Only 16 Days Left for Registered Trademark Owners to Opt Out of “.XXX” domain

A new “.xxx” top level domain has been approved specifically for use by the adult entertainment industry.

Registered trademark owners who are not members of the adult industry and who wish to block their trademarks from registration as a .xxx domain have until the end of the Sunrise B period on October 28th, 2011 to apply to opt-out.

Any names that are successfully blocked through Sunrise B will direct to an informational page indicating that the domain name is unavailable for registration.

If you wish to reserve your registered trademark in order to ensure it is not registered as a domain name by others in .xxx, you may do so by submitting an application to the ICM Registry through an accredited Registrar (see list here).

The general availability period commences December 6th, 2011, after which all remaining .xxx domain names will be registered on a first come, first serve basis. Further information on the ICM Registry’s .xxx launch plans and policies is available here.

Protecting Plant Varieties in Canada

Protection for new plant varieties has been available for just over twenty years in Canada. As new technologies are sought for increasing and improving crop production, Plant Breeders’ Rights help to encourage such innovation by rewarding plant breeders with exclusive rights to sell, and to produce for sale, the reproductive material of their new plant variety.

Plant Breeders’ Regime in Canada - Differences

Canada is a member country of the International Union for the Protection of New Varieties of Plants (UPOV). Plant breeders and applicants should be aware, however, that Canadian laws do not currently follow the latest version of the UPOV Convention and therefore there are some differences in the protection afforded to plant varieties in Canada.

First, there is no grace period for disclosure of the reproductive, or propagating, material of plant varieties. To obtain a grant of a Plant Breeders’ Right in Canada, the propagating material of a new plant variety must not have been previously sold in Canada before filing the application with the Plant Breeders’ Rights Office. The definition of “sell” under the Plant Breeders’ Rights Act is rather broad and includes:

“agree to sell, or offer, advertise, keep, expose, transmit, send, convey, or deliver for sale, or agree to exchange or to dispose of to any person in any manner for a consideration.”

In addition, the Act defines “advertise”, in relation to a plant variety, even more broadly to include bringing to the notice of the public any communication with the intention of promoting the sale of the propagating material of the plant variety.

If the plant variety was sold outside of Canada, then there is a six- year grace period for woody plants and their rootstocks, while other varieties have a four-year grace period before filing.

Secondly, the Plant Breeders’ Right lasts for eighteen years from grant.

Furthermore, the protection afforded in Canada does not extend to conditioning (cleaning and seed treating) and stocking (saving, storing or possessing) the propagating material.

Eligibility for Protection and Filing Requirements

In order to be eligible for protection in Canada, the new plant variety must be distinct, uniform and stable. A variety is distinct if it has one or more characteristics that are measurably different from all other varieties which are known to exist within common knowledge at the time of filing the application. A variety is uniform when the relevant characteristics are homogeneous, allowing for variation that is predictable and commercially acceptable. Finally, a variety is stable when it is true to its description over successive generations.

The plant breeder, its employer, or a legal representative of same can apply for a Plant Breeders’ Right, provided they are citizens or residents of a member country of the UPOV. Foreign applicants filing into Canada will need to appoint a Canadian agent. In either case, an assignment and/or an authorization form must accompany the application.

Other requirements for the application include a description of the origin and breeding history of the plant variety, the manner in which the propagating material will be maintained, a description of the variety, and a statement regarding the uniformity and stability of the variety. The plant variety must be associated with a proposed name, or denomination, as chosen by the applicant and approved by the Examiner. Apart from vegetatively propagated crops, samples of the propagating material are required. Documents supporting the distinctness of the variety, such as photographs and a detailed description of the characteristics, are needed. The results of comparative tests and trials to demonstrate that the plant variety is a new variety are also required.

Procedural Considerations to Obtain Protection

The examination process involves a formal review for compliance with the Plant Breeders’ Rights Act and Regulations, and a site examination of trial results comparing the variety with reference varieties. Trials must be done in Canada and scheduling for the site examination begins every May 1 for the tests taking place during the summer of that year. It may be possible to have this testing completed through the purchase of foreign tests and trials from Plant Breeders’ Rights Offices in UPOV member countries if accepted by the Canadian Office.

