iPatents

Cdn. Federal Court of Appeal releases tentative Amazon decision

Fri, 25 Nov 2011 14:54:00 -0500

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 to the patent office for re-evaluation.

On first blush, this is a big win for Amazon and an endorsement of the lower court’s judgment on the matter. However, it would appear that the appeals court has muddied the waters somewhat by sending the application back to the same agency that rejected it previously and by stating that patentability remains an “open question” and that the Commissioner’s rejection was not necessarily “wrong in the result”.

An appeal to the Supreme Court of Canada is very likely given that Amazon and the Patent Office continue to have very different ideas about the appropriate analysis for patentable subject matter.

On the question of patentable subject matter, the appeals court said:

- if a patent claim as “purposively” construed describes something that is outside the enumerated categories of “invention” in the Patent Act, then it must be refused;

- solely determining the “inventive concept” is not the correct analysis (but the court later mused that the only “inventive aspect” in an old computerized method case was an unpatentable algorithm);

- with regard to the categories of “art” and “process”, the subject matter need not be “technological” or “scientific” as these tag words are not grounded in the Patent Act;

- on a purposive construction, a novel business method may be an essential element of a valid patent claim;

- patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change; and

- a mere “practical application” of an invention is not sufficient: it is axiomatic that a business method has practical application.

As noted above, the appeals court remanded the patent application back to the Patent Office for expedited re-examination, presumably starting with a new purposive construction.

It will be interesting to see whether the Patent Office will deny the patent and therefore, in all likelihood, push the litigation into a further appeal. Many practitioners watching this case would welcome a final resolution to this case and to the continued uncertainty regarding business method patents in Canada.

Update: on December 23, 2011, Amazon received an early Christmas present from the Canadian Patent Office. The 1-click application was allowed, with the final fee paid on December 28, 2011. The patent is expected to be issued on or about January 17, 2012. With an appeal to the Supreme Court now moot, the Federal Court of Appeal’s decision is now the final say on business method patentability in Canada.

The state of copyright law in Canada

Tue, 18 Oct 2011 13:37:00 -0400

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 copying. Personal non-commercial infringement is to be capped at $5,000 per individual. Copyright owners’ rights are set to expand with new making-available rights, distribution rights, moral rights for performers, presumptive ownership for photographers, support for digital locks, and tools to pursue online pirate sites.
Pentalogy of cases before the Supreme Court of Canada. Five appeals from the Copyright Board are set to be heard by the highest court on December 6 and 7, 2011. The Copyright Board cases deal with 1) whether listening to a music preview is just “research”; 2) whether downloading a video game with background music is a communication to the public; 3) whether downloading a song is a communication to the public; 4) whether k-12 schools can make free copies for the purpose of instruction; and 5) whether film and tv soundtracks are subject to sound recording tariffs. The Court is expected to re-shape the common law defence of “fair dealing” and may provide its own stamp on the pending legislation discussed above.
John Does in “The Hurt Locker”. Mr. Justice Shore of the Federal Court recently ordered that three Internet Service Providers (Bell, Cogeco and Videotron) must turn over the identities of a handful of account holders suspected of illegally downloading, copying and distributing the Oscar-winning film “The Hurt Locker” using a torrent sharing program. The decision is available here: Voltage Pictures LLC c. Untel, 2011 CF 1024 (English via machine translation). Led by Greg Moore, the well-regarded IP firm of Goudreau Gage Dubuc is acting for Voltage, the copyright owner. According to the Court file, Voltage is to file a timetable for the next steps in the proceeding by November 4, 2011.

The state of copyright law in Canada will be reshaped following these developments noted above. It will be interesting to note the dialogue between Parliament and the Supreme Court as the digital copying marketplace continues to grow and evolve.

"No one wants to die. Even people who want to go to heaven don’t want to die to get there. And..."

Wed, 05 Oct 2011 21:47:23 -0400

“

No one wants to die. Even people who want to go to heaven don’t want to die to get there. And yet death is the destination we all share. No one has ever escaped it. And that is as it should be, because Death is very likely the single best invention of Life. It is Life’s change agent. It clears out the old to make way for the new. Right now the new is you, but someday not too long from now, you will gradually become the old and be cleared away. Sorry to be so dramatic, but it is quite true.

