C+BR Recognized as 2015 Patents Law Firm of the Year in Canada

Clancy P.C. + Brion Raffoul is pleased to announce its recognition in the Legal Awards 2015 as “Patents Law Firm of the Year – Canada” by Lawyer Monthly (a UK-based publication).  C+BR was one of six law firms recognized in Canada, and in the company of about one hundred law firms worldwide.  Each recipient was subject to an independent and confidential nomination and research process.

For further details, please visit the Legal Awards 2015 PDF press release  – http://www.lawyer-monthly.com/media/Releases/15/LMLA2015-PressRelease.pdf

A link to the entire Awards Edition – http://www.lawyer-monthly.com/magazine/LMLA15

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

 

 

 

 

 

 

Canadian Federal Court of Appeal Rejects “Lack of Good Faith” as Grounds for Patent Invalidation

A recent Federal Court of Appeal (FCA) decision in the case of Corlac Inc. et al. v. Weatherford Canada Limited et al. has clarified Canada’s position on “lack of good faith” as suitable grounds for patent invalidation.

Originally, Weatherford Canada Ltd., licensee of Canadian Patent No. 2,095,937 (the ‘937 patent), brought an infringement action against Corlac Inc.  The Federal Court held that the  ‘937 patent was valid and infringed.

On appeal, Corlac argued that the patent was invalid due to technical non-compliance with Section 73 of the Patent Act.  Corlac cited section 73 (1) (a), which requires the applicant to “reply in good faith to any requisition made by an examiner”.  Corlac suggested that the applicant failed to meet the duty of good faith and thus, that the application should have been abandoned.

The FCA however held that the operation of s. 73(1)(a) of the Patent Act is extinguished once the patent issues.  The Court reasoned that the concept of abandonment under s. 73(1)(a) operates during the prosecution of the application only.  The FCA further stated that relying on s. 73(1)(a) post-issuance to challenge the validity of a patent would allow an issued patent to be subject to retroactive scrutiny by the courts in relation to submissions made by a patent applicant to the Patent Office during prosecution.  The Court explained that: “[i]t is for the Commissioner of Patents and not the courts to determine if those submissions were made in good faithin response to a requisition from an examiner”.

The FCA has now established its position on this point by concluding its analysis with the following reference to these cases:

“To the extent that the Federal Court decisions in G.D. Searle and Lundbeck can be interpreted as standing for the proposition that paragraph 73(1)(a) can be relied upon for the purpose of attacking the validity of a patent, they should not be followed.”

 

PCT and CIPO Test Drive the Patent Prosecution Highway

Beginning January 31, 2011, the Canadian Intellectual Property Office (CIPO) and the Patent Cooperation Treaty (PCT) have entered into a bilateral Patent Prosecution Highway (PPH) agreement, similar to PPH agreements between CIPO and Patent Offices in the US, Germany and Japan, among others.  The agreement will run for a two year trial period and allows patent examiners to make use of work products generated by CIPO as the ISA/IPEA.  Work products include positive results of written opinions of the ISA and IPEA or positive results from an international preliminary examination report.

To proceed under the PCT-PPH, applications must have entered the National Phase in Canada on or after January 31, 2011.  Based on a positive work product with CIPO as the ISA/IPEA, a Request for Examination is submitted on filing together with a Request for Accelerated Examination under the PPH. A claim concordance table, showing the relationship between the PCT application and the National Phase application is also required.  In some cases a Voluntary Amendment may further be required if the ISA/IPEA Examiner has highlighted some defects in the claims. There is presently no government fee for submitting a Request for Accelerated Examination under the PPH.

We are now strongly encouraging clients with favourable PCT written opinions to take advantage of the PCT-PPH (CIPO ISA/IPEA) to gain a swift allowance in Canada.  With an allowance in Canada, there is then the possibility of using the PPH to gain automatic allowances in patent regimes including the US, Germany and Japan, to name a few.

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.