Unlocking Efficiency: Fintech Patent Success in Canada
June 18, 2024
In Canadian patent law, the determination of the “actual invention” is a relevant and necessary question in assessing patentable subject matter. Generally, a computer is only considered part of the actual invention if running an algorithm on the computer improves the computer's efficiency (for example,…
Read MoreIntellectual Property Funding Support for Companies in Ontario
March 18, 2024
Strategic Intellectual Property (IP) management is an important factor in a company’s success. Protecting IP can help attract investors, fend of competitors, and expand your market. The biggest hurdles for companies, especially startups, when it comes to IP management is the combination…
Read MoreSmall Entities Just Got Bigger
February 06, 2024
On January 1, 2024, Canada updated the definition of a small entity to one that employs fewer than 100 employees from one that employs 50 employees or less. This update may now allow more companies to qualify for small entity status and begin paying small entity fees. Small entity…
Read MorePatentability Searches: Weighing the Pros and Cons and Exploring Recent Developments
July 24, 2023
In the dynamic world of intellectual property, patents play a crucial role in safeguarding innovation and encouraging technological advancements. One possible step in the patenting process is conducting a patentability search, also known as a prior art search, which involves assessing the novelty…
Read MoreAmendments to Canada’s Patent Rules
June 23, 2023
Introduction On June 21, 2023, amendments to Canada’s Patent Rules were published. The amendments introduce several significant changes to patent practice in Canada. The most noteworthy change is a substantial increase (25%) in government patent fees that is set to take…
Read More2022 Patent Appeal Board Statistics
March 01, 2023
There has been a reduction in the number of computer-implemented inventions reviewed by Canadian Patent Appeal Board (“PAB”) as revealed in the 2022 statistics. Despite the reduction, recent court developments have likely increased the overall patentability of computer-implemented invention in Canada. In…
Read MoreCanadian Supreme Court confirms powerful remedy for patentees
November 21, 2022
One of the advantages of a Canadian patent is that Canadian patentees have the option of electing an “accounting of profits” instead of damages when pursuing an infringer. This remedy can result in a huge award to the patentee in the right circumstances. Rather than compensating…
Read MoreThe Importance of Inventorship
November 04, 2022
A patent is invalid unless it lists the true inventors of the claimed invention. Should an Applicant notice that a patent application has an incorrect or incomplete list of inventors, they should take action immediately. In cases where a patent application is pending, the Applicant may…
Read MoreMajor overhaul of Canadian patent regulations
June 22, 2022
Just three years after making significant modifications to the Patent Regulations, Canada is again making major changes to the rules governing patent examination. This time, the changes will drastically impact filing and prosecution strategies for applicants. The published amendments may…
Read MoreThe Curious Case of Benjamin Moore
June 20, 2022
The Canadian jurisprudence on patentable subject matter has evolved since the Supreme Court of Canada’s pronouncements in Free World Trust and Whirlpool, but clarity of guidance regarding eligibility has remained elusive for patent rights owners and practitioners. The Federal Court’s…
Read More2021 Patent Appeal Board Statistics
March 22, 2022
Patent applicants with computer-implemented inventions may find some reassurance in the 2021 Canadian Patent Appeal Board (“PAB”) statistics. Despite a general sense that the PAB is hostile to these types of inventions, the statistics reveal that computer-related subject matter rejections are over-turned…
Read MoreFurther Analysis on Patenting Computer-Implemented Inventions in Canada
June 22, 2021
The question of whether a claimed invention includes patentable subject matter often entails a complex and multi-pronged analysis of the language of the patent specification. In late 2020, the Canadian Intellectual Property Office provided guidance in its Practice Notice, “Patentable Subject-Matter…
Read MoreNew Patent Appeal Board decisions shine light on CIPO’s application of Choueifaty to patentable subject matter rejections
May 19, 2021
The Canadian Patent Appeal Board (PAB) has now started releasing Commissioner’s Decisions rendered since the Federal Court’s decision in Choueifaty v. Canada (AG), 2020 FC 837, and since the Office issued…