Your time is limited, so don’t waste it living someone else’s life. Don’t be trapped by dogma — which is living with the results of other people’s thinking. Don’t let the noise of others’ opinions drown out your own inner voice. And most important, have the courage to follow your heart and intuition. They somehow already know what you truly want to become. Everything else is secondary.

”

- Steve Jobs, 1955-2011

2012 Patent Agent Exam Dates Set

Wed, 28 Sep 2011 05:55:00 -0400

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 notoriously difficult. Plus, the pass rates have been declining, according to the Chair of the Patent Agent Examining Board, Agnès Lajoie, as stated in her 2010 report. She observed that most successful candidates pass in their first or second sitting, while other candidates are unlikely to pass after 4 attempts. The data tell the story:

Total candidates 2003-2010: 236 255 207 217 237 231 284 259

Total passes 2003-2010: 73 79 34 25 66 40 31 27

Total passes on first try 2003-2010: 20 24 7 5 12 10 10 5

Here are the details of the 2012 exam dates as published in the Canadian Patent Office Record:

Under the provisions of subsection (2) of section 14 of the Patent Rules, notice is hereby given that the 2012 examination will be held on April 24, 25, 26 and 27, 2012.

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 2 of section 12 of the Patent Rules and pay the prescribed fee.

The deadline to apply, submit the affidavit or statutory declaration and pay the fee is November 30, 2011. When applying, it is essential to indicate which paper(s) will be written.

For more information please visit the How to become a registered patent agent web page.

Developments in Canadian IP law this summer

Wed, 17 Aug 2011 12:28:00 -0400

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 related to the corresponding patents in those countries. A decision on the government’s appeal regarding the patentability of the 1-click invention is expected shortly.

2. While the Amazon appeal decision was under reserve, the Canadian Patent Office released patentable subject matter guidance interpreting the lower court’s judgment. Some practitioners have criticized the timing of this guidance, as the appeal decision could make this guidance obsolete. A review of the guidance would suggest that the Patent Office’s “form and substance” approach, largely discredited by the lower Court, has been resurrected in the guise of an “actual invention” approach.

3. In July, the Federal Court of Appeal released reasons in a significant patent appeal related to mechanical seals used in the oil and gas industry: Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228. The Court gave the inventor a wide berth to share prototypes with industry partners and did not consider such disclosures to be novelty-destroying “public disclosures”. But, in the most important part of the reasons, the Court said that misrepresentations to the Patent Office during patent prosecution do not give rise to an invalidity ground under s. 73(1)(a) of the Patent Act after the patent has issued. In the words of the Court (at para. 150):

“To be clear, the concept of abandonment in paragraph 73(1)(a) operates during the prosecution of the application for a patent. Its operation is extinguished once the patent issues.” [emphasis added]

It should be noted that s. 53(1) of the Act does give a challenger the opportunity to expunge the patent, provided the inventor/applicant made a material allegation in the petition that was intentionally misleading. However, the Court said that on the specific facts of the case, the failure to name certain individuals as inventors was not a “material” allegation or omission.

Trademarks

The profession is still digesting the consequences of the Supreme Court of Canada’s Masterpiece decision released earlier this spring (which decision reinforces that the “degree of similarity” between two trademarks is the most important factor in assessing confusion). Meanwhile, the Federal Court released an interlocutory decision in Target Brands, Inc. v. Fairweather Ltd., 2011 FC 758, continuing its long-standing practice of denying pre-trial injunctions in trademark cases.

Domain Names

A few developments to note with respect to domain names:

1. The registrar responsible for .xxx top-level domain names, targeted toward the adult online entertainment industry, has released the details of its sunrise program for trademark owners, adult-oriented or not, to register or block domain names incorporating their marks. Many big brands are complaining of a “shake down” in having to pay fees to defend their brands in the .xxx land rush.

