 CAD and will be adjusted slightly on an annual basis. Conditional Notice of Allowance (CNOA) The new Rules introduce a Conditional Notice of Allowance that would inform the applicant that the application would be allowable but for minor defects that must be addressed along with payment of the final fee. If the Examiner does not consider the application to be allowable following the applicant's response to the CNOA, allowance will be withdrawn, the final fee will be refunded and examination will resume. New PCT Sequence Listing Standard In view of the new PCT “ST.26” sequence listing standard, Canada has brought its sequence listing requirements in line with those of the PCT as of July 1, 2022. Since applications having a PCT filing date prior to this date may utilize the current ST.25 standard or the new ST.26 standard when entering the Canadian national phase, use of the new standard is not imminent for Canadian national phase filings, however new direct (non-PCT) filings in Canada will need to utilize the new standard as of July 1, 2022. Act now! Since the new claim fee and RCE regimes will only apply to applications in which examination is requested on or after October 3, 2022, it will be very advantageous for Applicants to request examination before this date to be “grandfathered” into the current system, allowing such cases to avoid excess claim fees and RCEs throughout examination even after the new Rules come into force. Applicants should thus strongly consider requesting examination by September 30, 2022. To help optimize prosecution strategy for a given case or for any other questions, please do not hesitate to contact a member of our patent team for guidance through the transition.

    Read more
  • 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!

    Read more
  • Doing Business as Usual – Prior User Rights Under Canadian Patent Law

    Prior user rights have long been recognized in Canadian patent law. These rights, which are a defence against patent infringement, are seen as a means of ensuring fairness by allowing a person who has independently manufactured, used or acquired an invention that is subsequently patented to continue using the invention. A revised version of section 56 of the Patent Act, which defines prior user rights and is similar to section 64 of the UK Patents Act, came into force on December 13, 2018. The revised provision applies to an action or proceeding commenced on or after October 29, 2018, involving a patent issued from an application filed on or after October 1, 1989. The pith and substance of prior user rights under the revised provision had never been judicially interpreted until a recent Federal Court decision was handed down in Kobold Corporation v. NCS Multistage Inc. The two corporations involved in the case supply equipment used in the oil and gas industry for hydraulic fracturing. Kobold Corporation (hereinafter Kobold, the plaintiff) alleged that four of NCS Multistage Inc.’s (hereinafter NCS, the defendant) proprietary fracturing tools infringed Canadian Patent No. 2,919,561, and NCS petitioned the Court through a motion for summary judgment to dismiss the infringement action on the basis of prior user rights. In its analysis of section 56 in its current form, the Court considered the English and French versions of the section, legislative history, Canadian jurisprudence on the previous section 56 and the corresponding legislation in the UK. The Court began by pointing out that section 56 of the Patent Act, effective since December 13, 2018, grants broader rights than the former section 56 did, underscoring the three following differences: First, it noted that the previous legislation was limited to granting “a prior user the right to use and sell” a physical product, whereas the current provision “grants a prior user the right to commit an “act” that would have otherwise constituted infringement.” It added that the word “act” must be interpreted in light of section 42 of the Patent Act, which grants exclusive rights to “making, constructing and using the invention and selling it to others to be used,” which includes patented methods. This interpretation may limit the rights of prior users, and the Court gave the example of a prior user who previously manufactured and used a device—they can continue to manufacture and use it, but they cannot rely on a prior use defence under section 56 to begin selling the device, as selling is different from manufacturing or using within the meaning of the Act.   Second, it pointed out that whereas the previous legislation “limited the protection to the sale or use of the [...] physical manifestation of the invention”, section 56 as amended protects the commission of an act “that would have constituted infringement.” Third, it pointed out that the current legislation extends protection to a person who “made serious and effective preparations to commit [...] an act” of infringement prior to the claim date, which was not the case under section 56 in its previous form. The parties had different interpretations of the term “same act” contained in subsection 56(1), particularly as to the degree of similarity required. The Court determined that the word “same” in subsection 56(1) means “identical” with respect to an act, while subsections 56(6) and 56(9) “allow a third party defence of prior use on the less stringent standard of “substantially the same.”” The Court stated that a prior user may “add to or alter” aspects that “do “not [...] infringe the patent”, for example by changing a device’s paint colour, but the prior user may not alter an aspect that relates to the invention’s inventive concept. The Court then set out the factors that must be considered in assessing the defence of prior user rights under subsection 56(1). Verbatim, it stated: First, one must determine whether the acts being performed before and after the claim date are identical [...]. If they are, then there is no need to consider infringement, as subsection 56(1) would always provide a defence to any potential infringement. Second, if the acts are not identical, one must determine whether the acts infringe the patent, and if they do, which claims. If the post-claim acts do not infringe the patent, then there is no “otherwise infringing acts” and therefore no need to rely on subsection 56(1). If the pre-claim acts do not infringe the patent, subsection 56(1) cannot apply. If the post-claim date acts infringe a particular claim of the patent that the pre-claim date acts do not, subsection 56(1) cannot apply. Finally, if the pre- and post-claim date acts are not identical but only infringe the same claims, then one must determine whether the changes relate to the inventive concept of the patent. If they do not, then subsection 56(1) will provide a defence. The Court concluded that a motion for summary judgment is only appropriate in cases where acts committed before and after the claim date are clearly identical, and thus where it is not necessary to “construe the claims [...] or conduct an infringement analysis.” In this case, given that the acts performed by NCS before and after the claim date differed, the Court concluded that a full trial was required to analyze the issue of infringement and the application of subsection 56(1) of the Patent Act.  Conclusion This first detailed analysis of section 56 of the Patent Act as amended in December 2018 has clarified several aspects of a defence against patent infringement based on prior user rights. It will certainly serve as a foundation for future decisions involving this issue. However, the application of subsection 56(1) of the Patent Act was not examined in this motion for summary judgment. We’ll have to wait for a future trial on the issue for more insight on the scope of prior user rights under Canadian law.