Publication of the description of the variety in the Plant Varieties Journal allows for third parties to oppose. If there is no opposition, then a Certificate of Registration is issued. Maintenance fees are due annually following the grant of the Plant Breeders’ Right.

Consider Plant Breeders’ Rights

Although there may be differences in the extent of protection in Canada under the Plant Breeders’ Rights regime, with Canada’s agricultural tradition, Plant Breeders’ Rights should not be dismissed as an option to provide the benefits of access to foreign varieties and the development of Canadian innovation.

By Susan Chao 

No Excuses. Canada Must Deliver New Copyright Legislation To The International Community

Now that Stephen Harper has achieved majority with an unexpected May 2nd win, there is no reason why the long awaited amendments to Canada’s Copyright legislation should not be passed into law. Calls for the reintroduction of the legislation that died with the dissolution of the 40th Parliament have come from many quarters including from John Manley, President of the Canadian Council of Chief Executives. In his recent letter to the Prime Minister, the former Liberal Deputy Prime Minister urges the new government to “expeditiously” get on with the task. Readers will recall that the issue of modernization of Canada’s Copyright regime was a top of the list issues for US President Obama when he met with the then minority government leader Harper in February of this year. The American concern was that Canada was seen as a copyright pirate’s lair responsible for vast sums being lost to the U.S. entertainment industry. Canada’s advanced communications capacity, its sophisticated technology and the integrated North American English speaking market where cultural creation and its consumers know no borders present a significant challenge to our legislators. The pressure from the Americans has not abated and the expectations are for fast action.

The Conservative government should not succumb to the temptation of rushing Parliament to a solution to make the pain go away. No matter what solution is advanced, they will not be able to satisfy everyone. Indeed efforts to change the law, which began under a Liberal administration more than a decade ago, have all been unsuccessful. As the Minister of Industry, Tony Clement, said when he introduced the latest attempt in the last Parliament, the main challenge is finding an equitable balance “between consumers who want access to material and artists and innovators who want to be and should be rewarded for their creativity”. That balance is difficult to achieve and for Canada the difficulty is made more acute because of the need to protect Canadian artists as well as Canadian consumers while answering American concerns.

The new majority government should take as much time as they need to bring forward progressive legislation in a field that is perhaps the most dynamic and fast changing of any in the generation of intellectual value added. The long legislative process to which amendments to the existing legislation has been put should not be seen as a negative. On the contrary, a lot of thought has gone into amending the Copyright Act from the very beginning and we should take full advantage of the wisdom that the process has produced. Surely the evidence before the parliamentary committee in three attempts at passage will have provided many nuggets of wisdom.

Having trailed our major trading partners in the development of modern copyright laws for many years, we are in a position, if we are wise and judicious in our choices, to set the new standard of international copyright law. In doing so we will be serving the national interest through the encouragement of Canadian cultural product while satisfying our international obligations including answering American concerns.

By the Hon. Jean Jacques Blais, P.C., Q.C. 

Supreme Court Decision Clarifies Relationship Between Common Law and Registered Trade-mark Rights

MASTERPIECE INC. v. ALAVIDA LIFESTYLES INC.

Background and Judicial History

Masterpiece Inc. and Alavida Lifestyles Inc. (“Alavida”) are both involved in the retirement residence industry.

Masterpiece Inc. claimed to have used unregistered trade-marks since 2001, all of which contained the word "masterpiece", and some of which contained the word "living". On December 1, 2005, Alavida applied to have the mark "Masterpiece Living" registered on the basis of proposed use. The application for the mark was unopposed, subsequently allowed and registered. In 2006, Masterpiece Inc. applied to register the marks, "Masterpiece" and "Masterpiece Living". Masterpiece Inc.’s applications were denied by the Canadian Intellectual Property Office in September 2006 on the basis that they were confusing with Alavida’s previously submitted application for the mark "Masterpiece Living". Thereafter, Masterpiece Inc. brought an application to the Federal Court to expunge Alavida’s registered trade-mark, on the basis of confusion. The Federal Court dismissed the application and subsequently the Federal Court of Appeal dismissed the appeal of the lower court decision. Masterpiece Inc. further appealed to the Supreme Court.