Read More2021 Budget
April 20, 2021
The Canadian government’s first budget in two years (A Recovery Plan for Jobs, Growth, and Resilience) has been released. The 2021 Budget includes key proposals for addressing the economic impacts of the COVID-19 pandemic across many sectors. Notably, the total footprint…
Read MoreSoftware inventions get huge boost from Federal Court of Canada
August 26, 2020
The Federal Court of Canada just delivered a stinging rebuke to the Canadian Intellectual Property Office (CIPO) for its handling of patentable subject matter rejections in Choueifaty v. Attorney General of Canada,…
Read MoreRequest for Examination under the New Patent Rules
February 11, 2020
On October 30, 2019 the new Canadian Patent Rules came into force. The new Patent Rules include a number of significant changes, including changes related to requesting examination of applications. When a patent application is filed in Canada, either directly or under the PCT,…
Read MorePatent Appeal Board Pilot Program for High-Tech Inventions
January 15, 2020
The Canadian Patent Office has recently announced a new pilot project related to the Patent Appeal Board (“PAB”). The pilot project begins January 20, 2020 and will be in effect for a period of 12 months. The new pilot project deals with high-tech (electrical/computer/software) applications…
Read MoreChanges to Canada’s Patent Rules: Examiner’s Reports
January 14, 2020
On October 30, 2019, the new Canadian Patent Rules came into force. The new Patent Rules include a number of significant changes. One such changes relates to prosecution timelines. Examiner’s Reports issued before October 30, 2019 For…
Read MoreChanges Regarding Patent Allowance
December 19, 2019
On October 30, 2019 the new Canadian Patent Rules came into force. The new Patent Rules include a number of significant changes, including changes related to the allowance of applications. When a patent application is allowed by CIPO there is a statutory requirement to pay a fee…
Read MoreLate National Phase Entry in Canada
November 26, 2019
On October 30, 2019, the new Canadian Patent Rules came into force. The new Patent Rules include a number of significant changes. One such change relates to the possibility of late national phase entry for PCT applications. Canada requires national phase entry from PCT applications…
Read MoreCanada's Bill C-86: Impact on Canadian Patent Law
January 24, 2019
Canada’s Bill C-86, the Budget Implementation Act, 2018, No. 2 (the “Bill”), received Royal Assent on December 13, 2018. The Bill, which implements the federal government’s 2018 budget, brings a wide array of changes to Canada’s intellectual property regime. In particular, a number of noteworthy…
Read MoreNew options for filing industrial designs
January 16, 2019
Industrial designs, or design patents in the United States, provide protection for visual design of an item. Industrial designs can, therefore, serve as a valuable form of IP protection and may allow protection of aesthetic or “non-functional” aspects of a product that distinguish it in the marketplace…
Read MoreTrademark changes will happen June 17, 2019
November 28, 2018
We finally have a date: June 17, 2019. That is the date on which a huge number of changes to Canadian trademark law will finally take effect. Ever since the changes were first introduced in legislation in 2014, we have been talking with clients about the nature…
Read MoreChanges to the Canadian Trademark Regulations
May 21, 2018
The Canadian trademark regime is about to undergo significant changes in the coming months. The changes are motivated primarily by a desire to modernize the Canadian IP system by joining several international treaties, namely the Singapore Treaty on the Law of Trademarks (Singapore Treaty),…
Read MoreUsing the Patent Cooperation Treaty in your Patent Filing Strategy
May 08, 2018
Does filing a Patent Co-operation Treaty (PCT) application lead to an “international patent”? The short answer is no. But with some strategic consideration, a patentee can secure patent rights for protecting the worldwide realities of their business. The PCT is a multi-lateral treaty allowing…
Read MoreDesign Protection Should Not Be Overlooked
April 25, 2018
There are many options for intellectual property protection. One form of IP that is sometimes overlooked is design protection. Design protection can be a valuable part of an overall IP strategy. It can also act as a cost-effective alternative to utility patent protection in some scenarios. Design…
Read MoreCanada: next hotspot for blockchain patents?