    Read more
  • Do you know your open-source licences?

    Do you have the right to copy source code written and developed by someone else? The answer to this question depends on the situation; however, even in the context of open innovation, intellectual property rights will be the starting point for any analysis required to obtain such an answer. In the software industry, open-source licences allow anyone to access the source code of corresponding software, free of charge and with few restrictions. The goal is generally to promote the improvement of this code by encouraging as many people as possible to use it. Linus Torval, the programmer of the Linux kernel (certainly one of the most well-known open-source projects) recently stated that without the open-source approach, his project would probably not have survived.1 However, this approach has legal consequences: Vizio was recently hit with a lawsuit alleging non-compliance with an open-sourceGPL licence used in the SmartCast OS software embedded in some of its televisions. It is being sued by Software Freedom Conservancy (“SFC”), an American non-profit promoting and defending open-source licences. As part of its lawsuit, SFC alleges, among other things, that Vizio was required to distribute the SmartCast OS source code under the above-mentioned open-source GPLlicence, which Vizio failed to do, thereby depriving consumers of their rights2. In Canadian law, section 3 of the Copyright Act3 gives the author the exclusive right to produce or reproduce all or any substantial part of an original work. This principle has been adopted by all signatories of the 1886 Berne Convention, i.e., almost every country in the world. A licence agreement, which may inter alia confer the right to reproduce the work of another person, can take different forms. It also establishes the extent of the rights conferred and the terms and conditions of any permitted use. However, not all open-source licences are equivalent. Many allow creators to attach various conditions to the right to use the code that has been made available. Under these licences, anyone may use the work or software, but subject to the following constraints, depending on the type of licence in effect: Obligation to display: An open-source licence may require disclosure of certain information in the software or in the source code itself, such as the following: The author’s name or pseudonym, or even maintaining the anonymity of the author, depending on their wishes, and/or a citation of the title of the work or software; The user licence of the redistributed open-source work or software; A modification note for each modified file; and A warranty disclaimer. Contribution obligations: Some licences require the sharing of any modifications made to the open-source code, with said modifications being under the same licence conditions. In some cases, this obligation extends to any software that incorporates the open-source code. In other words, code derived from open-source material can itself become open-source. This obligation to contribute can generally be categorized as follows: Any redistribution must be done under the original licence, making the result open-source as well; Any redistribution of the code, modified or not, must be done under the original licence, but other code may be associated or added without being subject to the open-source licence; or Any redistribution is done without any sharing constraints. Ban on commercialization: Some licences prohibit any use for commercial purposes. Apache v2 Level of obligation to contribute upon redistributionAny redistribution of the software, modified or not, or with added components, must be done under the terms of the original licence. Mandatory elements to display Licence of the redistributed open-source software Identification of any changes made to the code Copyright notice Warranty disclaimer Commercial use permittedYes BSD Level of obligation to contribute upon redistributionAny redistribution of the software can be done without any obligation to share. Mandatory elements to display Copyright notice Warranty disclaimer Commercial use permittedYes CC BY-NC 4.0 Level of obligation to contribute upon redistributionAny redistribution of the software can be done without any obligation to share. Mandatory elements to display Licence of the redistributed open-source software Identification of any changes made to the code Copyright notice Warranty disclaimer Commercial use permittedNo CC0 1.0 Level of obligation to contribute upon redistributionAny redistribution of the software can be done without any obligation to share. Mandatory elements to display Licence of the redistributed open-source software Commercial use permittedYes GPLv3 Level of obligation to contribute upon redistributionAny redistribution of the software, modified or not, or with added components, must be done under the terms of the original licence Mandatory elements to display Licence of the redistributed open-source software Identification of any changes made to the code Copyright notice Warranty disclaimer Commercial use permittedYes, but sub-licensing is not allowed LGPLv3 Level of obligation to contribute upon redistributionAny redistribution of the software, modified or not, must be done under the terms of the original licence. New components can be added, but not integrated, under other non-open-source licences Mandatory elements to display Licence of the redistributed open-source software Identification of any changes made to the code Copyright notice Warranty disclaimer Commercial use permittedYes MIT Level of obligation to contribute upon redistributionAny redistribution of the software can be done without any obligation to share. Mandatory elements to display Licence of the redistributed open-source software Copyright notice Warranty disclaimer Commercial use permittedYes It is important to make programming teams aware of the issues that can arise when using modules governed by what are known as “viral licences” (such as the CC BY-NC 4.0 licence) in the design of commercial software. Such software could lose significant value if such modules are incorporated, making it difficult or even impossible to commercialize said software. In the context of open innovation where developers want to share their code, in particular to encourage collaboration, it is important to understand the scope of these different licences. The choice of the appropriate licence must be made based on the project’s objectives. Also, keep in mind that it is not always possible to change the licence used for the distribution of the code once said distribution has commenced. That means the choice of licence can have long-term consequences for any project. David Cassel, Linus Torvalds on Community, Rust and Linux's Longevity, The NewStack, Oct. 1, 2021, online: https://thenewstack.io. See the SFC press release: https://sfconservancy.org/copyleft-compliance/vizio.html. RSC 1985, c. C-42.

