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

 

Quebec and Saskatchewan to legislate Patent Box Incentives

Quebec and Saskatchewan are the first provinces in Canada to announce fiscal incentives for companies commercializing intellectual property. On March 17, 2016, Quebec’s Minister of Finance announced a “patent box” that would lower tax rates on revenue attributable to patents for inventions developed in Quebec as part of the provincial budget coming into effect on January 1, 2017. Earlier in the month, on March 11, Saskatchewan’s Premier announced that, if re-elected, a similar patent box incentive will be implemented in this province.

Prepared By Leah Labib, Associate

Patents Granted by Country at the USPTO: Canada is 6th in the world!

Canada should be proud of its recent record at the US Patent and Trademark Office in terms of granted patents.  Among foreign country filers, Canadian resident companies/individuals placed 6th in the total number of US patents being granted between 2001 to 2014.  In fact, between 2007 and 2014, the number of US patents granted to Canadians has more than doubled!  Innovation is alive in Canada, and our innovators are succeeding at protecting their rights in one of the most important markets.

Please visit link for a full listing of countries:  http://www.uspto.gov/web/offices/ac/ido/oeip/taf/cst_utl.htm

 

 

 

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

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.

Update on Patenting Methods of Medical Treatment in Canada

By Leah Labib and Natalie Raffoul

 

Some good news regarding methods of medical treatment and dosage-related Claims in Canada.

 

While patent claims directed to methods of medical treatment remain unpatentable in Canada, claims to medical uses are generally permitted. With regard to the permissible types of use claims, the Canadian Intellectual Property Office (CIPO) recently released revised Examiner guidelines that broaden the scope of patentable subject matter for medical use claims. The Practice Notice – PN 2015-01 – suggests that claimed dosages may be patentable. Specifically, claims directed towards “a fixed dosage, a fixed dosage regimen, a patient sub-population or to a particular administration site” are now considered patentable as they do not “[limit] a physician’s professional skill or judgement”.

 

The new guidelines also suggest that claims “instructing” a medical professional on “‘what’ to use” to treat a patient may be patentable. However, claims “instructing medical professionals on “how” to treat a patient are considered methods of medical treatment and are therefore not considered patentable.

 

Should you have any questions regarding medical use 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/wr03916.html

Do abstract ideas become patentable subject matter when implemented by a computer?

By J. Duffy, N. Raffoul, A. Brion

On June 19, 2014, the Supreme Court of the United States decided the matter of Alice Corp. v. CLS Bank International. This case determined the validity of Alice’s patent claims, which pertained to a computer-implemented scheme for mitigating “settlement risk” by using a third-party intermediary.

The Court essentially rehashed a two step framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patentable applications of those concepts.  In the first step, the Court likened the Alice claims directed to an “intermediated settlement” to those in the Court’s Bilski decision that dealt with “risk hedging”.  In doing so, the Court found that Alice’s claims concerned an abstract idea.  In the second step, the Supreme Court found that the computer functions in the claims were “well-understood, routine, conventional activities previously known to the industry” and that each step did no more than require a generic computer to perform generic computer functions. The Court additionally found that viewing these separate components as “an ordered combination” of steps did not change the results of the analysis. Therefore, the Court decided the claims were invalid.

While this case will undoubtedly receive a lot of coverage in the world of patents, it is hardly a surprising one.  Alice merely reflects the recent trajectory of US patent law regarding computer-implemented business methods:  when confronted with questionable claims to a computer implemented business method, it is safer to have something more than the business method for patentability.

On a practical note, the case highlights the need to make sure that the invention (especially the invention covered in the claims!) is something more than using a computer to implement a known business method.  Interestingly enough, the outcome of this case should be familiar to Canadians, as it articulates a well-established Canadian principle for patenting software: merely using a computer is not enough to transform the unpatentable into the patentable.

For the full decision: http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf

 

 

Our firm and partners recognized as a leading patent firm and as leading practitioners in Canada

Clancy P.C. + Brion Raffoul has been recognized as one of the leading patent firms in Canada by IAM Patent 1000: The World’s Leading Recommended Firms and Patent Practitioners 2014 – a unique guide that identifies the top patent firms and practitioners in key jurisdictions around the globe.   Along with our firm, Art Brion and Natalie Raffoul have been individually recognized as leading patent practitioners in Canada.

