Supreme Court of Canada eliminates Promise of Patent Doctrine

In an exciting decision released today, the Supreme Court of Canada eliminates the Promise Doctrine in Canadian patent law, which was established by the Federal Courts of Canada some years ago.

Under the Promise Doctrine, patents could be invalidated if they did not live up to all of the promises made in the patent, such as to a particular utility or advantage.  To the delight of many patent holders, the Supreme Court finds that a single use related to the nature of the subject matter is sufficient, and that utility must be established by either demonstration or sound prediction as of the filing date.  The Court also confirms that a patent holder is not required to disclose the utility of the invention.  For the full decision: https://scc-csc.lexum.com/scc-csc/scc-csc/en/item/16713/index.do

 

Features of Colour! Now part of a Combination of Features Protectable as a Canadian Industrial Design

We are excited to report that the Industrial Design Office now takes the position that colour may form part of a combination of features that constitute a design as defined in section 2 of the Industrial Design Act.  However, colour as the sole design feature is not considered to fall within the definition of a design.

The Canadian Intellectual Property Office (CIPO) also announced changes to five (5) other industrial design office practices.

The six (6) practice changes are related to:

  1. applications for protection of computer-generated animated designs
  2. colour as a registerable feature of an industrial design
  3. time limits to respond to office actions 
  4. the search to assess the originality of an application where there is a priority claim
  5. the issuance of notices of possible refusal
  6. delaying the registration of an application

A fact sheet providing an overview of the changes is also available.

Canada Ratifies the International Convention for the Protection of New Varieties of Plants

Canada has ratified the International Convention for the Protection of New Varieties of Plants. The treaty will come into force on July 19, 2015. Canada previously amended the Plant Breeders’ Rights (PBR) Act via Bill C-18, which came into force in February 2015, to bring the legislation in line with the Convention.

Under the PBR Act, in order to obtain exclusive rights to a plant variety, a plant breeder must invent a plant that is: new, distinct, uniform and stable. The breeder’s right to exclusivity will extend for 20 years, or 25 years in the case of trees and vines. If exclusive rights are granted, the rights holder may authorize a third party to exercise those rights; however, use of the protected material for private and non-commercial purposes, experimental purposes, or for the purpose of breeding new plant varieties does not constitute infringement. In addition, the amendments legislatively entrench the farmer’s privilege, a previously implicit restriction to plant breeder’s rights, which allows farmers to store and use their harvested material for the subsequent propagation of the plant variety.

The International Convention for the Protection of New Varieties of Plants can be found here.

For more information regarding the impacts of the International Convention for the Protection of New Varieties of Plants, on Canadians, click here.

By Alexandra Lyn

Patenting Medical Diagnostic Methods in Canada

CIPO has released new Guidelines for analyzing the patentability of Medical Diagnostic Method Claims.

As with general Canadian practice, Medical Diagnostic Method Claims must be construed in accordance with the practice of purposive claim construction. Namely, the claims must solve the problem described by the inventors according to the  essential elements identified in the Description.

Specifically regarding Medical Diagnostic Methods, the Guidelines identify two broad problem categories: (1) Data Acquisition Problems and (2) Data Analysis Problems. The Guidelines conclude that:

  • Data Acquisition Problems constitute patentable subject matter because the essential elements described include technical matter beyond the Common General Knowledge of the skilled artisan; however,
  • Data Analysis Problems do not constitute patentable subject matter because the essential elements are often disembodied (e.g., relate to mental analysis and/or intellectual significance of the data), and are therefore non-compliant with Section 2 of the Patent Act.

Should you have any questions regarding medical diagnostic method claims, please feel free to contact one of our professionals.

For further information, please see the Practice Notice at:

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03945.html

Prepared by Leah Labib

CIPO Will Accept Applications with NICE Classifications in Fall 2015

CIPO has issued a news release indicating that it will begin accepting trademark applications filed with their goods and services grouped and classed according to the Nice Classification later this year.  This international classification standard  was established by the Nice Agreement and is administered by the World Intellectual Property Organization (WIPO).