2. In early August, the Ontario Court of Appeal decided Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548, and allowed Tucows’ appeal from the motions judge. The result is that the Ontario Court has jurisdiction to entertain the dispute between Renner, a Brazilian retailer, and Tucows, a registrar that owns a portfolio of domain names including renner.com. The appeal court concluded that the domain name is personal property in Ontario within the meaning of rule 17.02(a), and that the summary UDRP proceeding commenced by Renner does not preclude an Ontario action to determine rights to the domain name.

3. CIRA, the organization responsible for dot-ca domain names, will implement its new CDRP dispute resolution policy (version 1.3) to be effective starting August 22, 2011. Following the results of two rounds of consultations (discussed previously), CIRA have now decided to split the filing and panellist fees so the cost to commence a proceeding is only $1000, with additional panellist fees due later if the case is not settled.

Toronto firm i4i prevails in patent infringement suit against Microsoft Word

Thu, 14 Jul 2011 11:25:00 -0400

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. In 2007, i4i sued Microsoft for willful infringement, claiming that Microsoft’s manufacture and sale of certain Microsoft Word products infringed i4i’s patent.

Microsoft had claimed that the on-sale bar of §102(b) rendered the patent invalid, pointing to i4i’s prior sale of a software program known as S4.

The burden to invalidate a patent

Microsoft argued the jury should not have been instructed to look for “clear and convincing” evidence of the prior sale of the S4 program. At trial, the jury heard that the S4 source code had been destroyed years before the commencement of this litigation, and therefore the factual dispute turned largely on trial testimony by S4’s two inventors—also the named inventors on the i4i patent—both of whom testified that S4 did not practice the key invention disclosed in the patent.

Microsoft argued that a lower standard of proof should have applied to invalidate the i4i patent, based on a mere “preponderance of the evidence”. Microsoft also argued that this lower standard of proof should apply where the alleged prior art was not presented to the Patent Office during the pre-grant examination process (as was the case with the S4 program).

SCOTUS opinion strengthens patents

Section 282 of the Patent Act states that a patent is “presumed valid” and the “burden of establishing invalidity… rests on the party asserting such invalidity”.

Justice Sotomayor, writing for a majority of the Court, held that Congress had enacted this section using language that had a settled meaning at common law, namely, that “there is a presumption of [patent] validity [that is] not to be overthrown except by clear and cogent evidence” (Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U. S. 1 (RCA)). She analyzed other interpretive theories advanced by Microsoft, all of which were not persuasive and dismissed.

As to the issue of the prior art not being before the factfinder during the patent examination process, Justice Sotomayor held that a “fluctuating” standard of proof was not appropriate, rehearsing the same statutory interpretation analysis based on section 282 and RCA.

In the end, the Court decided that the jury instruction was correct, and that the i4i patent enjoys a presumption of validity that could only be displaced by “clear and convincing” evidence. Justice Sotomayor concluded the majority opinion by stating, “any recalibration of the standard of proof remains in Congress’ hands”.

Microsoft has exhausted all appeals, and will now have to pay the jury’s $290M damages award to Toronto-based i4i.

The case is Microsoft Corp. v. i4i Limited Partnership et al., 564 U.S. ___ (2011), Decided June 9, 2011.

A link to all the court documents is maintained by i4i here.

Supreme Court of Canada - Decisions - Masterpiece Inc. v. Alavida Lifestyles Inc.

Fri, 03 Jun 2011 19:48:30 -0400

Supreme Court of Canada - Decisions - Masterpiece Inc. v. Alavida Lifestyles Inc.:

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 first trademark case of the Supreme Court of Canada since Barbie and Veuve Cliquot came out in 2006.

Sandisk asks Supreme Court of Canada to re-instate patent application

Tue, 31 May 2011 10:25:00 -0400

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 was filed by Ron Dimock of Dimock Stratton. The case below was argued by Francois Grenier of Robic.

The case is M-Systems Flash Disk Pioneers Ltd. v. The Commissioner of Patents (Attorney General of Canada), SCC Docket #34275

Update: the Supreme Court of Canada denied with costs Sandisk’s leave to appeal. Having exhausted all appeals, the patent is now irretrievably dead.