    Read more
  • Entrepreneurs and Intellectual Property: Avoid these 13 mistakes to protect yourself (Part 3 of 3)

    In the third and final entry of this three-part article series, we share with you the last set of intellectual property (IP)–related mistakes (mistakes #10 to #13) that we regularly see with startups. We hope you will find it useful for your business. Please be sure to read our first and second entries in this series, where we go over mistakes #1 to #5 and #6 to #9, respectively. Happy reading! Part 3 of 3 Mistake #10:       Assuming that your invention is unpatentable One common mistake we see business owners make is that they assume their technology is not patentable. This frequently applies to computer-related inventions, such as software. Even though there is no outright ban on patenting software in Canada, many inventors are under the impression that software is unpatentable. This is most likely due to the fact that many patent applications for computer-implemented inventions are initially refused because the Patent Office determines that the invention in question is merely a disembodied series of mental steps and/or a mathematical formula (both of which are not considered patentable subject matter). However, it is important to remember that, while certain types of subject matter are not patentable in Canada (e.g., disembodied mental steps and mathematical formulae, as mentioned above), that does not mean that technology involving such unpatentable subject matter (e.g., computer software) is completely void of patentability. Often, it simply means that another aspect of the technology should be the focus of the patent application. For example, with regard to computer-implemented inventions, one strategy to increase the likelihood of patentability is to draft the patent application in such a way so as to emphasize that the computer hardware is essential, or to draft the application in such a way that it is clear that the invention creates an output comprising discernible effects or changes (e.g.: this can be as simple as generating distinct groups in a classification method). It is also worth noting that many inventors are under the mistaken impression that a new piece of technology has to be all but revolutionary in order to be patentable. However, improvements over existing technology are also patentable as long as they are sufficiently new and inventive. Accordingly, it is important to speak to a patent agent to properly determine if and how your invention may be patented. Mistake #11:       Believing that your patent automatically gives you the right to use and/or commercialize your invention One common misconception regarding patents is that they give the owner thereof the right to use and/or commercialize the patented technology without fear of infringing third-party patents. However, what a patent actually does is allow its owner to exclude others from using and/or commercializing their patented technology. It is not a shield against potential infringement of third-party IP rights. For example, if you obtain a patent for a piece of technology you developed, that does not necessarily mean you have the right to use or commercialize that technology. Specifically, if your technology incorporates patented technology owned by another company, then that company can actually prevent you from using or commercializing your own invention. This is an important aspect of “patent protection” that all entrepreneurs should be aware of. Mistake #12:       Not informing yourself about the criteria for recognition as an inventor or owner of an invention, and not training your employees on these criteria Many types of intellectual property disputes can arise within a business. Most of the time, they are the result of misconceptions, such as: An employee believes they are the inventor of an invention, when they are not; An employee believes that as the inventor of an invention, they are necessarily entitled to consideration (monetary or otherwise); the invention belongs to them rather than to the company; they are free to use the invention, for example upon leaving the company to become a competitor; or An employer believes that their company can use the specific results of a researcher’s work obtained from a previous job. It’s easy to imagine how messy such issues can get! An ounce of prevention is certainly worth a pound of cure. Get informed! Also, clarify these issues with new employees as soon as you hire them, and set down in writing who will own the rights to intellectual property developed during the course of employment. A quick training session before such problems arise can set the record straight and avoid conflicts based on unrealistic expectations. Mistake #13:       Not having an intellectual property protection strategy After reading this three-part article, we hope you now have a better understanding of the importance of developing an intellectual property strategy for your company. While such strategies can be very complicated, we have provided three broad questions that you should consider at all times (not just when starting out).  What intellectual property is my company using? This first question tasks you with identifying intellectual property that your company uses. This would include any technology that you are using or selling; any brand names/logos; and any works you are currently using (e.g., logos, slogans, website layouts, website texts, pictures, brochures or computer programs). Is there a risk that I am infringing a third party’s IP? Once you have identified the above intellectual property, you should ask yourself if your activities might infringe a third party’s IP rights. Obtaining a response may involve the following: Hiring a patent agent to perform a freedom to operate search for any technology you plan on using. Hiring a lawyer specialized in IP to perform a trademark search and opinion for any brand names/logos you use, as well as to negotiate and prepare an assignment of IP rights. How can I expand my own IP portfolio? This question involves determining, for each piece of IP you have identified, if and how it can be protected. This can include asking yourself the following additional questions: Is any of the technology I use or commercialize worth protecting? If so, should I file a patent application or keep the technology a trade secret? In which countries do I want IP protection? Are any of my company’s brand names or logos worth protecting by filing a trademark application? What’s important is not necessarily that you protect each and every piece of intellectual property your company owns, but that you have properly evaluated your company’s IP and have come up with an effective strategy that suits your business. In order to properly optimize your company’s IP portfolio, we naturally recommend speaking with your IP professional, whether it be a patent agent, a trademark agent, or a lawyer. Conclusion Lavery’s intellectual property team would be happy to help you with any questions you may have regarding the above or any other IP issues. Why don’t you take a look at our Go Inc. start-up program? It aims to provide you with the legal tools you need as an entrepreneur so you can start your company on the right foot. Click on the following links to read the two previous parts. Part 1 | Part 2

    Read more
  • 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.

    Read more
  • 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.

    Read more
  • Entrepreneurs and Intellectual Property: Avoid These Thirteen Mistakes to Protect Yourself (Part 2 of 3)

