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Don’t Cut Corners on Provisional Patent Filings

November 15, 2017

Patent offices often warn the public about blatant scams such as fake payment notifications sent by third parties, but do not generally warn the public about other less-overt rip-offs or pitfalls.  In many cases, practitioners that simply take a summary of an invention prepared by an inventor and…

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Broadest Reasonable Interpretation Unreasonably Broad?

October 31, 2017

In US patent law, during patent examination, claims are to be given the broadest reasonable interpretation (BRI) consistent the specification. A pair of recent decisions of the US Federal Circuit explored this principle in the context of inter partes review and ex parte…

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Proposed Amendments to the Patent Rules

October 12, 2017

The Canadian Intellectual Property Office (CIPO) recently engaged in public consultation on proposed amendments to Canada’s Patent Rules. The proposed Patent Rules, once implemented, will allow the coming-into-force of amendments to Canada’s Patent Act which, amongst other…

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Further Discussion of Subject Matter Eligibility by Patent Appeal Board

September 07, 2017

On the heels of its decisions relating to patentability of graphical user interfaces (previously discussed here) from late last year, the Canadian Patent Appeal Board (PAB) has provided further insight on the issue…

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Who owns an invention created by an employee?

August 21, 2017

When an employee conceives of an invention, who owns it? The employer or the employee? In Canada the general rule is that the employee owns his or her inventions in the absence of an agreement the contrary. Many employers address this through ensuring that employment agreements include a…

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Are trademarks in association with computer software goods evolving with technology?

August 11, 2017

Computer software companies are cognizant of evolving challenges relating to patentable subject matter. Computer software companies should also consider managing trademark portfolios by evaluating whether existing trademark registrations may be at risk of expungement. Under the current Trade-marks…

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What about Schlumberger?

July 25, 2017

For decades, Schlumberger Canada Ltd v Canada (Commissioner of Patents), [1981] 56 CPR (2d) 204 (FCA), was the only Canadian decision on computer-implemented inventions. In that case, the court upheld the Commissioner’s rejection of an invention implemented by way of software. The Federal…

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Recent Decisions Increase Canada’s Appeal as a Patent Filing Jurisdiction

July 11, 2017

In recent weeks Canadian courts have been busy issuing patent-related decisions and patent filers should take notice of some interesting developments which may enhance the appeal of Canada as a filing jurisdiction. Two decisions which were released to the public in the last two weeks make…

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Unintended Effects: Impact of Making Changes to a U.S. Provisional when filing a Regular Patent Application

May 31, 2017

Provisional patent applications (PPAs) are often filed as part of a patent portfolio filing strategy. A PPA is not a regular patent application. A PPA will not be examined by any patent office and will not result in a granted patent. PPAs are unique to the United States patent regime. For example,…

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Expediting Patent Prosecution in Canada

May 17, 2017

In Canada, as in many other jurisdictions, a patent application is only examined upon request. To avoid abandonment of an application, a request for examination must be made within five years of the filing date of the application. Applications are generally examined sequentially according to the order…

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Pre-filing commercialization can undermine your patent rights

May 09, 2017

Most people are familiar with the principle that if you publicly disclose your invention you might lose your right to seek patent protection for that invention. Canada, the U.S. and a handful of other countries provide a bit of a grace period, but in general people try to ensure that they file a patent…

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Potential Perils of Relying on Unregistered Intellectual Property Rights

May 02, 2017

Companies sometimes decide to forgo registering intellectual property rights and hope that they will have some protection under the law without having formally registered such rights.  A recent case highlighted some of the perils in attempting to rely on unregistered intellectual property rights to…

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Changes to Canadian Industrial Design Practice

March 28, 2017

Industrial design registration remains an underutilized form of intellectual property protection. In Canada, an original industrial design can be registered to protect the look and appearance of a finished article. Unlike a patent, which protects the way an article is used or functions, an industrial…

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Innovation in the 2017 federal budget – all talk, no action

March 22, 2017

The Canadian federal government released its 2017 budget on March 22, 2017.  It was billed in pre-budget leaks as the “innovation” budget. Since coming to power in 2015, the current Liberal government has been fond of using the word “innovation” as often as possible in its policy statements and marketing. …

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The trademark “Green Rush” is on in Canada

March 15, 2017

While marijuana has been legal for medicinal purposes in Canada since 2001, the marijuana industry has only recently seen a high level of trademark activity.   Annual trademark filings for marijuana-related goods and services began accelerating in 2012 and there was much activity from 2014 to 2017. …

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Attention Content Creators: Technological Protection Measures Hold Weight in Canada

March 07, 2017

In 2012, the Copyright Act was amended to include new provisions outlining prohibitions for circumventing technological protection measures (“TPMs”). The recent decision of Nintendo of America Inc v King, 2017 FC 246, is the first time the Federal Court of Canada substantively considers…

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Keyword Advertising: When “Sponsored Links” Can Get You in Hot Water

February 28, 2017

With catchphrases such as “search engine optimization”, “AdWords”, and “pay-per-click” dominating the online marketing vernacular, it is helpful for commercial entities and marketing professionals to be cognizant of potential trademark law issues that may arise when engaging in promotional activities.…

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Do FinTech Patents Have a Future?

February 22, 2017

Every day brings a new flurry of articles about FinTech (“financial technology”) startups and their potential to be disruptive forces. Traditional banking and financial industry players are said to be at great risk. However, many of them have seen this coming and are preparing to defend their turf.…

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Should a Patent Applicant File Prior Art at the Canadian Intellectual Property Office?