It is not clear whether this new protocol is voluntary – in other words, the Office has not indicated whether objections will be made if goods and services are not grouped into Nice Classifications, or if the Classifications are incorrect.  Moreover, there is no word from the Office yet as to whether there will be additional filing fees required on a per class basis.

The Office has indicated that it will provide online tools to assist with the classification of goods and services, including a redesigned Goods and Services Manual that will assist in identifying the correct class, and improved search functionality that will enable users to search for marks in a particular class of goods and services.

Canadian Competition Bureau Releases Draft IP Enforcement Guidelines

The Competition Bureau has released a draft version of its Intellectual Property Enforcement Guidelines that outlines how the Competition Bureau intends to approach the interface between competition and IP law.

 

There are two broad categories in which the Competition Bureau will determine whether conduct involving IP raises an issue under the Competition Act. The first pertains to agreements or arrangements between independent entities that hinder the competitiveness of the marketplace. The second pertains to situations where a dominant entity exercises its IP rights in a manner that prevents others from competing in the marketplace. The latter is only applicable in certain circumstances, because merely exercising IP rights rarely constitutes anti-competitive behaviour.

 

For further information, please contact our office.

 

Katie Wei and Alexandra Lyn

Privilege for Patent & Trade-mark Agents and Extensions of Time at CIPO for Unforseen Circumstances

By Katie Wei and Alexandra Lyn

Significant changes will be introduced to Canada’s laws on intellectual property as Bill C-59 received Royal Assent on June 23, 2015.

Privileged Communications

Client communications with registered Canadian patent and trade-mark agents will be privileged and confidential under the new legislation. This means that communications will be protected from forced disclosure in legal proceedings as long as the communication is (a) intended to be confidential, and (b) made in order to give or receive advice relating to the protection of inventions or trade-marks.

Communications between clients and foreign agents will also be privileged, provided that the communication is privileged under the laws of the foreign jurisdiction and the criteria above are met. These provisions will come into force on June 23, 2016; but will apply retroactively, as long as the communication remains confidential and are not subject to litigation before June 23, 2016.

Correction of Errors and Extension of Time Limits

The new legislation also provides for corrections to obvious errors in patent or industrial design documents, as well as extensions of time limits due to unforeseen circumstances (e.g. floods or ice storms) in patent, trade-mark, or industrial design documents. These provisions will likely come into force at a later date.

For more information, please contact our office.

To Renew or Not Renew – Has CIPO Answered the Question?

Bill C-31, which is expected to come into force in late 2015 or early 2016, will reduce the Canadian trademark registration period from 15 years to 10 years.  As a result, many trademark owners have opted to renew their registrations early in order to take advantage of the current 15 year registration period.

CIPO  has recently announced that the following policy will be implemented for dealing with renewals during the period prior to the implementation of Bill C-31:  registrations with a renewal deadline that falls before the amendments come into force will be given a 15 year renewal period; registrations with a renewal deadline that falls after the amendments come into force will be given a 10 year renewal period.  Seems simple enough.

However, the Office has not addressed what will happen to those registrations that have renewal deadlines that fall after the amendments come into force, but that have already been renewed under the current practice (which permits renewal of a mark well in advance of the deadline).  In those cases,  the Office has already issued a renewal certificate with a 15 year term.  Will the Office revoke the renewal certificate, and issue a new one with a 10 year term?  This will create a heavy administrative burden on the Office, as well as a great deal of uncertainty for trademark owners.

In summary, if you are a trademark owner and your registration period expires beyond 2016, be aware that even if you process an early renewal of your registration, the Office may shorten your registration period to 10 years, despite having issued a renewal certificate for a 15 year period.  If your registration period expires in 2015 or 2016, then it is worthwhile to seek early renewal in the hopes the implementation of Bill C-31 will be delayed and that you will be able to take advantage of the extended 15 year period that is currently available.

For further information, please contact Paula Clancy.

