July 2010
2 posts
“Inventive but not Novel!
“I can understand that at first glance the...”
– Merck & Co. Inc. v. Pharmascience inc., 2010 FC 510, per Hughes J.
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
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.
CIPO announces new consultation and draft MOPOP... →
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...
“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
Judge Stratas of the Federal Court of Appeal... →
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,...
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...
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
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...
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
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...
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.
i4i wins en banc hearing →
March 2010
10 posts
Myriad gene patents invalid - decision by federal... →
Myriad gene patents ruled invalid by US district... →
Apple Buys iPad Trademark from Fujitsu →
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 ...
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!
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.
Generics get Court to expunge Advair Diskus design...
In a decision released yesterday, Justice Barnes sided with a number of generic drug makers and ordered Glaxo Group’s OBLATE SPHEROID Design mark, pictured to the left, expunged. The Court considered evidence from physicians, pharmacists and patients. The Court said,
I am satisfied from this evidence that colour and shape are not the primary characteristics by which GSK distinguishes the...
Top Canadian Court to hear COVERSYL patent case?
The Supreme Court of Court will decide this week whether to hear an appeal of the Servier case. This is a pharmaceutical patent case involving an ACE inhibitor marketed under the brand name Coversyl.
Both trial and appellate courts concluded that Apotex, the generic drug maker, was infringing the ADIR/Servier patent. Apotex has now appealed to the Supreme Court of Canada.
A summary of the case...
Americanidol.ca and 3 other recent CDRP decisions
Four complaints; four orders to transfer. Complainants under the CIRA Dispute Resolution Policy are certain to be celebrating the latest batch of decisions. In four decisions released this year, arbitrators ordered the transfers of all disputed domains:
windows7.ca (decision)
americanidol.ca (decision)
sickchildren.ca (decision)
revenuquebec.ca (decision)
Interestingly, in the...
January 2010
11 posts
Off-topic: Supremes declare that Khadr deprived of...
As stated in the Supreme Court of Canada’s headnote (from a unanimous court with reasons for judgment written by Chief Justice McLachlin, released this morning):
The appeal from the judgment of the Federal Court of Appeal, Number A-208-09, 2009 FCA 246, dated August 14, 2009, heard on November 13, 2009, is allowed in part with costs to the respondent. The application for judicial review...
A myriad of gene patents
Joe Mullin profiles the Myriad patent story. The company’s seven patents have been challenged in the US federal district court by the ACLU on behalf of a number of scientific organizations and breast cancer patients, among others.
The patents protect isolated portions of the human genome, particularly covering tests that diagnose breast and ovarian cancer.
The case was filed in May 2009...
Legal privilege extends to US patent attorneys
Gilbert’s lawyer Alex Stack discusses the Datatreasury v. RBC decision (as yet unreported). He writes,
In DataTreasury, Claudio Ballard, the inventor of the patent at issue and a resident of the United States, engaged the American law firm of Pennie & Edmonds LLP to draft, file and prosecute his patent application. The professionals who dealt with the inventor were patent attorneys:...
IPIC analyzes Singapore Treaty - Report →
Singapore and Madrid - major changes to Canadian...
There was a short posting on the CIPO news section on December 15, 2009. In non-descript language, the news item referred to a consultation on a proposal to “more closely align [the trade-marks legislation] with modern business practices and international standards”.
The major proposed changes include:
implementation of the Singapore Treaty, which will require new forms of...
CBA Quarterly case summmaries
The Canadian Bar Association, IP Section, has released a new set of case summaries (for July - September 2009).
Link to previous quarter’s cases.
The jury in the i4i v. Microsoft case speaks. →
CIPO practice notice - extra 6 months only in TM...
A CIPO news item refers to the coming into effect on March 11, 2010 of a new practice notice curtailing the Office’s practice of granting multiple extensions of time to respond to an Office Action Report during trade-mark examination. A similar practice notice will also apply to industrial designs.
As stated in the practice notice:
Effective immediately, the Office will generally grant...
Patent lawsuit - an admission of commercial...
The Economist on Nokia’s patent strategy (link):
When the company makes headlines these days, it is thanks to the patent lawsuits it has filed against Apple, which many have interpreted—perhaps unfairly—as an admission of commercial defeat.
