November 2011
1 post
Cdn. Federal Court of Appeal releases tentative...
Amazon’s 1-click patent application survives to fight another day. In a 35-page decision (PDF via ippractice.ca) penned by Justice Sharlow, three members of the appeals court yesterday largely affirmed the trial judge’s legal analysis on patentable subject matter (but not his construction of the patent for want of expert evidence), and ordered that the 1-click application be sent back...
October 2011
2 posts
The state of copyright law in Canada
This is a brief run down of some recent developments in the area of copyright law. These developments, particularly the first two, are set to change our Canadian copyright system fundamentally. They are:
New copyright bill. Late last month, the government introduced a new copyright bill, Bill C-11, in an attempt to modernize the legislation and deal with the new issues in relation to digital...
“No one wants to die. Even people who want to go to heaven don’t want to...”
– Steve Jobs, 1955-2011
September 2011
1 post
2012 Patent Agent Exam Dates Set
According to yesterday’s issue of the Canadian Patent Office Record, the next patent agent exams have been set for April 24-27, 2012. The deadline to apply (and it is a firm deadline) is November 30, 2011.
Passing these grueling exams, held once a year in April, is a must to be able to act on behalf of inventors before the Canadian Patent Office.
As I have blogged before, the exams are...
August 2011
1 post
Developments in Canadian IP law this summer
There have been a number of interesting developments in Canadian IP law during the summer of 2011.
Patents
On the patent side, these developments include:
1. The Amazon 1-click appeal was heard in June. Afterwards, lawyers for the government and Amazon were granted permission to submit additional written arguments about newly released decisions from the European and New Zealand patent offices...
July 2011
1 post
Toronto firm i4i prevails in patent infringement...
As has been widely covered in the traditional media and on technology blogs, last month, the Supreme Court of the United States released a unanimous opinion holding that Microsoft had infringed i4i’s valid patent.
The i4i patent claims an improved method for editing computer documents, which stores a document’s content separately from the metacodes associated with the document’s structure....
June 2011
1 post
Supreme Court of Canada - Decisions - Masterpiece... →
Significant Canadian decision relating to the test for trade-mark confusion (discrediting geography and luxury as factors), approving “use” as the fundamental requirement for a registered trade-mark (flying in the face of the Madrid system which is about to come to Canada), and casting doubt on the use of linguists and other expert witnesses in these types of disputes.
This is the...
May 2011
2 posts
Sandisk asks Supreme Court of Canada to re-instate...
M-Systems Flash Disk Pioneers, owned by Sandisk, has filed an application with the Supreme Court of Canada seeking leave to appeal the Federal Court of Appeal decision (previously discussed on this blog). That decision confirmed that M-System’s patent application was dead due to the applicant failing to respond in full to an Examiner’s requisition.
The appeal on behalf of M-Systems...
2 tags
Supreme Court of Canada to hear Viagra patent case
The highest court in Canada agreed yesterday to hear Teva v. Pfizer, a patent case dealing with the popular erectile dysfunction drug sildenafil (brand name Viagra).
Teva, a pharmaceutical manufacturer, had appealed from the decision of the Federal Court of Appeal that denied Teva/Novopharm permission to market a generic version of Viagra until Pfizer’s patent had expired in 2014.
Teva...
April 2011
4 posts
4 tags
“MR. WAXMAN: And for the past 28 years Congress has actively acquiesced in the...”
– i4i’s lawyer Mr. Waxman attempts humour at Monday’s oral argument.
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Canadian Bill of Rights fails to save Sandisk...
Sandisk acquired Israeli flash memory firm M-Systems in 2006. In a recent judgment, the Canadian Federal Court of Appeal has confirmed a lower court judgment that one of M-Systems’ Canadian patent applications has been lost, due to the Patent Office’s “multiple abandonment” procedures.
The abandonment of the M-Systems patent application was caused by a failure to address...
3 tags
Hockey night in (the Federal Court of) Canada -...
Easton has infringed a valid patent covering skates held by Nike/Bauer, according to a recent judgment of a three-member panel of the Canadian Federal Court of Appeal. However, the appeal court was convinced that the scope of the patent should not be enlarged to catch a second product line of Easton’s.
In reasons written by Justice Noël , the appeal court disposed of Easton’s...
1 tag
CBA Quarterly Case Summaries
The Canadian Bar Association, IP Section, has released a new set of case summaries (for October - December 2010).
Link to previous quarter’s cases.
January 2011
2 posts
1 tag
CBA Quarterly Case Summaries
The Canadian Bar Association, IP Section, has released a new set of case summaries (for July - September 2010).
Link to previous quarter’s cases.