Please find below the firm write-up and a link to the detailed ranking:

Making its inaugural appearance in the IAM Patent 1000 this year, Clancy PC + Brion Raffoul wins ringing endorsements from peers and clients alike. “The responsibility and personal engagement of its partners are unsurpassed – they are outstanding. Their qualification, experience and know-how are second to none.” One co-counsel reports: “Its partners are very responsive, which is always the most important aspect. But they also provide good insight and analysis – they really know which arguments fly under Canadian law.” The team is comprised of Art Brion and Natalie Raffoul . Together, “they are instrumental in finding the best outcome for the business. They help in-house counsel make informed decisions which lead to the best possible outcome for the company”.

http://www.iam-magazine.com/patent1000/rankings/detail.aspx?g=5b9d16bc-4517-4b5d-8584-71fa675b96bf

Canadian Federal Court decides that business methods are patentable subject matter in Canada

AMAZON.COM, INC. (Appellant)

and

THE ATTORNEY GENERAL OF CANADA, and
THE COMMISSIONER OF PATENTS (Respondents)

Yesterday, the Federal Court of Canada finally ruled on an appeal of a decision by the Commissioner of Patents to deny the Appellant’s patent for a “business method”, having found that it was not patentable subject matter under s. 2 of the Patent Act.

The Federal Court concluded that a “business method” can be patented in appropriate circumstances.

As long as a claim is not directed to an abstract idea or scheme, but rather has a practical application or embodiment, then it may be patentable.

Background:

Amazon.com is seeking a patent for an invention entitled, “Method And System For Placing A Purchase Order Via A Communication Network”.  The application was filed on September 11, 1998, and claimed priority from two U.S. patents.

The Federal Court stated that “[t]he claimed invention further enables internet shopping. The customer visits a website, enters address and payment information and is given an identifier stored in a ‘cookie’ in their computer. A ‘server’ (a computer system operating a commercial website) is able to recognize the ‘client’ (customer computer with the identifying cookie) and recall the purchasing information which is now stored in the vendor’s computer system. The customer can thus purchase an item with a ‘single click’ – the order is made without the need to ‘check out’ or enter any more information.”

Decisions and Reasoning:

The Federal Court held that the Commissioner of Patents’ rejection of Amazon.com’s patent application on the basis of non-patentable subject matter was not supported by Canadian law.   Rather, the Federal Court affirmed that the test to determine whether an art or “business method” is patentable is as set out by Progressive Games:

(i)            it must not be a disembodied idea but have a method of practical application;

(ii)          it must be a new and inventive method of applying skill and knowledge; and

(iii)         it must have a commercially useful result.

The Federal Court took a broad interpretation of “a method of practical application” saying that Amazon.com’s claims are patentable because the “‘physical effect’, transformation or change of character resides in the customer manipulating their computer and creating an order. It matters not that the ‘goods’ ordered are not physically changed.” This reasoning is generally in agreement with that of the U.S. Supreme Court in Bilski which held that a business method may be patentable as long as it is not an abstract idea, law of nature, or natural phenomena.

According to the Federal Court, we must not “restrict the patentability of practical applications which might, in light of today’s technology, consist of a slightly less conventional ‘change in character’ or effect [than] through a machine such as a computer”.  The Federal Court held that there is not a statutory exclusion for business methods in Canada: “[To] implement a business method exception would be a ‘radical departure’ from the current regime requiring parliamentary intervention”.

In addition, the Federal Court rejected the Commissioner’s “novel and unnecessary requirement for patentability” that what has been added to human knowledge must be technological in nature.  “There is no reference to such a test in the Canadian jurisprudence (or none was advanced in this Court). It was not within the Commissioner’s jurisdiction to introduce one.” “Technology is in such a state of flux that to attempt to define it would serve to defeat the flexibility which is so crucial to the Act.”

Please note that the decision has been appealed.

Please do not hesitate to contact the author should you have any further questions regarding this decision.