Decision:
The appeal is allowed and Alavida’s registration should be expunged.

Reasons for Judgment of the Supreme Court:
Some use is enough

The trial judge found that the use by Masterpiece Inc. of ‘Masterpiece’ was not extensive during the relevant period 2001-2005, was rather “sporadic” and little of the evidence supported the use of ‘Masterpiece’ in respect of retirement residence services. The trial judge did find that this sporadic use was “some use” but ultimately concluded that there was no likelihood of confusion. The Supreme Court found that “some use” was sufficient to make a finding of a likelihood of confusion. In particular, the Supreme Court relied upon Masterpiece Inc.’s use of ‘Masterpiece the art of living’ despite the evidence of Alavida that the only possibly relevant documents filed in evidence by Masterpiece Inc. which illustrate the term ‘Masterpiece – the art of living’ were two brochures where ‘Masterpiece – the art of living’ was on the back page of the brochures and two articles in the Medicine Hat News from the summer of 2004.

The location where a mark is used is NOT relevant when considering the likelihood of confusion between a registered trade-mark and a prior unregistered one

The Court confirmed that in assessing trade-mark infringement under s.19 or entitlement under s. 16of the Trade-marks Act, the test for the likelihood of confusion is the same. A hypothetical test is to be employed where the marks, if used in Canada, are to be assumed to be used in the same area.

Look beyond actual use to the registration

The Supreme Court confirmed that in completing the confusion analysis it is improper to look only at actual use and not what is permitted by a trade-mark registration.

The expense of goods and services do not displace the first impression test

The trial judge acknowledged in his reasons that in order to complete the confusion analysis, “one must consider the first impression in the mind of a casual consumer somewhat in a hurry who has an imperfect recollection of another trade-mark.” In his conclusion, the trial judge, when considering the cost of the service in issue, noted: “The nature of the business in which the marks in issue have been used suggests that consumers will be careful in choosing a provider. They are not likely to make choices based on first impression or be easily confused about the source.”

Under s.6(5) of the Trade-marks Act, the court is entitled to consider all the surrounding circumstances in determining a likelihood of confusion. It is possible to interpret the trial decision as contemplating that a hurried consumer, upon encountering an expensive ware or service, may deliberately remain undecided as to the source of that ware or service and investigate further.
The Supreme Court concluded otherwise. It concluded that the trial judge changed the confusion test from one of first impression of a trade-mark to a test of consumers who will be unlikely to make choices based on first impression. The hypothetical 'hurried consumer' of the first impression test remains alive and well as result of this decision, although the ‘hurried consumer’ is not a legislative construct. Moreover, the Supreme Court rejected the possibility of a modified first impression test which could have otherwise excluded a ‘hurried consumer’ for an expensive service.

It is this author’s opinion that s.6 requires that a likelihood of confusion for a trade-mark may only exist if there is use of a trade-mark. For a service, trade-mark use occurs if the trade-mark is used or displayed in the performance or advertising of available services. However, for wares, the use of a trade-mark occurs at the time of the transfer of the property and as such, there is a conundrum. The Supreme Court concluded "it is confusion when they encounter the trade-mark that is relevant." [emphasis added] If there is no transfer of property, and as such, no use of a trade-mark with respect to wares, can there be a finding of confusion under the Trade-marks Act, regardless of first impression?

Expert evidence should only be permitted where testimony is likely to be outside the experience and knowledge of the judge

The Supreme Court reiterated the requirements to be met before expert evidence is accepted in a trial from R. v. Mohan, [1994] 2 S.C.R. 9. The Supreme Court emphasized that no expert evidence should be permissible unless it is “likely to be outside the experience and knowledge of a judge.” The Supreme Court sent a clear message that surveys in trade-mark cases should be used sparingly and suggested in obiter that “[…] it would be salutary to have a case management judge assess the admissibility and usefulness of proposed expert and survey evidence at an early stage so as to avoid large expenditures of resources on evidence of little utility.”

For further information, please contact Scott Miller (smiller@mbm.com or 613-567-0762).

Read the Decision and Reasons for Judgment here.