Supreme Court of Canada to hear Viagra patent case

Fri, 06 May 2011 15:03:00 -0400

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 argued unsuccessfully at the Federal Court of Appeal that the Viagra patent should be invalid for having insufficiently disclosed the Viagra invention within the patent specification (namely, by disclosing numerous chemical compounds without specifically identifying sildenafil as being the effective one). By granting leave to appeal, the Supreme Court of Canada has decided that it wants to hear another patent case, the first since Sanofi in late 2008.

The last time the Supreme Court reviewed issues of patent utility and sufficiency of disclosure was arguably in Consolboard, a case from 1981. The Court will now have an opportunity to clarify what specific information ought to be included within a patent specification to have a valid patent.

The Supreme Court docket summarizes the case as follows:

Patents — Medicines — Construction of patents — Disclosure — Sufficiency of disclosure — Whether guidance is needed on the law of sufficiency of disclosure — Whether an allegation of insufficiency is at the “heart of the patent system” or a “technical attack” — Whether the Federal Court of Appeal has confused the Consolboard questions — Whether the Federal Court of Appeal condones the imposition of a research project — Whether the Federal Court of Appeal’s “claim based” approach rewrites the law of sufficiency of disclosure — Whether the Federal Court of Appeal confuses disclosure of invention with “best mode” — Whether the Federal Court of Appeal imposes a crippling “wait and see” regime on generic manufacturers.

In 1994, Pfizer applied for a patent for a range of compounds, of which it claimed that one compound was effective for the oral treatment of erectile dysfunction. It received Patent 2,163,446 on July 7, 1998. Patent ’446 expires in 2014.

The disclosure explains that the invention concerns the use of a compound of formula (I) or a salt thereof as a medicament for the treatment of erectile dysfunction. Claim 1 sets out formula (I), which produces 260 quintillion possible compounds. Claims 2 5 are for successively smaller ranges of compounds of formula (I), with Claim 5 being narrowed to a range of nine compounds. Claims 6 and 7 refer to one compound each. Neither the disclosure nor the claims disclose that Claim 7 contains the effective compound, that sildenafil is that compound, or that it is the only active compound sold commercially under the trade name Viagra. Nor does it disclose that the remaining compounds in the patent had not been found to treat erectile dysfunction.

Novopharm, now Teva, applied for a Notice of Compliance to produce a generic version of Viagra, alleging that the patent was invalid for obviousness, lack of utility, and insufficient disclosure. The Federal Court judge found that the patent was not obvious, had utility, and did not fail to adequately disclose the invention. He prohibited the Minister from issuing the requested Notice of Compliance. The Federal Court of Appeal dismissed an appeal.

David Aitken of Osler is lead counsel on the appeal for Teva/Novopharm, while Andrew Shaugnessy of Torys is lead counsel for Pfizer.

The case is Teva Canada Limited v. Pfizer Canada Inc., et al., SCC Docket #33951

"MR. WAXMAN: And for the past 28 years Congress has actively acquiesced in the Federal..."

Wed, 20 Apr 2011 13:32:00 -0400

“

MR. WAXMAN: And for the past 28 years Congress has actively acquiesced in the Federal Circuit’s consistent holding expressly drawn from RCA that the standard is “clear and convincing.”

JUSTICE GINSBURG: How actively do we acquiesce?

JUSTICE SCALIA: Yes, I would like that notion of active acquiescence.

MR. WAXMAN: I thought that might get a rise out of you.

(Laughter.)

”

- i4i’s lawyer Mr. Waxman attempts humour at Monday’s oral argument.

Canadian Bill of Rights fails to save Sandisk patent application

Wed, 13 Apr 2011 11:49:00 -0400

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 one of two requisitions by the patent examiner assigned to reviewing the M-Systems application. In an office action report, the examiner had requisitioned both: 1) an amendment to correct defects in the application; and 2) a list of prior art cited against corresponding applications by foreign patent offices (a so-called “Rule 29 requisition”).