    In the second entry of this three-part article series, we share with you the next set of intellectual property (IP)–related mistakes (mistakes #6 to #9) that we regularly see with startups. We hope you will find it useful for your business. Please be sure to read our first entry in this series, where we go over mistakes #1 to #5. Happy reading! Part 2 of 3: Mistakes concerning trademarks, industrial designs, copyrights, and trade secrets Mistake #6: Launching your product on the market without having verified the availability of your trademark Choosing a trademark can be a long and expensive process. People sometimes focus on the attractive qualities of a trademark, forgetting that its primary function is to distinguish a company’s products or services from those of others. To properly fulfil this function, the trademark must not be confusing with other trademarks, trade names, and domain names. In order to avoid conflicts with existing rights, an availability search should be conducted prior to a trademark’s adoption and the launch of a new product, service, or business. Furthermore, it may not be possible to register a trademark if it doesn’t have certain necessary intrinsic qualities, and a trademark may not be usable if it conflicts with the rights of third parties. A search will make it possible to determine where your desired trademark stands in terms of these two aspects; if necessary, a different mark may need to be adopted. Conducting a pre-adoption trademark search may prevent you from having to change trademarks after sales have begun or after the marketing development of your products or services is underway. Redesigning your advertising campaign; modifying your documentation, website, and packaging; and developing a new marketing strategy to transfer and retain the goodwill surrounding your initial trademark will be an expensive task, taking up time that could have been invested elsewhere. Such a process also carries the risk of tarnishing your reputation or losing your goodwill. Mistake #7: Not having your software or graphic designer sign a copyright assignment Many people think that a copyright is intended to protect a work with exceptional artistic qualities. However, such thinking is erroneous. As long as a text, drawing, graphic design or computer program is a creation that required a certain amount of effort and is not a copy of an existing work, it constitutes a “work” and is automatically protected by copyright. As a general rule, in Canada, the author is the first copyright owner; thus, just because the work was created in exchange for remuneration doesn’t mean that its copyright was transferred. For a startup business owner to ensure that they own a copyright, they should ask the artist or author to sign a written transfer of copyrights, thereby ensuring that the business can publish and use the work as it sees fit. It is also important to have the author of a work sign a waiver of moral rights or to outline the terms and conditions that will apply to the work’s authorship and integrity. If these steps are omitted, you’ll be limited in the use of such works. They won’t be part of your assets and will therefore not increase the value of your portfolio. In addition, you’ll be dependent on the consent of the actual holders of the rights to commence actions for infringement, should that ever be necessary. Mistake #8: Not having your employees, officers, and contractors sign confidentiality agreements (before entering into a business relationship) The sooner the better! Your company should see to having an agreement intended to preserve the confidentiality of its information signed by all those whom it mandates to perform work that is significant for its development, including its employees. The type of information that can be protected is virtually unlimited; at a minimum, it includes information related to R&D, market studies, prototypes, ongoing negotiations, marketing research of any kind, and lists of target customers. Ideally, in an employer-employee relationship, when an employee or officer leaves, a company should make sure to remind them of the confidentiality obligations that will continue to apply despite the end of the relationship. Applying these principles reduces the risk that an employee or partner will publicly share or independently use your strategic information at your company’s expense. Mistake #9: Not protecting your original products’ shapes and ornamentation within the prescribed time limit Many are unaware of the benefits of protecting an object’s shape, form, and ornamentation through the Industrial Design Act, or they learn of such benefits too late. In Canada, such protection has two key requirements: The industrial design must not have been published more than one year before the date on which an application for registration is filed; and The protection must be acquired by registration to exist. This type of protection is more effective than one might think and should not be overlooked. For example, a search of the industrial design register will reveal how many industrial designs tech giants have obtained. Some industrial designs have even been the subject of high-profile disputes, including one between Apple and Samsung over the shape of tablets. Apple Inc. uses such protection to prevent the presence of competing products that copy its designs on the market. As an example, in Canada, the shape of the headphones shown below was protected in 2021 and the shape of the phone shown below was protected in late 2020. For more detail on the protection of each of these articles, see Registration 190073 and Registration 188401. Conclusion Lavery’s intellectual property team would be happy to help you with any questions you may have regarding the above or any other IP issues. Why don’t you take a look at our Go Inc. start-up program? It aims to provide you with the legal tools you need as an entrepreneur so you can start your company on the right foot! Click on the following links to read the two previous parts. Part 1 | Part 3

    Read more
  • Studios and designers: How to protect the intellectual property of your video games?