February 14, 2017

In the United States, “[e]ach individual associated with the filing and prosecution of a patent application … [has] a duty to disclose to the Office all information known to that individual to be material to patentability” (see e.g., 37 CFR 1.56, 1.97, 1.98). Prior art is filed with the United States…

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Treatment of GUI Patent Claims in Canada

February 07, 2017

Canadian patent examiners sometimes object to graphical user interface claims on the basis that they are unpatentable since they have “purely intellectual or aesthetic significance.”  There is an old line of decisions that hold that something having solely intellectual or aesthetic significance is…

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Trade Secret and the Prior Use Defense

May 14, 2014

Like many companies and inventors, you might choose to forego patent protection and instead rely upon trade secret protection. There are some wrinkles to trade secret protection that should be kept in mind when making that choice. Trade secret is a perfectly legitimate approach to consider,…

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How much does a patent application cost?

May 06, 2014

This is often the first question we get from prospective clients. There is no question that writing and filing a patent application – properly – is expensive.  Anyone that explores the possibility of seeking patent protection should be realistic about the timelines and the cost.  The preparation…

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Same trade-mark and similar goods? No problem if sold through different channels of trade

January 15, 2014

This case illustrates the potential advantages of explicitly excluding certain goods from your trade-mark application. Let’s suppose you are a tire manufacturer with the registered mark POTENZA for “tires, tubes and wheels” that you have held for 30 years.  A high-end Italian bicycle…

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2014: The US Supreme Court wrestles with patents

January 14, 2014

Over the past few years, IP has been in the spotlight south of the border.  It seems that not a day goes by without a patent, trade-mark or copyright story in the popular press (e.g. see smartphone wars).  Changes in the law have also been coming at a fast pace.  Witness the US implementation…

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Some 2013 hints of where we’re headed on computer-implemented inventions in Canada

November 28, 2013

2013 saw the release of four Commissioner’s Decisions (Patent Appeal Board cases) that offer a glimpse of how the Amazon.com, Inc. v. Canada decision of the Federal Court of Appeal is being applied by the Canadian patent office.  The decisions largely turn upon claim construction. If the…

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Federal Court of Appeal splits over anticipation in Wenzel v. National Oil

January 27, 2013

The Federal Court of Appeal recently released a split decision on the issue of anticipation through prior use of an invention.  The majority affirmed the trial-court decision that the public must simply have the theoretical opportunity to access the prior art invention in order to constitute an anticipatory…

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Removed as inventor with no right to submit evidence: Baksh v. ProbioHealth

December 07, 2012

Baksh v. ProbioHealth, LLC, 2012 FC 1388, is a peculiar case about dealing with inventorship disputes in a Canadian patent application.  All of this could have been avoided by ensuring that proper…

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Viagra patent invalidated: SCC suggests patentee “gaming” the patent system

November 09, 2012

Yesterday, the Supreme Court of Canada (SCC) released a decision that underlines a patentee’s disclosure requirements under the Patent Act.  This decision is another in a…

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Update: en banc re-hearing for CLS Bank v. Alice

October 16, 2012

In a previous post, here, we noted the sharp division in the US Court of Appeals for the Federal Circuit on the issue of patent-eligible subject matter…

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Continued division over “abstract ideas” test in the CAFC: CLS Bank v. Alice Corp.

July 10, 2012

The US Court of Appeals for the Federal Circuit is again divided on the test for patent-eligible subject matter, with the majority and minority exchanging biting comments.  The CAFC decision in CLS…

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Twitter’s IPA: does it live up to the hype?

April 17, 2012

Twitter is being lauded for its “revolutionary” Innovator’s Patent Agreement (IPA), on the basis that it purports to “put ownership of patents back in the hands of the inventors”.  But what does it actually do? Twitter posted the IPA recently 

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An “object” clause is not necessarily a promise, says Federal Court of Appeal

April 17, 2012

It used to be common practice to include an “object clause” in a patent specification to clearly set out an over-arching objective of the invention.  Many granted patents have multiple object clauses, setting out a number of goals for the invention.  This practice died away as patent drafters came…

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Open war-of-words at CAFC: Bard Peripheral Vascular v. W.L. Gore & Associates

February 10, 2012

Newman, J. and Gajarsa, J. engage in open warfare in their respective reasons in Bard Peripheral Vascular v. W.L. Gore & Associates. The judgment is a Court of Appeals for the Federal…

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Broken promises: Eurocopter v. Bell Helicopter

February 09, 2012

The judgment of Martineau J. in Eurocopter v. Bell Helicopter Textron Canada Limitée, 2012 FC 113, was released recently.  It represents a win for Eurocopter in that Bell…

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A fuzzy line being drawn by the CAFC to circumscribe “abstract ideas”

January 26, 2012

A trio of recent Court of Appeals for the Federal Circuit (CAFC) cases, including last week’s decision in DealerTrack v. Huber, give some insight into what the Court considers a patentable…

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Plavix patent from 2008 SCC Sanofi judgment now invalidated

January 12, 2012

In 2008 the Supreme Court of Canada handed down one of the most significant patent law judgments of the past decade in Apotex v. Sanofi, 2008 SCC 61. That judgment set the modern tests for evaluating…

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Tags

accelerated examination, accounting of profits, anticipation, assignments, confusion, copyright, costs, duty of disclosure, early disclosure, fintech, graphical user interfaces, industrial design, inventorship, open source, opposition, patentable subject matter, patents, prior use rights, promises of the patent, provisional patents, software patents, sufficient disclosure, Technological Protection Measures, TPM, trade secrets, trademarks


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