IMPORTANT NOTICE: Expedited Examination Eligibility

APRIL 30th DEADLINE

Expedited Examination: Deadline to Request Reinstatement of Abandoned Applications

As noted in our newsflash of March 18, 2011, amendments to the Canadian Patent Rules relating to expedited examination of patent applications came into force on March 3, 2011. These amendments include:

• New Subsection 28(2), which states that the Commissioner will not advance an application for examination out of its routine order and will return to its routine order any application that has been advanced for examination if, after April 30th 2011, the Commissioner must extend the time fixed for doing anything or if the application has been deemed abandoned in accordance with Subsection 73(1) of the Patent Act.

In view of these amendments, the Canadian Intellectual Property Office (CIPO) has indicated that in order to preserve an application’s eligibility for expedited examination, an applicant whose patent application is currently abandoned must take the necessary steps to reinstate the application on or before April 30, 2011.

Accordingly, should any of your Canadian applications currently be abandoned and you wish to retain the option of requesting expedited prosecution in the future, these applications should be reinstated prior to the April 30, 2011 deadline. Should you wish for us to review the Canadian applications that we are currently handling on your behalf in order to determine whether any of these applications are presently abandoned and should be considered for reinstatement prior to the April 30th deadline, please contact us as soon as possible.

Expedited Examination: Shortened Time Limit for Responding to Office Actions

In a notice issued on April 14, 2011, the CIPO has advised that, in line with the objectives of expedited examination and in accordance with Paragraph 73(1)(a) of the Patent Act, the Commissioner has established a time limit of three (3) months to respond to an Examiner’s Requisition (Office Action) for those patent applications benefitting from expedited examination under Section 28 of the Patent Rules.

This time limit is considerably shorter than the 6 months currently provided and it should be noted that, in light of the above-noted amendments to the Patent Rules, either requesting an extension or allowing the application to go abandoned with subsequent reinstatement, will result in the loss of expedited status. Applicants with patent applications currently benefitting from the expedited examination procedure in Canada will, therefore, need to be prepared to respond promptly to Office Actions issued by the CIPO.

Newsflash | Changes to Expedited Examination in Canada

Changes relating to Expedited Examination in Canada came into force on March 3, 2011. These changes include:

1. Under current provisions to request examination, the Commissioner may advance an application for examination upon payment of a fee if the Commissioner determines that failure to advance the application is likely to prejudice the requester’s rights. A new provision has been added which allows the Commissioner to expedite the prosecution of an application when the invention is related to green technology. Under this new provision no additional fee is required. Rather, a declaration stating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources along with the request for expedited examination must be submitted. As there is limited guidance with respect to what constitutes green technology, should you be uncertain whether your technology is a green technology we recommend filing the request for expedited examination under the other existing provision available in order to avoid making a false declaration and triggering the possible consequences that may flow from this.

2. A restriction on the eligibility for expedited examination has also been introduced. In particular, new Section 28(2) states:

With respect to a request made under subsection (1) by an applicant, the Commissioner shall not advance the examination of the application out of its routine order and shall return to its routine order any examination that has been advanced if, after April 30, 2011,

(a) the Commissioner extends, under subsection 26(1), the time fixed by these Rules or by the Commissioner under the Act for doing anything in respect of the application; or

(b) the application is deemed to be abandoned under subsection 73(1) of the Act whether or not it is reinstated under subsection 73(3) of the Act.

Given this new restriction, should expediting allowance of an application be a priority to you, requests for extension of time or the abandonment of the application should be avoided.

Sold in New Jersey = Sold in Canada

In its first decision of 2011 (see Celgene Corporation v. Attorney General of Canada, 2011 SCC 1), the Supreme Court of Canada (“SCC”) clarified the meaning of “sold in any market in Canada” in the relevant provisions of the Patent Act giving the Patented Medicine Prices Review Board (“PMPRB”) its jurisdiction to regulate the prices of patented medicines in Canada. The only issue addressed by the SCC was whether the concept of “sold in any market in Canada” should be interpreted strictly in accordance with commercial law principles, or whether its definition should be responsive to the surrounding legislative context and purpose.

