Please check out the website for my newly launched law firm, with colleague Lorraine Fleck.

“I’m pleased to be launching Fleck & Chumak LLP, a boutique IP firm based in Toronto, with my trusted colleague Lorraine Fleck.”
— The author, Yuri Chumak, April 2014

2014 Patent Agent Exam Dates

The Canadian patent agent licensing exams will be held on April 8, 9, 10, and 11, 2014, according to an announcement on the CIPO website.

A proposed rule change from last year - set to increase the amount of qualifying work experience from one to two years - has still not been enacted. Furthermore, CIPO has undertaken a modernization project to reform how the register of patent agents is maintained and how patent agents are qualified, suggesting that additional rule changes are forthcoming. Three working groups investigating various modernization issues and looking at foreign best practices have until the end of the year to deliver their reports and recommendations to the head of CIPO.

Canadian Patent Agent Exam Results - 2012

As in past years, the Canadian PTO has released a report about the 2012 sitting of the Canadian patent agent examinations.

In 2012, only seventeen candidates passed the grueling exams, continuing a downward trend. In 2011 and 2010, only twenty-three and twenty-seven candidates passed, respectively.

The PTO report for 2012 points to a couple of interesting statistics:

Of the 231 candidates who wrote the examination, 17 passed, no candidates achieved a partial pass on three papers, 15 candidates achieved a partial pass on two papers, and 53 candidates achieved a partial pass on one paper. 163 candidates failed all papers.

In other words, 71% of all candidates did not pass any of the papers that were attempted (there are four - patent drafting, patent validity, patent office practice, and patent infringement).

It’s no wonder that so many candidates get discouraged from writing the exams held annually in April, even after spending a year in the field to be eligible to sit for the exams (soon to be two years). In fact, the number of candidates this year was 10% less than last year.

CBA Quarterly Case Summaries

The Canadian Bar Association, IP Section, has released more case summaries. This release covers January 1 to March 31, 2013.

Link to previously released case summaries.

Tim Cook on strengthening patent protection for high tech

Apple CEO Timothy Cook testified before a Senate committee last week investigating off-shore tax issues. Senator Kelly Ayotte used her questioning time to ask about intellectual property, joking about a report of knock-off Apple stores in China. In reply, Cook acknowledged they were a problem but then turned his attention to the US and asked for a strengthened IP system and faster courts. A transcript of the exchange is below:

Q: I actually have a question on an unrelated topic to the tax issue today. But can you tell us when you think about — you were talking to Senator MacAskill and you talked about the advantages for example of being in this country — one of them I view very significantly of course is the intellectual property protections of this country which I know are very significant to you as a technology company. You have faced significant challenges in China. So what would be… can you tell me what those challenges are and thinking about intellectual property protection certainly is an advantage that the United States has. How do we address this with our international partners?

A: We have actually faced more significant areas in other countries other than China.

Q: The reason I raise China is I have heard the stories about the knock-off Apple stores. But please speak to other countries as well.

A: Yeah, that has been an issue. That has clearly been an issue. I think that the US court system is currently structured in such a way that it’s very difficult to get the protection a technology company needs because our cycles are very fast. And when the cycles are very fast, and the court system is very long, the foreign competitors, or even competitors in the United States, can quickly take certain IP and use it and ship products with it and they’re on to the next product before the court system rules. And so I actually think that we require much more work on IP in this country as well. And I would love to see conversations between countries to try to strengthen IP protection globally. I don’t know how likely that is to occur in the current environment. But for us, our intellectual property is so important to our company. And I would love for the system to be strengthened in order to protect it.

Link to testimony (Q&A starts at 3:42:50):

CBA Quarterly Case Summaries

The Canadian Bar Association, IP Section, has released more case summaries. The collection includes:

Link to previously released case summaries.

Tweaking the Trade-marks Act

Many blogs and law firm news flashes have gone out regarding Bill C-56, the Combating Counterfeit Products Act. What interests the author, beyond the expanded new mechanisms for customs officers to detain counterfeit products at the border, is the host of changes and tweaks to the Trade-marks Act, which has not been revised in decades. A sampling of the changes include

  • dropping the (archaic) terms ‘wares’, ‘distinguishing guises’;
  • adding a mechanism to correct obvious errors to registered trade-marks within 6 months of registration;
  • adding the possibility of filing divisional applications;
  • expanding the definition of trade-mark to include colours, sounds, smells, and so on;
  • patching issues with priority claims, opposition & cancellation practice, e-filing.

