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]

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]

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]

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]

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]

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]

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]

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]

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]

Over the past few years the pharmaceutical marketplace has seen an increase in patent “re-litigation” (where a patentee is involved in a second case against another generic). Following the Federal Court of Appeal’s warning to losing brands that they must put their best foot forward in case1[1], and at the same time, arguably permissive attitude regarding new generics in case2, the Federal Court continues to grapple with how to fairly deal with re-litigation. One notable hurdle is the unusual procedural regime of the Notice of Compliance (“NOC”) Regulations. NOC proceedings are designed to result in merely preliminary type . . . [more]

Occasionally, patent applications are filed or issued identifying the wrong inventors, or the allegedly wrong inventors. This can arise due to inadvertence at the time of filing or from disputes between inventors, claimed inventors and owners of the intellectual property.

All patent applications must identify the inventor or inventors of the invention being claimed. This is typically done in the petition for the patent or equivalent under the international Patent Cooperation Treaty rules at the time of filing.

The identity of the inventors is important because ownership of the patent flows from the inventors, usually through an employment arrangement or . . . [more]

Neighbouring rights rarely get much judicial review so the case of Re: Sound v. Fitness Industry Council of Canada 2014 FCA 48 gives some insight as to this regime.

Neighbouring rights[1], rights near to copyright, in this context are rights to “equitable remuneration” in published sound recordings (performers and makers) for the performance in public or the communication to the public by telecommunication in Canada of their recordings under Section 19 of the Copyright Act, R.S.C. 1985, c. C-42. Re:Sound is a not-for-profit collective society authorized under the Act to administer the performance rights of performers and . . . [more]