The appellant, Celgene Corporation, is based in New Jersey and distributor of the pharmaceutical drug Thalomid® (thalidomide). Thalomid is not marketed in Canada under a Notice of Compliance, but has been selling Thalomid since 1995 under the Special Access Programme (“SAP”), a program administered by Health Canada allowing access to drugs not otherwise available in a particular market for the treatment of “serious or life-threatening conditions where conventional therapies have failed, are unsuitable, or are unavailable either as marketed products or through enrollment in clinical trials” (similar to FDA’s Expanded Access Program). When a Canadian doctor places an order for Thalomid under the SAP, the drug is packed in Celgene’s facilities in the U.S. and shipped Free on Board (“FOB”) to the doctor in Canada. An invoice is then prepared in New Jersey, mailed to Canada and the doctor is directed to make a payment in U.S. dollars and mailed back to New Jersey.

Celgene obtained a Canadian patent in relation to Thalomid on April 6, 2004 and the PMPRB subsequently asserted that it had jurisdiction to request pricing information from Celgene. Although it initially provided some pricing information, Celegene subsequently took the position that the PMPRB did not have jurisdiction over the sales of Thalomid as the medicine was, in accordance with ordinary commercial law principles, “sold” in New Jersey not in Canada as required by the relevant provisions of the Patent Act which, as noted above, require that the medicine be “sold in any market in Canada” (our emphasis).

While acknowledging that the expression “sold in any market in Canada” lends itself to different interpretations, the SCC agreed with the PMPRB’s position that the legislative context and the consumer protection purpose of the Patent Act in regard to pricing support a conclusion that it should have authority over Celgene’s sales of Thalomid to Canadians through the SAP. According to the SCC, the PMPRB did not misinterpret the words “sold” and “selling” in rejecting the technical commercial law definition. Instead the PMPRB was properly guided by the consumer protection goals of its mandate, which is to ensure that the monopoly that accompanies the granting of a patent is not abused to the financial detriment of Canadian patients and insurers.

By Catherine Lemay

Recent Developments in the Political Front Regarding Compulsory Licensing

Brand name pharmaceutical companies may want to keep themselves abreast of recent developments in respect of compulsory licensing of patented medicines for humanitarian aid. Bill C-393, a private member’s bill, is currently working before the House of Commons and appears, at least on paper, intended to ease the requirements under Canada’s Access to Medicines Regime (“CAMR”) in order to facilitate compulsory licensing of patented medicines for export to developing countries.

The CAMR authorizes compulsory licensing of patented medicines, under specific prescribed circumstances, to manufacturers who wish to export patented medicines to developing countries. The CAMR was successfully used once, when Apotex Inc. received a compulsory license to export their drug, TriAvir, to Rwanda. Under the CAMR, every potential order is taken on a case-by-case, drug order-by-drug order, country-by-country basis and a company seeking a compulsory license under the CAMR must have unsuccessfully sought a voluntary license on reasonable terms from the patentee. A product exported under the CAMR must meet the same requirements for safety, efficacy and quality as those intended for Canadians and, as an anti-diversionary measure, the products exported under the compulsory license must have specific marking features to make them distinguishable from the patented versions available on the Canadian market to ensure that the drugs are not being diverted to unintended markets.

Proponents of Bill C-393 argue that the CAMR is filled with red tape making the process for generic manufactures unnecessarily cumbersome, expensive, and time-consuming, thereby needlessly restricting the ability of humanitarian groups and generic pharmaceutical companies to respond to the needs of developing countries. They argue that Bill C-393 will remove some of the red tape by introducing a one-license approach, thereby allowing applicants to obtain a compulsory license first, and that license would allow a company to supply drugs to any of the countries already covered by the existing legislation. The one-license approach would not allow countries to be disclosed in advance.

Opponents of Bill C-393, however, argue that it is unnecessary given that the CAMR has been successfully used and works. There is concern that the proposed changes under Bill C-393 will remove the necessary safeguards to mitigate the potential for corruption. There is also a concern that if Canada passes legislation that attempts to circumvent the brand name pharmaceutical industry’s control in the issuance of compulsory licensing relating to its patented products, in effect circumventing its patent protection, Canada will be viewed as a less desirable place to do business. There is also a concern that if brand name companies feel they are losing revenue through loosened requirements on the issuance of compulsory licensing, they might transfer that loss to the cost of their drugs.