    Behind every video game, there is intellectual property (IP) which is worth protecting to optimize monetisation of the game. As discussed in Studios and designers: Are you sure that you own the intellectual property rights to your video games, the first step for studios and designers is to make sure that they own all IP rights on the video game. The next step is to identify what type of IP protection is available between trademarks, copyrights and patents and then put in place an IP strategy to protect these assets in Canada and abroad. Below is a summary of the types of protection to consider to fully protect a video game. Trademarks The name of a video game is a valuable asset, with a potential to become internationally famous. Just think about Call of Duty, Fortnite, Minecraft and Assassin’s Creed or, for the more nostalgic, classic games such as Super Mario. Pokémon and Pacman. Trademarks have this power to evoke unique and captivating experience in the gaming world. In this industry, experience shows that a video game may become an instant international success, since it is an online market with powerful gaming influencers. For this reason, being proactive with trademark protection is key. What does it mean? First, clearance searches should be made as soon as you decide on the name of your game, in the most important markets where you anticipate sales. The idea here is to make sure that your brand is not conflicting with other marks so that you may use it and register it in your main market. Once the mark is cleared, you may then proceed with filing. Here again, the earlier the better as trademark protection is, in most countries, granted to the first-to-file. Filing before your project becomes public is therefore strongly recommend. As for the scope of the application, it should of course cover the game itself but also potential merchandising goods, either because it is part of the business plan to monetize the brand, or as a defensive strategy. Apart from the main brand, other aspects of the game may qualify as trademarks and be protectable. For instance, a sound or sequence of sounds associated with starting a console or a game could potentially be registered as trademarks. The names and image of characters in a game may also be protected, especially for merchandising goods.  In short, for studios and designers involved in the video game industry, trademark registration is key to getting the most value out of a video game. This begins with a well-orchestrated protection strategy to minimize risk of conflicts and to build a solid and valuable brand. Copyrights A video game is a mix of literary, artistic and musical works which are protected by copyright, including computer program behind a game’s architecture is also explicitly protected by law.1 The protection offered by the Copyright Act (“CA”) applies as soon as a work is created, without the need for registration. This protection extends to the 176 member countries of the Berne Convention. Although the protection of a work by copyright is automatic, copyright owners may register their right with the Canadian Intellectual Property Office (“CIPO”) at any time. In particular, registration makes it easier to prove ownership of the right in the event of a dispute in that it creates the presumption that the person named in the registration owns the copyright. Copyright protection applies to the entirety of the game, as well as to its various components. Any infringement of these rights by a third party may give rise to a copyright infringement claim if the work or a substantial part of it is copied, unless a defense such as fair dealing is applicable. In this respect, the following activities may qualify as fair dealing: research and private study, education, parody as well as criticism or review and news reporting. Is video game live streaming copyright infringement? In recent years, the phenomenon of video game live streaming has really taken off. Video gamers film or record their computer screens and broadcast them on platforms such as YouTube and Twitch to show their characters, strategies and tactics for completing certain levels of a game. Some live streaming video gamers, who make this their living, have achieved celebrity status and