3 tags
Cdn. Patent Office adds PCT prosecution highway
Some patent applicants can now get on a new “patent prosecution highway”, announced the Canadian Intellectual Property Office earlier this month. Since as early as 2008, other PPHs have been put into place between Canada and the Danish, German, Japanese, Korean, Finnish, Spanish and US patent offices.
The new PCT highway will open on January 31, 2011, initially on a “pilot...
November 2010
3 posts
3 tags
Cdn. Fed. Ct. of Appeal affirms expungement of...
In a decision released earlier this month, the Federal Court of Appeal has affirmed the judgment of Justice Barnes. The two-tone purple inhaler marketed by GSK as the Advair Diskus has no distinctiveness to physicians, pharmacists and patients, said the Court. As a result, GSK’s registered trade-mark will be expunged, pending any further appeal to the Supreme Court of Canada.
Writing for...
1 tag
Sign up for the 2011 patent agent examination
A reminder that you have until November 30, 2010 to sign up. I’m told the Canadian Patent Office does not, under any circumstances, accept late entries. Good luck - you will need it given last year’s 14.8% pass rate (they’ve made it too hard, in the author’s opinion).
The details of the 2011 sitting were published in a recent CPOR:
2011 Patent Agent Examination
Under...
4 tags
Amazon 1-click patent headed to the Cdn. Federal...
The Commissioner of Patents has filed an appeal from Justice Phelan’s decision that the Amazon 1-click patent is patentable subject matter (discussed in my last post). The Commissioner exercised its right to appeal and now the matter will go before a panel of three judges of the Federal Court of Appeal.
In its Notice of Appeal (link from ippractice.ca) filed on November 14, 2010, the...
October 2010
2 posts
3 tags
Federal Court harshly rejects Patent Office...
The amazon.com 1-click patent appeal has finally been decided, in amazon’s favour. The invention, a business method which facilitates instantaneous online purchasing, was found to be eligible for a Canadian patent. After the application - which was filed in 1998 - was finally rejected by the Patent Appeal Board, the case was then further appealed to the Federal Court...
3 tags
New guidance re computer-implemented inventions
The Canadian Patent Office today announced a new MOPOP chapter for computer-implemented inventions. A public consultation on the Office’s proposal closed in August, and yielded three responses - the author contributed to IPIC’s 39-page response.
Very few changes were made in response to the consultation. These changes:
clarify that pseudocode, with accompanying description, can be...
September 2010
2 posts
1 tag
CBA Quarterly Case Summaries
The Canadian Bar Association, IP Section, has released a new set of case summaries (for April - June 2010).
Link to previous quarter’s cases.
3 tags
Breaking: Cdn. banks settle patent lawsuit with...
A search of the Court records indicates that a settlement agreement may have been reached between the parties. The case involved actions for patent impeachment and patent infringement. The patents (including patent no. 2,301,793) cover cheque image capture technology and are owned by Datatreasury, a patent holding company out of Plano, Texas. According to news reports collected by Wikipedia,...
August 2010
5 posts
2 tags
engadget.ca ordered transferred
A complaint by AOL Canada has resulted in the transfer of engadget.ca from a cybersquatter, according to the decision of a panel under the CDRP. Engadget.com is a popular consumer electronics blog.
AOL did not have any registered Canadian trade-marks, so the case was decided on the basis of its common law marks in Canada.
Interestingly, the panel refused to transfer the other domain names at...
3 tags
New patent rules in effect October 1, 2010
Under the new rules, Canadian patent applicants will be allowed to submit short-form declarations that simply state they are entitled to a patent as the inventor’s legal representative. As of October 1, 2010, the format of the declaration goes from this to just the following:
“The inventor is _________, whose complete address is _________ and the applicant is the legal ...
2 tags
“While ACTA aims to establish effective enforcement standards for existing...”
– Statement from the member states negotiating ACTA
2 tags
Where are the Software-Savvy Patent Attorneys?
As reported on patentlyo.com, research of US patent attorney qualifications shows that few patent practitioners have backgrounds in computer science.
The authors of the study suggest that “institutional bias” explains the discrepancy. The authors and other commentators blame the “arcane and outdated” technical degree requirements of the USPTO (other jurisdictions,...
2 tags
Hot tubbing rules in force
The Rules Amending the Federal Courts Rules (Expert Witnesses), as previously discussed here, are now in force (as of August 3, 2010). Among other changes, the new Rules give judges the discretion to order expert witnesses to give evidence in a panel (a so-called hot tub). The new Rules provide as follows:
Expert witness panel 282.1 The Court may require that some or all of the expert witnesses...
July 2010
2 posts
3 tags
“Inventive but not Novel!
“I can understand that at first glance the...”
– Merck & Co. Inc. v. Pharmascience inc., 2010 FC 510, per Hughes J.