The bill may or may not go ahead, depending on public approval after first and second readings, but the author sincerely hopes that the technical changes to the Trade-marks Act do go through, in one form or another. One further change that the author hopes gets requested as the bill goes through the legislative process is the elimination of the needless hyphen between the term “trade-mark”.

Federal Courts Rules Changes in 2013

Two notices from the Court’s Administration Service highlight some recent practice changes affecting the Federal Courts, the venue where many intellectual property disputes are litigated in Canada.

1. E-Filing

Changes to Federal Court e-filing practices were featured in a recent Notice to the Profession. The changes, in effect March 1, 2013, relate to a new e-filing system replacing the previous system operated by Lexis Nexis. Under the previous system, a $50 fee applied for each use whereas there is no fee to use the new system (at least as of this writing). An Appendix linked from the Notice sets out the details, including a Consent form for parties to “opt-in” to accept electronic service.

The author had hoped for a mandatory system whereby filing was “deemed” to be service. The Appendix indicates that consent and “validation” after electronic service is required; several options are provided for validation. As well, the system is not to be used for confidential documents filed under seal. Nevertheless, the author is eager to try the new system at the earliest opportunity.

As many intellectual property cases have protective/confidential orders in place, the author hopes that the Court modifies the e-filing system to provide for special treatment of confidential documents, making the system more useful to the IP bar.

2. Rule Changes

A number of rule changes were featured in another recent Notice to the Profession. The rule changes, in effect as of February 7, 2013, are a mixed bag of Court practice updates mainly affecting motion practice. The changes include:

1. Motion hearing dates. General sittings in Ottawa are now on Wednesdays, and Toronto and Montreal will move to Tuesdays from Mondays as of August 7, 2013.

2. Formatting requirements for Court documents. Amended Rule 65 requires the use of 12-point Times New Roman, Arial, or Tahoma font (no more squeezing in more words using trusty old Garamond), and one-sided paper other than for books of authorities.

3. Payments into Court. Certified cheques can be used per amended Rule 4.

4. Responding to an application. Respondents no longer have to indicate that they “oppose” an application, just that they “intend to appear” per amended Rule 305. Form 305 has been amended to reflect this new terminology as well.

5. Provision has been made for ex parte hearings in new Rule 316.1.

6. Service and filing requirements for motions. Under amended Rules 362 and 364, motion materials have to be delivered with 3 days notice (instead of 2 days), and responding materials have to be delivered by 2pm two days before the hearing (instead of the day before).

7. Expanded powers of Prothonotaries. It is now explicit that Case Management Judges can make orders and directions under amended Rule 385(1)(a).

8. New fees. The Court has added fees of $50 for Anton Piller orders, per defendant (civil search and seizure orders), and $50 for summary trials, a relatively new procedure.

Five Developments in Canadian IP Law in 2012

As 2012 draws to a close, let’s gather some important developments in Canadian intellectual property law over the last year or so. These developments are:

1. In July, the Supreme Court of Canada decided five important copyright cases. The Court was faced with a number of questions and decided as follows:

- K-12 schools can make free copies of excerpts of textbooks and other materials for class use, considered to be “fair dealing” for the purpose of “research or private study”. This was a split decision, with a 4-member minority dissenting that the Board’s decision was reasonable and that private study should not encompass classroom instruction. (Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright)2012 SCC 37).

- Listening to music previews is considered to be “fair dealing” and not subject to tariffs because this activity is “research or private study” that is “fair” from the perspective of consumers (Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012 SCC 36).

- Film and TV soundtracks are not subject to “sound recording” tariffs. (Re:Sound v. Motion Picture Theatre Associations of Canada2012 SCC 38).

- Downloading a video game containing background music is not a “communication to the public” and subject to additional “communication” tariffs beyond reproduction royalties. Again, this was a split decision, with a 4-member minority dissenting that it is not for Courts to apply limits on “communication” rights for policy reasons. (Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada2012 SCC 34).

- The Court considered whether downloading a song is a “communication to the public” and subject to “communication” tariffs. Here, the Court drew a distinction between downloading and streaming. Downloads engage “reproduction” rights and not “communication” rights, while streams engage “communication” rights (but presumably not “reproduction” rights) even though streams are point-to-point transmissions. (Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada2012 SCC 35).

Following these decisions, Rogers and other ISPS have commenced an action against SOCAN for a return of amounts paid under “communication” tariffs since 2004. 

