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, but it works better for some innovations than for […]

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 and filing of a patent application in one […]

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 parts manufacturer decides to try to register the mark POTENZA for “bicycle parts […]

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 of […]

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 claim construction results in the computer elements or […]

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 disclosure.  In reliance upon Baker Petrolite Corp. […]

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 assignments were in place before filing the application. In this case, one of the inventors, Dr. Bing Baksh, never assigned his rights to […]

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 line of recent Canadian cases that have struck down pharmaceutical patents on the basis that the patentees failed to live up to the disclosure obligations that are one side […]

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 for computer-implemented inventions.  The Court will now have a chance to hash out those differences in an en banc re-hearing of the CLS Bank v. Alice decision.  The […]

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 Bank v. Alice Corporation comes quickly on the heels of the US Supreme Court decision in Mayo v. Prometheus and the remand of […]