Whether Bill C-393 has any teeth and passes into law is yet to be seen. One thing is, however, clear. The CAMR was developed in view of the delicate balance between having brand name pharmaceutical companies investing in research and development of new drugs and supporting humanitarian efforts through the accessibility to vital drugs at reasonable prices in developing countries. Similar to the development of the CAMR, Bill C-393 is likely to be hotly debated.

By Tanya Weston

Another Strong Win By MBM - Empresa Cubana Del Tabaco Trading Also As Cubatabaco v. Shapiro Cohen and The Registrar Of Trade-marks

This was an appeal from two decisions of the Registrar of Trade-Marks expunging two Cohiba cigars trade-marks.

The Court concludes that:

1. The new evidence submitted by MBM would have materially affected the Registrar’s decision with respect to whether the use of the COHIBA trade-mark for the sale of cigars and cigarillos constitutes use of “manufactured tobacco for smoking and chewing” as listed in the COHIBA trade-mark statement of wares;

2. Cigars and cigarillos are “manufactured tobacco for smoking or chewing” and therefore fall within this general class in the statement of wares for the COHIBA trade-mark registration;

3. The new evidence before the Court would have materially affected the Registrar’s decision with respect to whether the COHIBA and COHIBA & DESIGN trademarks were used by the applicant; and

4. The applicant demonstrated to the Court its control over the character and quality of the cigars and cigarillos sold in Canada so as to constitute use by the applicant of the COHIBA and COHIBA & DESIGN trade-marks in Canada.

Decision: 

For these reasons, the Court allows the appeals with respect to the Registrar’s decisions to expunge the COHIBA & DESIGN trade-mark with regard to “cigars and cigarillos”, and the COHIBA trade-mark with regard to “manufactured tobacco for smoking and chewing”.

Read the full decision here.

MBM Wins Before the Federal Court - Repligen Corporation v. Attorney General Of Canada

The central argument in this judicial review of a patent decision – that was accepted by the Court – is below:

B. The Applicant’s Oral Argument at the Hearing 

[24] In oral argument, he argued the Commissioner failed to properly interpret section 46 of the Act resulting in asking herself the wrong question when analyzing Repligen’s correction request. [25] He argues section 46 of the Act is clear. It obliges the owner of a patent i.e. the patentee of a patent; in French “le titulaire d’un brevet” to pay prescribed fees and it is only if and when such fees payable are not paid within the prescribed time that the term of the patent shall be deemed to have expired at the end of the prescribed time for payment.
 

[26] He argues the Commissioner was wrong to say the maintenance fees were not paid by Repligen on the ‘486 patent. CPA’s payment which the Commission does not deny receiving were specifically made on behalf of the named owner Repligen. Moreover in its request for correction Counsel specifically so stated. In the circumstances of this case there was no discretion for the Commissioner to exercise, Counsel argued.
 

[27] In addition, he argues there is nothing in section 46 of the Act which requires maintenance fee payments to be made by reference to the number under which the patent was issued nor is that requirement found in section 182 of the Rules. He buttressed this argument by a reference to section 7 of the Rules which provides that communications addressed to the Commissioner in relation to an application shall include the application number, if one has been assigned. He contrasted this requirement with a reference to section 182 of the Rules dealing with Maintenance Fees which does not contain a similar requirement in respect of issued patents.

Decision: 

THIS COURT'S JUDGMENT is that this judicial review application is granted with costs, the Commissioner's decision is set aside and the Applicant's correction request shall be reconsidered by a different official in the Patent Office taking into account these reasons.

Read the full decision here.

Driving Carefully on the PPH

As of January 29, 2011, the U.S. Patent and Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO) have fully implemented the Patent Prosecution Highway (PPH) program on a more or less permanent basis. Under the PPH, an Applicant, who is in receipt of a decision from one Patent Office that at least one claim in a patent application is patentable, may request that the other Patent Office fast-track examination of corresponding claims in corresponding applications. Currently, neither the USPTO nor the CIPO charges an additional fee for participating in the PPH program. The apparent intent of the PPH is to provide an attractive route for rapidly obtaining patent protection, while reducing Patent Office workloads.