The applicant provided a timely response to the first requisition but overlooked the Rule 29 requisition. The patent agents testified that they never received the abandonment notice from the Canadian Patent Office.

The lower court held that the abandonment was mandatory (not discretionary) and that Rule 29 was constitutional. According to the lower court, sub-section 2(e) of the Canadian Bill of Rights does not apply as patents are bargains made with the state and do not involve “rights” per se. In any case, a review of the Baker factors indicated that the patent applicant was not deprived of the right to a fair hearing in accordance with the principles of fundamental justice (see the analysis starting at paragraph 48 of the lower court judgment).

In short reasons, the appeal court agreed with the lower court’s analysis but said the case could be decided on the same basis as an earlier case, DBC Marine. The ratio of that case is simply that a (multiple) abandonment is not a discretionary decision which can be judicially reviewed.

Unless this case is overturned by the Supreme Court of Canada, great caution should be taken to deal with office actions that contain multiple examiner’s requests. For example, Rule 29 requisitions could be recorded separately in the patent agent’s deadline tracking software.

The case is M-Systems Flash Disk Pioneers Ltd. v. Commissioner of Patents, 2011 FCA 112

François Grenier and Alexandra Steele of Robic acted for the patent applicant. Antoine Lippé, Michelle Kellam acted for the Commissioner of Patents.

Hockey night in (the Federal Court of) Canada - the appeal

Tue, 12 Apr 2011 15:21:00 -0400

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 challenges to Justice Gauthier’s ruling (previously discussed here) that Easton had infringed (or had induced a supplier to infringe) Nike/Bauer’s valid patent.

The appeal court dismissed Easton’s appeal and agreed with Justice Gauthier (more specifically, said that she made no error in deciding) that:

1. The patent was not anticipated. Easton had argued that Nike/Bauer anticipated its own patent by having NHL hockey players try on prototype skates in a public arena before the filing date of the patent. The appeal court agreed that based on the available evidence, such casual observation of the prototypes without an opportunity for close scrutiny would not have revealed the invention to a skilled observer.

2. The patent was not obvious. Easton argued on appeal that the Daoust 101 and 501 skates represented the “closest prior art” and that, when combined with an earlier patent to Chin, disclosed all the “essential elements” of the claimed invention. When the Daoust skates, which had not been emphasized at the trial, were taken apart at the appeal hearing, it was discovered that the interior structure did not have a tendon guard that was attached in a “side by side” manner, as required by the claims. This fact spelled defeat for Easton’s obviousness challenge.

3. There was no inducement to infringe. The appeal court declined to hear this issue because Easton had also directly infringed the patent, according to the trial judge. The Court said that in order to raise the issue of inducing infringement, Easton should have challenged this finding of direct infringement or explained why effect should not be given to it.

The Court also disposed of Nike/Bauer’s cross-appeal that sought to enlarge the scope of the patent to catch a second product line by Easton. The appeal court said that the particular mode of attachment of the tendon guard to the skate quarter (i.e., “side by side”) was “essential” to the claims. The choice to add these words to the claim was a “self inflicted wound” and was a proper limitation on claim scope. As such, the “overlapping” attachment models were outside the patent claims meaning that Easton’s second product line was not infringing.

An appeal to the Supreme Court of Canada by either side is possible, but would require permission (“leave to appeal”) of the Supreme Court. Leave is rarely granted but the Court sometimes agrees to hear patent cases where this would resolve an important issue of the law.

The case is Easton Sports Canada Inc. v. Bauer Hockey Corp., 2011 FCA 83

Ron Dimock, Bruce Stratton and Geoff Mowatt acted for Easton on the appeal. François Guay, Jeremy Want and Daniel Anthony of Smart & Biggar acted for Nike/Bauer.

CBA Quarterly Case Summaries

Wed, 06 Apr 2011 10:44:00 -0400

The Canadian Bar Association, IP Section, has released a new set of case summaries (for October - December 2010).

Link to previous quarter’s cases.

CBA Quarterly Case Summaries

Thu, 20 Jan 2011 16:58:00 -0500

The Canadian Bar Association, IP Section, has released a new set of case summaries (for July - September 2010).