have thousands of followers. Is live streaming a video game without express permission copyright infringement? The courts have yet to rule on whether live streaming games online constitutes a copyright infringement to communicate the work to the public by telecommunication under section 3(1)(f) of the Act. Faced with this widely popular trend, some studios accept this practice because positive reviews from such gamers can boost game sales. Others criticize the fact that they profit from video games without copyright owners receiving any compensation. Chances are that live streaming is not the highest priority of the video industry who is more concerned by the illegal downloads and counterfeits, which may explain why the courts have not yet had the opportunity to rule on video game live streaming. Patents Patents protect the functional aspects of an invention. The owner of a patent may prevent anyone from making, using or commercializing the patented innovation from the date the patent is obtained. Three aspects are taken into consideration before granting a patent:2 Novelty – The invention must be different or be innovative compared to anything that has been done before, anywhere in the world. Utility – The invention must have a useful function and economic value. Inventiveness – The invention must not be obvious to a person skilled in the field. In Canada, it is not possible to patent an abstract idea, but it is possible to patent the physical embodiment of that idea, provided that it meets the criteria of novelty, utility and inventiveness. Canadian patents in the video game industry Patents obtained in the video game industry mainly relate to consoles, controllers, headsets and other gaming accessories. The video game industry has proved to be innovative with the development of inventions that are both fun and useful. In 2012, Nike patented an invention to encourage physical activity among video game players.3 The patent describes a device placed in a gamer’s shoe when the gamer is physically active and connected to a video game. The energy spent by the gamer gives energy to the virtual character. Once the character’s energy is depleted, the gamer must engage in physical activity again. Are game play mechanics patentable? Certain aspects of a video game are less easy to patent, in particular the game play mechanics, which are a distinctive aspect from the standpoint of gamers when choosing a video game. The game play mechanics consists in the virtual experience of a video game: character movement, the interaction of the player with the game, the way the player moves through the levels of the game, etc. Unique and well-developed game play mechanics can be a great asset for a developer wanting to market new versions of a game. Gamers will go back to a familiar game to get immersed in a new experience. This makes patenting such an experience appealing for a studio. Given that game play mechanics are developed using computer code, it might seem that even if the criteria of novelty, utility and inventiveness were met, this type of invention could not be physically embodied and thus could not be patented. To be patented, game play mechanics must have a physical component in addition to the code itself. Consider a patent describing a video game in which a gamer’s heartbeat is integrated into the game,4 which is a good illustration of physical embodiment. Such transposition of a gamer’s vital signs is done physically through a heart monitor worn by the gamer and connected to the game. As all these aspects were described in the invention, this type of inventive game play mechanics was considered patentable. In the United States, the criteria for patents are similar to those in Canada, meaning that abstract game play mechanics would have to be linked to a physical aspect in order to be patentable.   Conclusion Implementing an IP protection strategy prior to launching a video game can prevent conflicts, increase the value of assets and strongly position a company in the market to maximize profits. Copyright Act, section 2. “A guide to patents,” Canadian Intellectual Property Office, Government of Canada, 2020-02-24. Patent No. 2,596,041, issued February 9, 2006. Patent No. 2,208,932, issued June 26, 1997.

