As the Federal Court continues to interpret and apply the 2008 Sanofi SCC obviousness test (Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 (“Sanofi”)), one important step – defining the “inventive concept” – has not always been defined consistently. Inventive concept appears to have taken predominance over claim construction. Inventive concept is a pivotal issue for the court. It sets the bar for exactly what has to be obvious to try – ie. “self-evident” to work. As would be expected, a more complex/advanced inventive concept means an invention is more difficult to invalidate for obviousness. Equally, a . . . [more]
Archive for the ‘Intellectual Property’ Columns
New requirements are coming for lawyers wanting to become patent and trademark agents. Registered patent and trademark agents are able to represent applicants before the Canadian Intellectual Property Office.
Proposed amendments to the governing regulations were recently published in the Canada Gazette (“Rules Amending the Patent Rules”, “Regulations Amending the Trade-marks Regulations”) for comment. I expect the final amendments to be very similar to these proposed changes and will likely come into force in the next several months. Earlier versions of these changes were published by the Canadian Intellectual Property Office (CIPO) several years ago.
Many of . . . [more]
The Patented Medicines (Notice of Compliance) Regulations (SOR/93-133) provides the framework for most of Canada’s patent litigation. The Patent Act and the PM (NOC) Regulations seek to balance “effective patent enforcement” over new and innovative drugs with the “timely market entry” of lower priced generic versions once the patents have expired. The PM (NOC) Regulations provide innovators of pharmaceutical patents (‘innovator’) with an ability to list their patents on a Patent List. A generic drug maker who wishes to obtain consent from Health Canada to market a drug based on the same active ingredient (called a Notice of Compliance or . . . [more]
A decision last year of the Federal Court of Appeal stated a clear rule about the relationship between the patent office and patent agents: once a patent issues, most aspects of the patent application process are beyond challenge (Weatherford Canada Ltd. v. Corlac Inc., 2011 FCA 228):
 To be clear, the concept of abandonment in paragraph 73(1)(a) operates during the prosecution of the application for a patent. Its operation is extinguished once the patent issues.
As a result of the decision, parties challenging the validity of an issued Canadian patent may no longer point to . . . [more]
Time for Re-Formulation of the Patent Sound Prediction Test From Apotex Inc. v Wellcome Foundation Ltd., 2002 SCC 77 (“AZT”)
Part 3 of the three part test for sound prediction from AZT (“The Test”) should be added to part 1. This would better reflect the practical application of the sound prediction test and avoid unnecessary judicial scrutiny into ultimately irrelevant factual and evidential areas.
It has been 10 years since the Supreme Court of Canada (“SCC”) established The Test (in Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77). The Test has invalidated many pharmaceutical patents (and more recently, non-pharmaceutical patents). As we await another SCC decision on utility and sufficiency, this may be an appropriate time to . . . [more]
There are many similarities between Canadian and American trade-mark practice, such as the overall steps in the application process. However, sometimes Canadian lawyers and clients make erroneous assumptions about US trade-mark laws that can have a significant impact on a trade-mark portfolio. Likewise, some US lawyers and clients incorrectly assume more similarity between US and Canadian laws than actually exists. This article gives an overview of some of the similarities and differences between Canadian and US trade-mark practice so brand owners can structure their affairs accordingly when managing a cross-border trade-mark portfolio.
1. “First to File”
In . . . [more]
As time marches on it is clear that one of the most important recent cases of the Supreme Court of Canada in the field of copyright law has been CCH Canadian Ltd. v. Law Society of Upper Canada,  1 S.C.R. 339 (“CCH”) in which the Court breathed real meaning into the fair dealing exception, now called a user’s right.
CCH was preceded by Théberge v. Galerie d’Art du Petit Champlain inc.,  2 S.C.R. 336, where the Supreme Court of Canada explained that copyright law provides a balance between creators and users, namely:
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The Copyright Board of Canada and the various tariffs that it certifies rarely attract media attention. But a tariff recently certified received coverage by most major media outlets. That tariff, mandating payments for playing recorded music in weddings and other events for the years 2008-2012, will be collected by Re:Sound, a private organization representing record companies and performing musicians. If the events include dancing, the fee is double. This unusual media attention, often describing the fees as a “wedding tax” or “dancing tax”, is not surprising because it reflects how undemocratic some aspects of Canada’s copyright system have become. . . . [more]