Link to previous quarter’s cases.

Cdn. Patent Office adds PCT prosecution highway

Mon, 17 Jan 2011 11:28:00 -0500

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 project” basis, for 2 years. It will be available on request in PCT national phase cases where the Canadian Patent Office has done the work of searching or examining a PCT application at the international phase.

CIPO hopes the new highway will result in the quicker examination of applications. A report published last year about the Canada-US PPH said there was weak demand by Canadians for the program, with most of the interest coming from abroad. Still, it is likely that the Office will expand this program in future, as re-using searches and examination reports from other jurisdictions would obviously increase efficiency and save on costs. I am sure uptake of the program would increase if CIPO would share some of the savings with applicants, in the form of reduced examination fees.

Update: Citing the program’s success, CIPO today announced that the US-Canada PPH program will become permanent for now, with no specified end-date.

Cdn. Fed. Ct. of Appeal affirms expungement of two-tone disk-shaped inhaler trade-mark

Mon, 29 Nov 2010 17:13:00 -0500

In a decis ion 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 the majority, Justice Layden-Stevenson dismissed GSK’s arguments on appeal. She concluded that Justice Barnes had applied the correct test for distinctiveness, even though his decision refers to “use” of the mark by consumers (she said he meant “association”).

This decision underscores the single source theory of Canadian trade-mark law: to be valid, the mark must point to a single source, not to a therapeutic use or to multiple sources.

Since being elevated to the Federal Court of Appeal in 2008, Justice Layden-Stevenson has quickly become one of the Court’s IP specialists. She has authored the decisions in several recent cases including Cheung and Lilly, among others.

Sign up for the 2011 patent agent examination

Thu, 25 Nov 2010 16:55:00 -0500

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 the provisions of subsection (2) of section 14 of the Patent Rules, notice is hereby given that the 2011 examination will be held on April 12, 13, 14 and 15, 2011. 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 2 of section 12 of the Patent Rules and pay the prescribed fee. The deadline to apply, submit the affidavit or statutory declaration and pay the fee is November 30, 2010. When applying, it is essential to indicate which paper(s) will be written.

Additional information on the patent agent exams is available on this CIPO page.

Amazon 1-click patent headed to the Cdn. Federal Court of Appeal

Thu, 25 Nov 2010 16:41:00 -0500

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 government raises a number of grounds of appeal including:

- Justice Phelan erred in his approach to the the definition of “invention” in the Patent Act; and

- he erred in characterizing the 1-click invention.

Interestingly, some commentators have pointed out that the government has not directly appealed whether business methods are automatically excluded from patentability (he said they weren’t - business methods could be patentable).

In response, on November 24, 2010, Amazon filed a Notice of Appearance, contesting the government’s appeal. In my view, Amazon ought to have considered filing a cross-appeal instead, if it was interested in a judgment to have the patent issued immediately. Perhaps they will take the position that Justice Phelan’s decision was perfect and should not be disturbed.

The next steps are the filing of appeal books, followed by appeal memos, and then a hearing before the Federal Court of Appeal justices. Of course, there may be some pre-appellate motions which may delay the typical appeal which takes 6-12 months to get to a hearing. The hearing will probably last 1 day.

Meanwhile, the Canadian Patent Office has not, to my knowledge, issued any public comments on the decision or appeal. They have not reversed their prior guidance, even though much of it on this topic has been invalidated by the Court.

Federal Court harshly rejects Patent Office guidance

Thu, 14 Oct 2010 14:36:00 -0400

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 (as discussed previously). The hearing took place in April, 2010 in Ottawa.

Justice Phelan’s decision released today was quite critical of the Canadian Patent Office. The decision accuses the Office of being “misguided”, making “assumptions” and many “fundamental errors” in relation to the law on patentable subject matter, for exceeding its jurisdiction in rejecting business method patents, and for “ignoring” the distinctions between Canadian and foreign laws on these topics.

The judgment is a tour de force, crossing the landscape of Canadian, European and American decisions. In a de novo review of the Patent Office’s rejection of the patent application, the Court made the following key rulings.

