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Archive for the ‘Intellectual Property’ Columns

Interlocutory Injunctions in the Federal Court

For the first time in recent memory, the Federal Court has issued an interlocutory injunction in an intellectual property proceeding. In April, the Federal Court of Appeal upheld the injunction issued to Rickett Benckiser LLC.

The standard test for issuing an injunction is set by the Supreme Court of Canada in RJR MacDonald which requires the moving party establish:

  • a serious issue to be tried;
  • irreparable harm will result to the moving party if the relief is not granted; and
  • the balance of convenience favours the moving party.

Of these three parts to the test, finding ‘irreparable harm’ is typically . . . [more]

Posted in: Intellectual Property

Federal Court of Canada Issues New Case Management Practice Notice Affecting IP Litigation

The Federal Court recently issued a practice notice entitled Notice to the Parties and to the Profession – Case Management: Increased Proportionality in Complex Litigation before the Federal Court. The notice affects all complex litigation before the Court, including intellectual property matters. The notice is designed to achieve increased proportionality in Federal Court proceedings, and introduce efficiencies which should save litigants both time and money. The changes should also make it easier for an action to reach trial within two (2) years from the filing of the Statement of Claim, an objective communicated in a previous notice from the . . . [more]

Posted in: Intellectual Property

Privilege for Patent and Trademark Agents

As a result of Bill C-59, when passed, clients will enjoy a statutory privilege in their client communications with Canadian patent and trademark agents.

This will provide Canadian clients who use patent and trademark agents, whether or not also lawyers, more secure protection of their confidential communications. In Canada the law had been that non-lawyer patent agents or trademark agents do not benefit from professional legal privilege. As to patent agents see Lumonics Research Ltd. v. Gould et al. (1983), 70 C.P.R. (2d) 11 (FCA). As to trademark agents see Visa International Service Assn. v. Visa Travel International Ltd. (1983), . . . [more]

Posted in: Intellectual Property

Reviewing CIPO’s Procedural Decisions – Federal Court’s Judicial Anxiety to Uphold Patents

In conducting the public function of granting Patents, CIPO’s actions are often called into question in private disputes, as well as by individual applicants. Although the “high stakes” of patent litigation may often create novel arguments to invalidate a particular patent, broader policy consequences ultimately arise as to how to temper CIPO’s independent administrative functions with the ability of third parties to raise administrative noncompliance as a ground of patent invalidity. The court’s predilection to review, at the request of individual applicants, administrative type decisions regarding fees, may be contrasted with judicial reluctance to revisit CIPO’s actions once a patent . . . [more]

Posted in: Intellectual Property

Privilege for Patent and Trademark Agents

More changes are coming to intellectual property legislation as part of the latest federal budget announcements. Changes have been announced for the Patent Act, the Trade-marks Act, the Copyright Act and the Industrial Design Act.

These changes follow an overhaul of the intellectual property legislation last year (see previous article) to make Canada’s legislation more consistent with international treaties. The implementing regulations from last year’s changes are still being developed with implementation not expected until late 2016.

The latest changes were announced in the Budget in April 2015 and the specific proposed amendments included in . . . [more]

Posted in: Intellectual Property

Cloud Computing Advantage Under Canada’s Anti-Spam Law

The communications prohibitions in Canada’s sweeping Anti-Spam Legislation (CASL) prohibit, unless exempt, a person from sending a “commercial electronic message” without the consent of the recipient. On January 15, 2015, further prohibitions relating to the installation of computer programs came into force.

CASL imposes significant compliance hurdles for traditional software providers due to its regulation of programs “installed” on a computer system. However CASL does not appear to regulate software-as-a-service to the same extent, and so CASL appears to favour the cloud-computing service business model and supports the expanded adoption of cloud computing in Canada.

Broadly, the software prohibitions in . . . [more]

Posted in: Intellectual Property

Patent Utility Update in Canada – Clarity May Not Be Explicitly Promised

In the past five years, the Canadian Federal Court has invalidated several patents based on an arguably “technical” deficiency – the “Promise/utility” requirement.

The most recent trend however suggests an increasing reluctance to both find an “elevated Promise”, and require a patentee to meet such a Promise. Instead the Federal Court of Appeal in late 2014 reinforced a “pro-patentee” approach by applying the “rule in favour of saving an invention rather than invalidating it” and is now consistently holding that Promises must be “explicit” ie. supported by clear and unambiguous . . . [more]

Posted in: Intellectual Property

Liability and Remedies – Bifurcation in IP Cases

Bifurcation, or the splitting and deferring of the resolution of issues, is common in intellectual property proceedings. If a case is bifurcated, the issue of liability is determined first, followed by the remedies, but only if necessary.

In the example of a patent case, the first part of the proceeding would focus on the validity and infringement of the patent to determine whether the defendant has infringed the patent. If there is infringement, in the second part, the amount of monetary relief is then determined.

The Rule

The Federal Courts Rules, applicable in the Federal Court where most IP cases . . . [more]

Posted in: Intellectual Property

Start of the Electronic Age?

In late January, the Federal Courts Rules were amended to permit the maintenance of court files in electronic form. The changes to the Rules, for the first time, removed the requirement that the official court docket for a proceeding be kept in “paper”. These changes open the door to improved electronic service and filing of court documents in the Federal Court.

Justice Brown’s comments regarding the Ontario Court, seem applicable, “Consign our paper-based document management system to the scrap heap of history and equip this Court with a modern, electronic document system.”

The changes to the Federal Court Rules . . . [more]

Posted in: Intellectual Property

Not Just the Best Policy, but Now the Law: The Impact of the Duty of Honest Contractual Performance on Intellectual Property License Agreements

The Supreme Court of Canada recently decided a contractual dispute, Bhasin v. Hrynew, involving businesses selling educational savings plans (ESPs). In doing so, the Court recognized a duty of honest contractual performance. While the Bhasin decision did not concern intellectual property, the Court’s ruling has implications for all contracts, including intellectual property (IP) licensing agreements.

Previously, Canadian law was divided as to whether parties to a contract were required to discharge their contractual obligations honestly or whether the duty of good faith only applied to specific types of contracts, e.g. employment agreements. The Supreme Court’s ruling in Bhasin recognizes . . . [more]

Posted in: Intellectual Property

Overhaul of Intellectual Property Legislation

In a series of initiatives, legislation addressing intellectual property is being amended. The Patent Act, the Trade-marks Act, the Copyright Act, the Industrial Design Act and the Plant Breeders’ Rights Act have been amended or are about to be amended. While most of the changes are procedural rather than substantive, the changes will likely have a lasting effect on Canada’s role in the international intellectual property system.

Many of the changes effect the filing requirements in Canada to standardize or integrate the process with international systems. For example, for trademarks, the Madrid Protocol allows an international trademark . . . [more]

Posted in: Intellectual Property

Who Is the Inventor?

Enthusiastic entrepreneurs consult with patent agents about the protection of their new product. Often a successful team for an entrepreneurial business includes someone with technical skills, someone with marketing skills, someone providing business direction as well, of course, with one of more persons providing financial backing. Often all want to be named as inventors on a patent application. A key question which comes up is to identify who are the inventors.

That question was answered by the Federal Court in Drexan Energy Systems Inc. v. Canada (Commissioner of Patents) 2014 FC 887, a case where four people worked together on . . . [more]

Posted in: Intellectual Property