    Read more
  • The Doctrine of File Wrapper Estoppel in Canada: The Court of Appeal Hands Down its Decision

    In December 2018, section 53.1 was added to the Patent Act (the “Act”) allowing reference to be made to communications exchanged with the Canadian Intellectual Property Office (“CIPO”) during the prosecution of an application with respect “[...]to the construction of a claim.” This concept is more commonly known as “file wrapper estoppel.” Salient points Expert evidence regarding how to construe the claims of a patent is not required in order to determine whether infringement has occurred. In a motion for summary judgment, the responding party must put its best foot forward and cannot simply contest the motion on the grounds that the moving party’s evidence is insufficient. File wrapper estoppel applies when rebutting a representation made by the patentee; however, only communications with CIPO are accepted, not those with a foreign patent office. There are several substantive issues yet to be resolved with respect to the file wrapper estoppel doctrine in Canada. In September of 2019, the Federal Court rendered its first decision concerning section 53.1 of the Act in Canmar Foods Ltd v. TA Foods Ltd.1 The decision was appealed, and, on January 20, 2021, the Federal Court of Appeal rendered its first judgment on the application of said section, and thus on the file wrapper estoppel doctrine in Canada.2 Background Canmar Foods Ltd. (“Canmar”) holds a patent on a method for roasting seeds used to produce vegetable oil (the “Patent”). The method claimed in the Patent consists of four steps, including heating the oil seed to a certain temperature in a “stream of air” and transferring the heated oil seed into an “insulated or partially insulated roasting chamber or tower.”  During the prosecution of the Patent application, the steps of heating in a “stream of air” and transferring the seeds in the manner mentioned above was added to the Patent claims by amendment in order to limit the scope of the claims. During the prosecution of the Patent application in Canada, Canmar referred to amendments that were “substantially the same” as those made during prosecution of the corresponding U.S. patent application in response to novelty and obviousness objections that had been raised by the examiner. After the Patent was obtained, Canmar sued TA Foods Ltd. (“TA”) for infringement thereof. TA filed a motion for summary judgment on the grounds that the method it used did not include either the step of heating the seeds in a “stream of air” or the step of transferring them into an “insulated or partially insulated roasting chamber or tower.” In support of the motion for summary judgment, the parties both filed affidavits. However, no expert evidence was filed regarding the construction of the claims of the Patent by a person of ordinary skill in the art, a “POSITA.” The Federal Court found that: Expert evidence regarding how to construe the claims of a patent is not required in order to determine whether infringement has occurred. In a motion for summary judgment, the responding party must put its best foot forward and cannot simply contest the motion on the grounds that the moving party’s evidence is insufficient. Section 53.1 of the Act applies because, in contesting the motion for summary judgment, Canmar advanced a construction of the claims that would have the effect of nullifying the amendments made during the prosecution of the patent application. Exceptionally, the prosecution history of the U.S. patent could be relied upon because Canmar made reference thereto during the prosecution of the application for the Canadian Patent. In light of the prosecution history of the U.S. patent, the steps of heating the seeds in a “stream of air” and transferring the heated oil seed into an “insulated or partially insulated roasting chamber or tower” were found to be essential elements of the claims of the Canmar Patent. Even without reference to the prosecution history of the U.S. patent, the Court would have found that these elements were essential. The Court of Appeal upheld the Federal Court’s decision, but pointed out that the judge erred in law by referring to the prosecution history of the U.S. patent. Thus, the Court of Appeal confirmed that the Federal Court had jurisdiction to construe the claims of the Patent and that expert evidence regarding a POSITA’s construction was not necessary in this case. The Court of Appeal nevertheless issued the following warning: Of course, the judge who dispenses with expert evidence will do that at his or her own peril, and it is not a practice that should be lightly countenanced. Claims must always be construed in an informed and purposive way, and it is only in the clearest of cases that judges should feel confident enough to construe the claims of a patent as they would be understood by a skilled person, without the help of any expert evidence. The Court of Appeal also criticized Canmar for failing to produce reply evidence with respect to the infringement. Specifically, the Court states that Canmar should have put its best foot forward, for example by submitting a claim construction that could lead even theoretically to a finding of infringement. In the absence of such evidence, the judge committed no palpable and overriding error in granting the motion for summary judgment.  