Canadian law governs. “The Commissioner is bound by Canadian patent regime and its interpretation by the Courts. On this she has no discretion. International jurisprudence, and certainly the policies advocated therein, is not determinative, but at most a potential guide when applied correctly and mindfully. As becomes evident, many of the Commissioner’s errors stem from her adoption of a policy role and the importation of policies not concordant with Canadian law.”
Impermissible to analyse “substance” and “form” of the patent claims. “Over the past ten years, the Supreme Court has made it clear that an invention is defined by the claims, and that these are to be interpreted in a “purposive manner”… Instead of relying on these, now basic, principles of claim construction, the Commissioner returns to language such as “form and substance” and “what has been discovered” as articulated in earlier case law. Although the Commissioner attempts to confine this analysis to patentable subject matter, a return to ‘form and substance’ language, no matter what the context, is confusing and unnecessary. Further, it represents a departure from the clear direction of the Supreme Court to apply purposive construction universally.”
An “art” under the statute is to be given an expansive reading. ”The Commissioner’s articulation of the test for art is too restrictive in requiring, as discussed in greater detail below, that the knowledge in question be scientific or technological in nature. Further, her application of the test suggests that the goods themselves must be changed in some way. Her interpretation of practical application does not take into account a wider definition of physical, “change in character or condition” or the concrete embodiment of an idea.”
A general exclusion of business methods is improper. ”The approach in the USA, Australia, and as it ought to be in Canada, makes an eminent amount of sense given the nature of our legislation. It allows business methods to be assessed pursuant to the general categories in s. 2 of the Patent Act, preserving the rarity of exceptions. It also avoids the difficulties encountered in the UK and Europe in attempting to define a “business method”. There is no need to resort to such attempts at categorization here. Contrary to what the Commissioner suggests, to implement a business method exception would be a “radical departure” from the current regime requiring parliamentary intervention.”
No “technological” requirement. ”Even if patents generally concern the protection of advances in technology broadly defined, it is difficult to see how introducing this sort of technological test into the Canadian patent system would do anything but render it overly restrictive and confusing. It would be highly subjective and provide little predictability. Technology is in such a state of flux that to attempt to define it would serve to defeat the flexibility which is so crucial to the Act.”

After applying the correct legal principles to the case, the Court was reluctant to order the issuance of the patent, as it was not equipped to assess the other validity issues (novelty, obviousness, utility). The Court ordered the decision below to be quashed and sent the case back for expedited re-examination with the direction that the claims constitute patentable subject matter.

A further appeal to the Federal Court of Appeal is possible.

If no appeal is taken, then, in view of the Court’s decision in Belzberg, which rejects a practice of endless examination, expect to see amazon.com’s patent issue sooner rather than later.

Also, if no appeal is taken, expect to see the Patent Office scrap its recent guidance on computer-implemented inventions, as well as its guidance on patent eligible subject matter. As predicted, this decision, unless reversed, makes the Office’s guidance obsolete.

The Office finalized some of this guidance in full knowledge that the amazon.com case was under reserve. To some, this suggests that the Office may dig in and pursue an appeal, but this will be a challenge given the tone and language of today’s Court decision.

New guidance re computer-implemented inventions

Fri, 01 Oct 2010 15:39:00 -0400

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 used as an alternative to flowcharts;
delete certain commentary regarding “essential elements” of a claim; and
clarify that system claims usually refer to machines.

This final version of the chapter, like the pre-consultation version, borrows concepts and terms from foreign jurisdictions, i.e. problem/solution approach and inventive step developed in Europe.

Interestingly, during the consultation, the US Supreme Court handed down the landmark Bilski opinion (holding that the machine-or-transformation test is not the only test for patent eligible subject matter) but this did not seem to find its way into the Canadian chapter.

The Office had been urged by some stakeholders to wait for Justice Phelan’s forthcoming decision in the Amazon 1-click appeal. This decision has been under reserve since the hearing on April 20, 2010. Should the Court re-write the legal foundation for the guidance, the Office’s new guidance on computer inventions may become obsolete very soon.