2. In June, Bill C-11, the Copyright Modernization Act received royal assent, and came into force in November. Among the changes, the “fair dealing” exceptions were expanded to include education, parody, and satire. New rights for IP owners include making-available rights, distribution rights, moral rights for performers, presumptive ownership for photographers, support for digital locks, and tools to pursue online pirate sites. Statutory damages were fixed between $100 and $5,000 for all non-commercial infringements in a single proceeding for all works. One of the clauses includes a mandatory five-year review (s. 92).

On the heels of the new copyright law, a Hollywood studio, Voltage Pictures, filed an infringement suit against a number of unknown file sharers. In December, Voltage brought a motion for third-party discovery from TekSavvy, an Ontario-based internet service provider. The motion seeks disclosure, from the ISP, of contact information for some 2000 account holders whose IP addresses were identified to be illegally reproducing/distributing Voltage’s films. The hearing of the motion was delayed until January 2013. The case is novel because of its scale - the studio seeks the identities of thousands of account holders; an earlier case from 2011 regarding the “Hurt Locker” film by the same studio went after a handful of ISP account holders (that case was discontinued in March after Bell, Videotron, and Cogeco were ordered to Voltage with the sought-after contact information).

3. In November, the Supreme Court of Canada invalidated Pfizer’s patent covering the Viagra medicine. The unanimous Court stated that Pfizer had not sufficiently disclosed the invention in its patent specification, violating the patent bargain of full disclosure (as of the filing date) in return for exclusive rights. Viewed as a whole (and not claim by claim), according to the Court, the patent specification did not teach that sildenafil (brand name Viagra) was the effective compound tested. Pfizer’s patent included cascading claims to chemical compounds of increasingly narrower scope where claim 6 and claim 7 identified specific compounds. Claim 7 was sildenafil but there was no description that claim 7 was the effective compound. The Court said:

"There was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound, further testing would have been required to determine which of those two compounds was actually effective in treating ED."

From the decision, it is not entirely clear if claim 6 (non-sildenafil) worked or not. In any case, the case provides a cautionary tale to those drafting and prosecuting patents to indicate the known “best mode” in Canadian patent applications.

There are two curious footnotes to note in the wake of the Viagra patent decision:

- The Supreme Court decided that Pfizer’s patent was invalid and void. Some practitioners view this remedy as being outside the Court’s jurisdiction, as the appeal arose from a decision granting a prohibition order (i.e., withholding marketing approval to the generic) under the Patented Medicines (Notice of Compliance) Regulations, which does not provide such in rem remedies.As a result of the Supreme Court’s odd decision, Pfizer has brought a motion for reconsideration or amendment, itself a highly unusual procedure. The point may well be moot - in a parallel impeachment action involving another generic manufacturer, the Federal Court has, in any case, invalidated the patent.

- In December, Eli Lilly, another pharmaceutical brand manufacturer, gave notice of its intent to challenge the precedent set by the Viagra decision under free trade laws, suggesting that an added utility requirement (the so-called “promise doctrine”) does not comply with Canada’s obligations under NAFTA and TRIPS.

The case is Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60.

4. Amazon is granted one-click patent, and Canadian PTO polishing new subject-matter guidance. Following last year’s Federal Court of Appeal decision, the Canadian PTO granted Amazon’s one-click patent and promised new guidance to help Examiners and Applicants interpret the decision. After a round of consultations, and some delays, the new guidance is expected imminently.

5. Industrial design litigation is rare in Canada. In September, the Federal Court released its decision in Bodum USA, Inc. v. Trudeau Corporation (1889) Inc., 2012 FC 1128. Justice Boivin decided that Bodum’s designs covering double-walled glasses were invalid and not infringed by Trudeau. The Court said:

- infringement is analyzed from the point of view of the “informed consumer” (synonymous with the “aware consumer”); 

- “the Court finds that the Trudeau glasses do not have the features attributed to them by the plaintiffs and that the Trudeau glasses are not infringing products” (oddly, the Court refers extensively to the prior art during its infringement analysis);

- “by comparing the prior art submitted into evidence and the industrial designs in question, by focussing on lines and by ignoring the manufacturing processes, materials used and colours, the Court finds that the designs do not vary substantially.”

The Court dismissed Bodum’s infringement action and allowed Trudeau’s counterclaim of invalidity. Bodum has filed an appeal of the trial decision.

2013 Patent Agent Exam Dates

The Canadian patent agent licensing exams will be held on April 23, 24, 25, and 26, 2013, according to a past issue of the CPOR.