However, in some cases the PPH may not be the most appropriate means for obtaining patent protection. For example, under current USPTO restriction practices, one may be required, under certain conditions, to restrict claims to one category only. For example, it often happens that, in an application containing claims to both a method and an apparatus, a restriction requirement is issued to the effect that only the method claims or apparatus claims are to be pursued in that application. One approach to dealing with such a requirement is to elect one category of claims for prosecution in the current application, while making the other category or categories the subject of one or more divisional applications.

On the other hand, under CIPO unity of invention practices, claims to the same invention but in different categories should be pursued together in the same patent application. Therefore, when making a PPH request at the CIPO on the basis of U.S. prosecution, one may wish to wait until claims in all the desired categories have been deemed allowable at the USPTO. This may require waiting until multiple divisionals have been prosecuted to a sufficient state of allowability at the USPTO. (The PPH does allow a PPH request to be made on the basis of multiple USPTO applications, provided they are all in the same family.) Since the PPH request timing depends on progress of the slowest application at the USPTO, this may result in a time delay that can partially or fully defeat the benefits of the PPH.

As an alternative to the PPH, if quicker examination at the CIPO is desired, one can in many cases request the advance of an application for examination under Section 28 of the Patent Rules for a fee of $500. Currently, one can also request that the prosecution of applications related to environmental (green) technologies be accelerated, free of charge.

By Michael Maskery

Filing Away into USA

An article in the Globe & Mail on January 17, 2011 highlights the record number of patents issued to Canadians in 2010, and included the interesting statistic that “U.S. patent authorities issued a record 5,223 patents to Canadian firms and individual inventors last year, up 20 per cent from 2009.”[1]

The article goes on to discuss this as a sign of Canadian inventiveness, relative to other countries which do not receive as many US patents, “Still, at No. 6, Canada ranks ahead of many other large European countries, including France, Britain and the Netherlands, as well as China.”

One of the problems with this approach is that the number of patents filed in the US is not a great proxy for patents filed worldwide, as for a variety of historic and economic reasons companies and individuals from some countries are more likely to file in the US than others.

For example, Canadians are significantly more likely to file in the US than in Canada. In 2010 there were 5,223 US patent grants to Canadians, but Canadians received only 2,061 Canadian Patents.[2]

This is likely not a surprise to most Canadian patent agents, as for a variety of reasons, making the first filing into the US often makes sense for Canadian based patent applicants.

The US is a large market in which many Canadian companies want to protect their innovations. The US market provides many potential benefits to a Canadian applicant, such as the ability to file a simple and low-cost US provisional which can, if later desired, be converted into a US patent, and international applications through the Patent Co-operation Treaty (PCT), and a patent prosecution highway to allow quick grant in Canada if a US patent has been granted.

Just as many Canadian companies seek to file in the US, many foreign companies seek to benefit from Canada’s strong patent protection. Only 11% of the patents issued by CIPO in 2010 were granted to Canadian applicants (2,061 of 19,120)[3] , while more than 46% of the patents were issued to Americans (8,804 of 19,120)[4].

These numbers highlight the importance for Canadian IP Practitioners to have a strong network of relationships with IP firms in other jurisdictions, and the careful decision that patent applicants must make in choosing which country or countries to file their applications in.

By James Wagner

[1] http://www.theglobeandmail.com/report-on-business/your-business/grow/new-product-development/canada-picks-up-pace-in-patents/article1873617/
[2] CIPO Database search for: (CA INVTCOUNTRY) (ISD>=2010-01-01) (ISD<=2011-01-01)
[3] CIPO Database search for: [(ISD>=2010-01-01) (ISD<=2011-01-01)]
[4] CIPO Database search for: (CA INVTCOUNTRY) (ISD>=2010-01-01) (ISD<=2011-01-01) (US INVTCOUNTRY) (ISD>=2010-01-01) (ISD<=2011-01-01)

Clarifying the Commissioner’s Discretion under S. 8 of the Patent Act

Congratulations to MBM on a successful Judicial Review of the Commissioner of Patent’s refusal to grant a S. 8 Clerical Error remedy on behalf of Repligen Corporation.