February 06, 2018
Canada has always had a large mining industry. Fully 57% of the global mining financings in 2016 were done on the Toronto Stock Exchange (TSX) and TSX Venture Exchange (TSXV). But a new type of mining industry is setting up in Canada: Bitcoin…
Read MoreBenefits of a Canadian Patent Filing for High-Tech Innovators
January 16, 2018
Treatment of computer-implemented inventions by the Canadian Intellectual Property Office (CIPO) has remained consistent for many years. CIPO’s predictable treatment of computer-implemented inventions has likely contributed to the uptick in computer-implemented invention patent filings since 2011. …
Read MorePatenting Artificial Intelligence
January 05, 2018
Artificial intelligence (AI) and its applications are the focus of many emerging companies and many new products across a diverse number of fields. As such, it’s natural to consider whether patent protection may be available for various AI innovations. First, as with any other kind of invention,…
Read MoreDon’t Cut Corners on Provisional Patent Filings
November 15, 2017
Patent offices often warn the public about blatant scams such as fake payment notifications sent by third parties, but do not generally warn the public about other less-overt rip-offs or pitfalls. In many cases, practitioners that simply take a summary of an invention prepared by an inventor and…
Read MoreBroadest Reasonable Interpretation Unreasonably Broad?
October 31, 2017
In US patent law, during patent examination, claims are to be given the broadest reasonable interpretation (BRI) consistent the specification. A pair of recent decisions of the US Federal Circuit explored this principle in the context of inter partes review and ex parte…
Read MoreProposed Amendments to the Patent Rules
October 12, 2017
The Canadian Intellectual Property Office (CIPO) recently engaged in public consultation on proposed amendments to Canada’s Patent Rules. The proposed Patent Rules, once implemented, will allow the coming-into-force of amendments to Canada’s Patent Act which, amongst other…
Read MoreFurther Discussion of Subject Matter Eligibility by Patent Appeal Board
September 07, 2017
On the heels of its decisions relating to patentability of graphical user interfaces (previously discussed here) from late last year, the Canadian Patent Appeal Board (PAB) has provided further insight on the issue…
Read MoreWho owns an invention created by an employee?
August 21, 2017
When an employee conceives of an invention, who owns it? The employer or the employee? In Canada the general rule is that the employee owns his or her inventions in the absence of an agreement the contrary. Many employers address this through ensuring that employment agreements include a…
Read MoreAre trademarks in association with computer software goods evolving with technology?
August 11, 2017
Computer software companies are cognizant of evolving challenges relating to patentable subject matter. Computer software companies should also consider managing trademark portfolios by evaluating whether existing trademark registrations may be at risk of expungement. Under the current Trade-marks…
Read MoreWhat about Schlumberger?
July 25, 2017
For decades, Schlumberger Canada Ltd v Canada (Commissioner of Patents), [1981] 56 CPR (2d) 204 (FCA), was the only Canadian decision on computer-implemented inventions. In that case, the court upheld the Commissioner’s rejection of an invention implemented by way of software. The Federal…
Read MoreRecent Decisions Increase Canada’s Appeal as a Patent Filing Jurisdiction
July 11, 2017
In recent weeks Canadian courts have been busy issuing patent-related decisions and patent filers should take notice of some interesting developments which may enhance the appeal of Canada as a filing jurisdiction. Two decisions which were released to the public in the last two weeks make…
Read MoreUnintended Effects: Impact of Making Changes to a U.S. Provisional when filing a Regular Patent Application
May 31, 2017
Provisional patent applications (PPAs) are often filed as part of a patent portfolio filing strategy. A PPA is not a regular patent application. A PPA will not be examined by any patent office and will not result in a granted patent. PPAs are unique to the United States patent regime. For example,…
Read MoreExpediting Patent Prosecution in Canada
May 17, 2017