However, the Court of Appeal found that by referring to the prosecution history of the U.S. patent, the Federal Court judge erred in law.  After a detailed review of American and British case law on file wrapper estoppel, the Federal Court of Appeal stated: I agree with the appellant that courts should be wary to extend the detailed language of section 53.1, which is specific about the communications being limited to those with the Canadian Patent Office. The legislation is carefully tailored, and it would go against statutory interpretation principles to try to go beyond its original intent. There are also public policy reasons for treading carefully in allowing extrinsic evidence. Opening the door to allowing foreign patent prosecution history into the analysis might lead to overly contentious and expensive litigation. It should be noted that the Court of Appeal then qualified the above statement as follows: Yet, whether the doctrine of incorporation by reference should formally be treated as an exception to the general prohibition on foreign prosecution files, is a question best left for another day. (…) There is nothing in the prosecution file of the ’376 Patent that identifies with any detailed particularity what specific “written communication” from the US prosecution history is incorporated and where that written communication can be found. It is virtually certain that if Canmar had amended its claims and filed with the Canadian patent office the same response that it filed with the U.S. patent office, that response could have been invoked under section 53.1 of the Act. Nevertheless, in such a case, the response in question would unambiguously form part of the Canadian file. On the other hand, if, instead of filing the U.S. response, the applicant had only referred to it in express terms, would section 53.1 of the Act have applied? This is a question that another court will likely have to answer. The Court of Appeal nonetheless dismissed the appeal because the trial judge had found that even without reference to the prosecution history of the U.S. patent, the Federal Court would have concluded that the elements in question were essential. The Court of Appeal found no manifestly unreasonable error in this part of the Federal Court’s judgment. Nor did the Court of Appeal rule on the question as to whether patent prosecution history can be raised solely to rebut an inconsistent construction made by the patentee, or whether it can be referred to whenever claim construction is called into question: The emphasis, therefore, is not so much on the rebuttal of a particular representation, but rather on the interpretive process itself. As the Court stated in Bauer Hockey, “there is no need to identify a particular representation and rebuttal every time a reference is made to the prosecution history. It is simply integrated in the interpretive process” (at para. 65). The resolution of this dispute is best left for another day, as the facts of this case clearly meet the more restricted interpretation of section 53.1 and do not require a broader reading of that section. More germane to the resolution of the case at bar is whether this new provision allows for the consideration of foreign prosecution files. This issue is more than just a theoretical discussion point. In fact, in a recent decision, the Federal Court3 found that section 53.1 was not applicable since the file wrapper was not raised to rebut the patentee’s claim construction. This is because the patent owner had left it to its exclusive licensee to allege infringement.  Therefore, although the patentee was eventually made a party to the proceedings (only because invalidity of the patent had been alleged), the claim construction that the defendant wanted to rebut was not made by the patentee, but rather by its exclusive licensee. Thus, unlike Judge Manson in Canmar, Judge Barne in Allergan adopted a much more restrictive interpretation of section 53.1 of the Act.  This debate regarding the file wrapper estoppel doctrine will continue and will most likely go all the way to the Supreme Court of Canada. Stay tuned! Canmar Foods Ltd. v. TA Foods Ltd. 2019 FC 1233 Canmar Foods Ltd. v. TA Foods Ltd. 2021 FCA 7 Allergan Inc. v. Sandoz Canada Inc. et al. 2020 FC 1189.

    Read more
  • 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!

    Read more
1 2 3