1 tag
CBA Quarterly Case Summaries
The Canadian Bar Association, IP Section, has released a new set of case summaries (for January - March 2010).
Link to previous quarter’s cases.
June 2010
8 posts
4 tags
TMOB to reform opposition procedures
CIPO has today announced a new consultation regarding trade-mark opposition procedures.
The proposal aims to reduce the time for cross-examinations, do away with reply evidence as of right, permit service by email, and reduce the Office’s burden of sending due date notices.
The consultation is open until September 20, 2010.
3 tags
CIPO announces new consultation and draft MOPOP... →
3 tags
CIRA consultation details
The CDRP Consultation backgrounder has been posted including a summary of CDRP decisions, a comparative analysis of the CDRP to other DRPs, and a link to the consultation site.
Here is a link to the consultation questions, divided into these sections:
Mandatory Requirement for Three Panelists
Fees for CDRP CDRP Dispute Providers, Panelists and Decisions
Requirements for Filing a CDRP...
2 tags
“The [mentos.ca] Registrant argues that “Mentos” is a common surname. However,...”
– http://www.cira.ca/assets/Documents/Legal/Dispute/2010/00151-mentos.ca.pdf
1 tag
Judge Stratas of the Federal Court of Appeal... →
2 tags
Hockey Night in (the Federal Court of) Canada
Bauer, a hockey skate manufacturer owned by Nike, has successfully convinced a Federal Court Judge that its Canadian Patent No. 2,302,953, covering a skate boot with an improved “quarter”, was valid and infringed by Easton.
Bauer sued Easton in 2002 and the case went to trial before Justice Gauthier.
The trial was held between November 2009 and January 2010, resulting in a decision dated April 1,...
2 tags
Litigator Service class action
A lawsuit has been commenced on behalf of lawyers and law firms for the unauthorized reproduction of legal documents in the Litigator Service, reports the IP Osgoode blog.
According to the plaintiff’s lawyers:
“The lawsuit alleges that Thomson Reuters maintains a web-site which contains reproductions of filed court documents, and permits its subscribers to access these written...
3 tags
Consultation - dot-ca cybersquatting policy
CIRA has engaged the Strategic Council to undertake a consultation of the CDRP, a tool used by brand owners to recover dot-ca domain names from cybersquatters. The consultation opens on June 9, 2010 and runs to September 17, 2010.
May 2010
2 posts
3 tags
Free advanced examination for green patent apps
The Commissioner is planning to eliminate a $500 fee charged to applicants of “green” inventions to have their applications examined ahead of schedule, according to an item and consultation proposal posted on the CIPO web page.
The proposal notes that:
“No additional fee would be required for advancing the examination of patent applications related to green technologies. In...
2 tags
Federal Court Notice -- Costs
Litigants should be prepared to address the issue of costs of interlocutory steps at the time of hearing, and not after, according to a new Notice from the Federal Court of Canada.
Following the Notice, parties and their lawyers should consult on the disposition and quantum of costs before going into a hearing. If there’s no agreement, then they should be prepared to make submissions (e.g....
April 2010
4 posts
1 tag
US Trade Rep report - Canada on the IP Priority...
Ambassador Ron Kirk, United States Trade Representative, and his office have today released their “Special 301” report. Once again, the report puts Canada on the watch list for having weak copyright and border enforcement policies.
According to the 301 report:
“Canada will remain on the Priority Watch List in 2010. The United States looks forward to the government of Canada’s...
1 tag
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Mabelslabels.ca transferred
Mabel’s labels, maker of custom clothing and household labels, secured the mabelslabels.ca domain name.
In a decision released today, the sole panellist found that the registrant, a family member of a competitor, registered the domain name in bad faith and ordered a transfer of the domain name.
5 tags
i4i wins en banc hearing →
March 2010
10 posts
2 tags
Myriad gene patents invalid - decision by federal... →
2 tags
Myriad gene patents ruled invalid by US district... →
2 tags
2 tags
Apple Buys iPad Trademark from Fujitsu →
4 tags
Patent Office releases Unity of Invention practice...
Just got this in my email:
Please be advised that the Commissioner of Patents has authorized a practice notice regarding Unity of Invention.
The practice notice is a follow-up to the practice notice released on March 24, 2009, and further clarifies Office practice with regard to section 36 of the Patent Act.
The practice notice is available on the CIPO web site at the following ...
3 tags
Supreme Court dismisses COVERSYL leave application
As previously discussed here, the Court today declined to hear Apotex’s appeal and made an order dismissing the application for leave to appeal with costs. Congratulations to GSK and its litigation team at Ogilvy Renault!
1 tag
CBA Quarterly case summaries
The Canadian Bar Association, IP Section, has released a new set of case summaries (for October - December 2009).
Link to previous quarter’s cases.