CIPO Publishes Modernizing IP Community Report for Consultation

Last year CIPO (in conjunction with IPIC, FICPI and AIPPI) launched the “Modernizing the IP Community” project, in which Paula Clancy was invited to participate.  Three working groups were established to examine and make recommendations on the following issues:

  • improving the maintenance and oversight of the register/list of patent and trademark agents;
  • improving the qualification and maintenance of patent and trademark agents on the register/list to ensure only the most prepared candidates write the qualifying exams and that successful agents continue to update their skills throughout their careers; and
  • creating a values and ethics framework for IP agents to support the IP profession and ensure the highest value of service to innovators and businesses.

The final report containing the recommendations of the working groups has been published and a consultation period has begun.  CIPO will accept commentaries on the final report until December 9, 2014.

The 11 recommendations put forth in the report are as follows (Source: Summary Overview published on the CIPO site):

  1. For both patents and trademarks, a public, comprehensive list of agents and firms should be published with biographical information including name, address, phone number, email, link to agent/firm website, and year of agent registration. The lists should be fully searchable by the public and easy to find on CIPO’s website.
  2. Agents should be capable of and responsible for keeping their personal contact information up-to-date on the lists.
  3. A comprehensive agent database should be published that includes all registered agents on the lists as well as those agents that have been temporarily suspended or permanently removed from the lists.
  4. Eligibility to write the substantive agent qualification papers should require a “pre-screening” part of the examination that tests core knowledge so as to ensure that candidates have sufficient knowledge to proceed to the substantive papers.
  5. To improve administrative efficiencies and promote candidate preparedness, while ensuring qualified agents have passed current exams, limits should be placed on the time and/or number of attempts allowed to pass the exams, and exam fees should increase with the number of attempts.
  6. The scope of agent qualification exams should be expanded to include
    1. relevant aspects of foreign IP law and practice and
    2. values and ethics (conditional on the adoption of a code of conduct).
  1. A continuing professional development (CPD) requirement should be implemented as a condition to remain on the register of patent agents and the list of trademark agents.
  2. A single body (the CPD administrator) should be responsible for both the administration of the CPD requirement and monitoring agent compliance.
  3. There should be consequences to non-compliance with the CPD requirement, culminating in suspension or removal from the register of patent agents or list of trademark agents.
  4. There should be a requirement for all registered agents on the lists to abide by a code of conduct. The code should be modeled after the IPIC Draft Code of Conduct, which is aligned with the Federation of Law Societies Model Code of Professional Conduct.
  5. A values and ethics framework should be created, comprising members of CIPO and the IP profession, as appropriate, tasked with the following functions in the disciplinary process:
    1. complaint-receipt function;
    2. review function;
    3. investigative function; and,
    4. tribunal (with an additional member from the public).

If you have any comments with respect to the recommendations put forth, please submit them to CIPO prior to December 9, 2014.  Submissions may be made directly on the CIPO at OPIC-CIPO.consultations@ic.gc.ca, by fax at 819-997-5052, or by regular mail to the following address:

Canadian Intellectual Property Office
Policy, Planning, International and Research Office
50 Victoria Street
Place du Portage II
Gatineau, QC K1A 0C9
Attention: Konstantinos Georgaras, Director of Policy, Planning, International Affairs and Research Office

FEDERAL COURT OF APPEAL RELEASES AMAZON.COM DECISION

The Federal Court of Appeal (FCA) largely approved Justice Phelan’s reasons in the lower court.  “I agree that no Canadian jurisprudence determines conclusively that a business method cannot be patentable subject matter.”  However, the FCA critized Justice Phelan’s “practical embodiment or practical application” test.

The FCA allowed Amazon.com’s appeal from the Commission and requires the Commissioner to re-examine the patent application on an expedited basis in accordance with its reasons.

Since its release on Friday, this decision has been criticized because the FCA appears to have abdicated its responsibility to decide the law on the case before it.  Instead, the FCA has passed that responsibility onto the Commissioner to formulate a decision without any clear guidance on the law.

Please follow the link for a copy of the decision: 2011-11 Amazon.com Federal Court of Appeal Decision