In Canada, as in many other jurisdictions, a patent application is only examined upon request. To avoid abandonment of an application, a request for examination must be made within five years of the filing date of the application. Applications are generally examined sequentially according to the order…
Read MorePre-filing commercialization can undermine your patent rights
May 09, 2017
Most people are familiar with the principle that if you publicly disclose your invention you might lose your right to seek patent protection for that invention. Canada, the U.S. and a handful of other countries provide a bit of a grace period, but in general people try to ensure that they file a patent…
Read MorePotential Perils of Relying on Unregistered Intellectual Property Rights
May 02, 2017
Companies sometimes decide to forgo registering intellectual property rights and hope that they will have some protection under the law without having formally registered such rights. A recent case highlighted some of the perils in attempting to rely on unregistered intellectual property rights to…
Read MoreChanges to Canadian Industrial Design Practice
March 28, 2017
Industrial design registration remains an underutilized form of intellectual property protection. In Canada, an original industrial design can be registered to protect the look and appearance of a finished article. Unlike a patent, which protects the way an article is used or functions, an industrial…
Read MoreInnovation in the 2017 federal budget – all talk, no action
March 22, 2017
The Canadian federal government released its 2017 budget on March 22, 2017. It was billed in pre-budget leaks as the “innovation” budget. Since coming to power in 2015, the current Liberal government has been fond of using the word “innovation” as often as possible in its policy statements and marketing. …
Read MoreThe trademark “Green Rush” is on in Canada
March 15, 2017
While marijuana has been legal for medicinal purposes in Canada since 2001, the marijuana industry has only recently seen a high level of trademark activity. Annual trademark filings for marijuana-related goods and services began accelerating in 2012 and there was much activity from 2014 to 2017. …
Read MoreAttention Content Creators: Technological Protection Measures Hold Weight in Canada
March 07, 2017
In 2012, the Copyright Act was amended to include new provisions outlining prohibitions for circumventing technological protection measures (“TPMs”). The recent decision of Nintendo of America Inc v King, 2017 FC 246, is the first time the Federal Court of Canada substantively considers…
Read MoreKeyword Advertising: When “Sponsored Links” Can Get You in Hot Water
February 28, 2017
With catchphrases such as “search engine optimization”, “AdWords”, and “pay-per-click” dominating the online marketing vernacular, it is helpful for commercial entities and marketing professionals to be cognizant of potential trademark law issues that may arise when engaging in promotional activities.…
Read MoreDo FinTech Patents Have a Future?
February 22, 2017
Every day brings a new flurry of articles about FinTech (“financial technology”) startups and their potential to be disruptive forces. Traditional banking and financial industry players are said to be at great risk. However, many of them have seen this coming and are preparing to defend their turf.…
Read MoreShould a Patent Applicant File Prior Art at the Canadian Intellectual Property Office?
February 14, 2017
In the United States, “[e]ach individual associated with the filing and prosecution of a patent application … [has] a duty to disclose to the Office all information known to that individual to be material to patentability” (see e.g., 37 CFR 1.56, 1.97, 1.98). Prior art is filed with the United States…
Read MoreTreatment of GUI Patent Claims in Canada
February 07, 2017
Canadian patent examiners sometimes object to graphical user interface claims on the basis that they are unpatentable since they have “purely intellectual or aesthetic significance.” There is an old line of decisions that hold that something having solely intellectual or aesthetic significance is…
Read MoreTrade Secret and the Prior Use Defense
May 14, 2014
Like many companies and inventors, you might choose to forego patent protection and instead rely upon trade secret protection. There are some wrinkles to trade secret protection that should be kept in mind when making that choice. Trade secret is a perfectly legitimate approach to consider,…
Read MoreHow much does a patent application cost?