The number of candidates for the 2013 sitting of the exams may well be larger than usual due to a proposed rule change that is likely coming into effect for the following year. That rule change would increase the amount of work experience required to qualify to write the exams, from one year to two years.

The exams consist of four papers. Each four-hour paper is written on a new day and covers a different topic: patent drafting (Paper “A”), patent validity (Paper “B”), patent office practice (Paper “C”), and patent infringement (Paper “D”). To pass, an average grade of 60% on the four papers is needed, with a minimum grade of 50% on each paper. You need not pass all four papers at once — grades of 60% or higher may be banked for future sittings.

I have blogged about the patent exams in the past, and included links to PTO-maintained reports and marking guides for past exams. Lately, the PTO seems to have stopped updating their page containing these links, inviting those interested to contact the administrator of the exams from the PTO, Mr. Marc Hunt.

The CPOR item referenced above states:

16.  2013 Patent Agent Examination

Under the provisions of subsection 14(2) of the Patent Rules, notice is hereby given that the 2013 examination will be held on  April 23, 24, 25, and 26, 2013.

A person who proposes to sit for the examination must notify the Commissioner of Patents in writing, file an affidavit or statutory declaration referred to in subsection 12(2) of the Patent Rules and pay the prescribed fee ($200 per paper).

The deadline to apply, submit the affidavit or statutory declaration and pay the fee is November 30, 2012. When applying, it is essential to indicate which paper(s) will be written.

For more information, please contact Marc Hunt.

Licensing process for Canadian patent and trademark agents to undergo changes

An extra year of experience will be required for patent trainees to sit for the licensing exams, according to a regulatory change that was pre-published in the Canada Gazette yesterday. It is hoped that the increase from one to two years of experience before being eligible to sit for the exams will improve the dismal pass rates on the patent licensing exams.

On the trademark side, another regulatory change takes away a perk reserved for lawyers. Lawyers who practice trademark law will no longer be able to claim an exemption from the licensing exams (presumably current trademark agents who claimed the exemption in the past, a group that includes this author, will not be required to sit for the exams).

Historically, the patent exams have been held once a year in April and the trademark exams in October; once the new rules come into effect, the licensing exams could be held more than once a year at any time, permitting the Office some flexibility in scheduling. The cost to write the papers has not increased ($800 to write all four patent papers, and $400 to write the trademark paper), but the refund policy for candidates who drop out has been scaled back.

The regulatory changes were first proposed about three years ago by the sponsoring agency, the Canadian Intellectual Property Office and are subject to a formal 30-day consultation period, followed by a final approval process. I expect the new regulations will come into force within a few months and certainly before the next sitting of the patent agent examinations.

UPDATE: it appears that the rule change will not come into effect for the 2013 sitting of the patent exams.

Canadian Patent Agent Exam Results - 2011

Anecdotes from candidates that wrote the licensing exams this past April suggest that the 2012 exams were difficult. As we wait for those statistics to become public, I have noted that the data for 2011 are now available. Continuing a depressing trend, fewer candidates passed in 2011 (23) than the previous year (27). The Patent Office’s report states:

This data shows that in 2011 the average successful candidate required 3 to 4 years to pass the examination, and that 87% of successful candidates passed the examination within 4 years.

This doesn’t mean that 87% of candidates pass after four years; the data are likely that way because many candidates get discouraged after trying that many times.

Dot-ca domain name decisions - the year so far

We are only part of the way through 2012, yet the number of dot-ca domain name decisions in 2012 (18) is more than the total decided in 2011 (14).

This year, complainants have enjoyed success about 80% of the time (14 out of 18 complaints have resulted in a transfer of the domain name to the complainant). The unsuccessful complaints failed for a variety of reasons:

- the complaint was brought by the wrong entity;

- there was no “bad faith” by the registrant;

- again, there was no “bad faith” by the registrant;

- the complainant lacked “prior rights” in a confusingly similar mark;

- again, the complainant lacked “prior rights” in a confusingly similar mark;; and

- yet, again, the complainant lacked “prior rights” in a confusingly similar mark.

These decisions provide a caution for prospective complainants to ensure that their complaints are filed by the correct entity (i.e. the actual user of the trade-mark), and that they clearly demonstrate prior use of the mark by this user.

CBA Quarterly Case Summaries

The Canadian Bar Association, IP Section, has released more case summaries. The collection includes:

Link to previously released case summaries.