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Archive for the ‘Intellectual Property’ Columns

The Past Can Come Back to Haunt You: The Danger of Backdated Copyright Assignments

Copyright assignments are often back-dated or retroactive. A Federal Court decision – Harmony Consulting Ltd. V. G.A. Foss Transport Ltd., 2011 FC 340, aff’d 2012 FCA 226 – demonstrates the dangers of such assignments, and two (2) questions anyone relying on such an assignment should ask.
Posted in: Intellectual Property

Is It Easier to Invalidate a Patent in Canada? Eli Lilly Thinks So and Wants It to Stop

The Canadian generic pharmaceutical industry has recently been successful in invalidating several brand name drug patents on the basis of “The Promise” doctrine. Eli Lilly would like to put an end to this, using Canada’s international treaty obligations under NAFTA.

Can you see the difference?

In the mid 2000s one could start to see Canadian patent cases “turning” somewhat. Before this, the general sense was that a mere scintilla of utility was enough to obtain a patent. However, if the patentee made an explicit and unequivocal “Promise” of a certain use or result, recent cases have held the patentee to . . . [more]

Posted in: Intellectual Property

Federal Court Costs

The Federal Court, where most intellectual property litigation takes place has a system for determining costs that differs in many respects from that of the Ontario Court system.

Costs in the Federal Court are generally determined based on a number of discretionary factors, set out in Rule 400 of the Federal Courts Rules, and a table of fixed amounts for steps in the litigation. Judges and Prothonotaries can also order costs on a lump sum basis.

The Tariff

Unlike in the Ontario Courts, the Federal Court Rules include a tariff, Tariff B, which allocates a range of ‘units’ for . . . [more]

Posted in: Intellectual Property

Industrial Designs Enforcement Seen Through Double Glasses

Industrial design protection is an often overlooked form of protection that is a poor cousin of Copyright. For historical reasons Canadian law prejudices against certain authors who create designs which can be applied to useful articles. By virtue of Section 64(2) of the Copyright Act, RSC 1985, c C-42, if more than 50 copies of the articles are made by or at the direction of the owner of the copyright in the design then substantial copyright and moral rights protection is lost. Protection may be available under the Industrial Design Act, RSC 1985, c I-9 (IDA), a registry . . . [more]

Posted in: Intellectual Property

The Supreme Court of Canada VIAGRA Case: 5 Messages Technology Businesses Should Receive

This column was written by Dominique T. Hussey, L.E. Trent Horne and Edward (Ted) Yoo

In a unanimous decision, the Supreme Court of Canada has provided valuable guidance to patent agents and litigators as to how Canadian patents will be read and enforced (Teva Canada Limited v Pfizer Canada Inc, 2012 SCC 60).

The subject matter of the patent needs no introduction. Sildenafil is the active ingredient in VIAGRA, one of the world’s best known pharmaceutical products. There is no mystery or uncertainty as to the reason VIAGRA is prescribed.

Pfizer’s patent, however, was not as . . . [more]

Posted in: Intellectual Property

The SCC Sanofi Obviousness Test – Have the Courts Gone Wrong With the Inventive Concept?

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]

Posted in: Intellectual Property

Patent and Trade-Mark Agent Requirements

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]

Posted in: Intellectual Property

The Importance of Product Specificity in the Listing Patents

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]

Posted in: Intellectual Property

Patents, Prosecution and Pitfalls

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):

[150] 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]

Posted in: Intellectual Property

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]

Posted in: Intellectual Property

Highlights of the Similarities and Differences Between Canadian and American Trade-Mark Practice

INTRODUCTION 

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.

SOME SIMILARITIES

1. “First to File” 

In . . . [more]

Posted in: Intellectual Property

Ensuring the Balance

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, [2004] 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., [2002] 2 S.C.R. 336, where the Supreme Court of Canada explained that copyright law provides a balance between creators and users, namely:

the purpose of

. . . [more]
Posted in: Intellectual Property