A patent flame war on ipwatchdog.com. →
Article on the Federal Court rule change re hot... →
December 2009
11 posts
Summary judgment rule change
The Federal Courts of Canada have released new SJ rules as advertised in the Courts’ Notice to the profession dated December 17, 2009. The RIAS indicates that one of the major additions is the new summary trial procedure, patterned after the BC rules (similar new rules are coming to Ontario in January - see the changes to Rule 20 as described here by Watson & McGowan).
Highlights of the...
Two holiday dot-ca decisions
In two recent cases, arbitrators deciding under the CDRP came to different conclusions. In hasbro.ca, the sole panelist ordered a transfer of the domain name from a cybersquatter to Hasbro Inc. But, in familyhonda.ca, the three-member panel rejected a transfer finding that the complainant car dealership had failed to prove any pre-existing rights in the trade-mark.
Vancouver Twenty-Ten
The Canadian Trademark Blog reports that Mukmuk the friendly marmot (pictured above) and his friends, the Olympic mascots, now have their names protected by recent amendments to the Olympic and Paralympic Marks Act. On December 24th, the federal cabinet added 38 new marks (4 words and 34 graphic designs) to the list of prohibited marks. Such marks are prohibited them from being used by any person...
HST and patent royalties
The new harmonized sales tax (HST) is coming into effect in Ontario and British Columbia on July 1, 2010. A guidance document published on the Canada Revenue Agency website clarifies the transition rules through the use of the following example:
“You sold a patent to manufacture widgets and receive fixed annual royalty payments in respect of the sale. A royalty payment becomes due on June...
Package 1 of the new Patent Rules comes in to...
A CIPO news item refers to the publication of the rules in Part II of the Gazette on December 9, 2009. According to the news item, the rule change will achieve a number of ends including:
Simplify the definition of the term “description”;
Clarify the purpose of section 16(4);
Consolidate provisions that address the establishment of a filing date;
Clarify the confidentiality...
redbrickpizza.ca transferred
Redbrick Pizza’s CDRP complaint was decided in favour of the complainant on November 23, 2009. The panelist hearing the case ordered a transfer of the domain name redbrickpizza.ca to the operator of a chain of pizza restaurants.
The CDRP panelist accepted evidence that the registrant was a serial cybersquatter. The 3-part test (confusing similarity with the complainant’s mark, bad...
Revised MOPOP chapters - a first look
CIPO’s consultation has resulted in very few changes to the new MOPOP chapters 12 and 13. IPIC’s submission, echoed by others, which called for the scrapping of the new “field of technology” requirement, “form and substance” examination and examination for “contribution” was rejected without comment.
In the new Chapter 12 on subject matter, CIPO has...
CIPO issues final revised MOPOP chapters
According to a news item posted on the news page, revised chapters have been issued with a December 2009 effective date. The new chapters include:
Chapter 12 of the MOPOP on the subject of Subject-Matter and Utility
Chapter 13 of the MOPOP on the subject of Examination of Applications
It’s not immediately clear how the chapters have been revised in response to the submissions...
Amazon 1-click appeal memo
The applicant’s appeal memo has been filed. Highlights from the memo include:
“The Commissioner’s decision to reject the ‘933 Application is wrong in law. The Commissioner relies upon inapplicable foreign law, and misstates and misapplies the binding jurisprudence of the Canadian courts on point (including the Supreme Court). In doing so, the Commissioner creates a new...
RIM facing prospect of ITC import ban
http://www.bloomberg.com/apps/news?pid=20601082&sid=aVDBEtJtj0QQ
“Please stop the theatrical swaying of your glasses and trying to influence this...”
– Robert Armstrong, lawyer for Porter Airlines, during cross-examination of Porter chief executive officer Robert Deluce. http://www.theglobeandmail.com/report-on-business/industry-news/the-law-page/one-airlines-fair-play-is-anothers-favouritism/article1384764/
November 2009
7 posts
Hot tubbing experts
The Canadian Federal Courts Rules are being amended, after many months of consultations, to clarify the roles of expert witnesses during litigation.
The proposed rules have now been published in Part 1 of the Gazette. As discussed in the RIAS, the most interesting part of the proposal is the part that would allow experts from opposing sides to be put in a metaphysical “hot...
MOPOP update to chapter 9: descriptions
CIPO has announced a consultation for its newly revised chapter in the Manual of Patent Office Practice (MOPOP).
The revised chapter 9 deals with the description section of a patent application (commonly referred to as “the disclosure”), which together with the claims, make up the whole patent “specification”.
Now at 35 pages (from 13), the chapter deals heavily with...