May 06, 2014
This is often the first question we get from prospective clients. There is no question that writing and filing a patent application – properly – is expensive. Anyone that explores the possibility of seeking patent protection should be realistic about the timelines and the cost. The preparation…
Read MoreSame trade-mark and similar goods? No problem if sold through different channels of trade
January 15, 2014
This case illustrates the potential advantages of explicitly excluding certain goods from your trade-mark application. Let’s suppose you are a tire manufacturer with the registered mark POTENZA for “tires, tubes and wheels” that you have held for 30 years. A high-end Italian bicycle…
Read More2014: The US Supreme Court wrestles with patents
January 14, 2014
Over the past few years, IP has been in the spotlight south of the border. It seems that not a day goes by without a patent, trade-mark or copyright story in the popular press (e.g. see smartphone wars). Changes in the law have also been coming at a fast pace. Witness the US implementation…
Read MoreSome 2013 hints of where we’re headed on computer-implemented inventions in Canada
November 28, 2013
2013 saw the release of four Commissioner’s Decisions (Patent Appeal Board cases) that offer a glimpse of how the Amazon.com, Inc. v. Canada decision of the Federal Court of Appeal is being applied by the Canadian patent office. The decisions largely turn upon claim construction. If the…
Read MoreFederal Court of Appeal splits over anticipation in Wenzel v. National Oil
January 27, 2013
The Federal Court of Appeal recently released a split decision on the issue of anticipation through prior use of an invention. The majority affirmed the trial-court decision that the public must simply have the theoretical opportunity to access the prior art invention in order to constitute an anticipatory…
Read MoreRemoved as inventor with no right to submit evidence: Baksh v. ProbioHealth
December 07, 2012
Baksh v. ProbioHealth, LLC, 2012 FC 1388, is a peculiar case about dealing with inventorship disputes in a Canadian patent application. All of this could have been avoided by ensuring that proper…
Read MoreViagra patent invalidated: SCC suggests patentee “gaming” the patent system
November 09, 2012
Yesterday, the Supreme Court of Canada (SCC) released a decision that underlines a patentee’s disclosure requirements under the Patent Act. This decision is another in a…
Read MoreUpdate: en banc re-hearing for CLS Bank v. Alice
October 16, 2012
In a previous post, here, we noted the sharp division in the US Court of Appeals for the Federal Circuit on the issue of patent-eligible subject matter…
Read MoreContinued division over “abstract ideas” test in the CAFC: CLS Bank v. Alice Corp.
July 10, 2012
The US Court of Appeals for the Federal Circuit is again divided on the test for patent-eligible subject matter, with the majority and minority exchanging biting comments. The CAFC decision in CLS…
Read MoreTwitter’s IPA: does it live up to the hype?
April 17, 2012
Twitter is being lauded for its “revolutionary” Innovator’s Patent Agreement (IPA), on the basis that it purports to “put ownership of patents back in the hands of the inventors”. But what does it actually do? Twitter posted the IPA recently
Read MoreAn “object” clause is not necessarily a promise, says Federal Court of Appeal
April 17, 2012
It used to be common practice to include an “object clause” in a patent specification to clearly set out an over-arching objective of the invention. Many granted patents have multiple object clauses, setting out a number of goals for the invention. This practice died away as patent drafters came…
Read MoreOpen war-of-words at CAFC: Bard Peripheral Vascular v. W.L. Gore & Associates
February 10, 2012
Newman, J. and Gajarsa, J. engage in open warfare in their respective reasons in Bard Peripheral Vascular v. W.L. Gore & Associates. The judgment is a Court of Appeals for the Federal…
Read MoreBroken promises: Eurocopter v. Bell Helicopter
February 09, 2012
The judgment of Martineau J. in Eurocopter v. Bell Helicopter Textron Canada Limitée, 2012 FC 113, was released recently. It represents a win for Eurocopter in that Bell…
Read MoreA fuzzy line being drawn by the CAFC to circumscribe “abstract ideas”
January 26, 2012
A trio of recent Court of Appeals for the Federal Circuit (CAFC) cases, including last week’s decision in DealerTrack v. Huber, give some insight into what the Court considers a patentable…
Read MorePlavix patent from 2008 SCC Sanofi judgment now invalidated
January 12, 2012
In 2008 the Supreme Court of Canada handed down one of the most significant patent law judgments of the past decade in Apotex v. Sanofi, 2008 SCC 61. That judgment set the modern tests for evaluating…
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