The impact of the Repligen decision is such that when the Commissioner of Patents decides to exercise her discretion, the Commissioner will now have to consider the impact of the decision on the applicant and may only consider the evidence and not speculate about the impact the decision may have on others.

Repligen’s patent was issued under Patent Number 1, 341, 486 on July 19, 2005; it is titled “Modified Protein A”. The application for patent was filed on March 4, 1988 and is subject, pursuant to Section 10 of the Act, to the Patent Act as it read before October 1, 1989. It was open for public inspection as of July 19, 2005. When CPA transmitted the required maintenance fees for the second and third anniversary dates of the issued patent, it did so, as instructed by Repligen’s patent attorney in the US, who had received the wrong patent reference number from its former Canadian patent agents; these agents identified Repligen’s patent not as the 1, 341, 486 patent but the 1, 314, 486 by inverting the 314 for the 341.[1]

MBM filed a request for correction of the error and reinstatement of the patent pursuant to Section 8 of the Patent Act, which reads:

Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner.

The Commissioner of Patents acknowledged that “identifying the patent as the 1, 314, 486 patent rather than of the 1, 341, 486 patent in the “Payment of Maintenance Fees Form” sent by CPA to the CIPO was a clerical error according to the relevant jurisprudence.” [2]

The Commissioner concluded:

Nevertheless, the delay in addressing the errors has resulted in an extensive period of time where third parties may have relied upon publicly available documents and the information contained therein. The Office record reflected that as of July 21, 2008, the exclusive right to make, use, or sell the invention ceased in reference to Canadian patent no. 1,341,486. Therefore, effecting said correction has the potential to negatively affect the rights of others.[3]

Justice Lemieux held that it was an error to rely on speculation of third party harm when there was no evidence on the record to suggest such harm.

Simply invoking possible third party rights without more would, in my view, fundamentally impair the remedial power Parliament conferred upon the Commissioner to remedy clerical errors. The reason is obvious: in the case of every issued patent the disclosure will have been made; in the case of a patent application, it is open to the public inspection after a certain date. Justice Desjardins in Bristol-Myers did not endorse a speculative determination of third party rights. She had hard facts before her which pointed to the likehood third parties would be affected – the nature of the remedy sought which was the addition of a new priority date had the effect in a document, that had been opened in 1994, of permitting the entry in 1997 of a priority date of July 1992.[4]

                                   

Justice Lemieux held further that other factors in Repligen’s favour needed to be considered, including:

The impact on Repligen– the loss of its patent; [should the commissioner decline to exercise her S. 8 discretion]

[And that] the remedial scope of section 8 would have the effect that the ‘486 patent never lapsed for non-payment under paragraph 46(2) of the Act because those fees were paid in the appropriate amount and on time, a result which was achieved in Dutch Industries, above, without the recourse to section 8.

Consequently, the judicial review application was granted with costs, the Commissioner’s decision was set aside and the Applicant’s correction request was sent to CIPO for reconsideration pursuant to the judgment.

By Scott Miller

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[1] Lemieux J. at para. 3, Repligen Corporation v. Attorney General of Canada 2010 FC 1288

[2] supra at para. 14

[3] supra at para. 16
[4] supra at para. 40

A Step Closer to Claiming your Damages?

Patents, industrial designs, registered trade-mark rights, and copyright are federally granted rights in Canada, and generally enforceable in either the Federal or Provincial Courts.

If however the Federal Government has harmed a right holder or applicant in some manner (refusing to correct a clerical error, etc.) the challenge to the decision has usually been through the Federal Court’s judicial review process. Under this approach the rights holder seeks to overturn the decision of the “Federal Board or Tribunal” (i.e. a decision by the Commissioner of Patents) with the aim of reversing the previous decision. Compensation for harm from the decision would then require a separate action seeking damages, following the successful judicial review.

This result arose from the Federal Court of Appeal’s decision in Grenier[1] , which held that pleading a claim for compensation without first commencing a judicial review amounted to either: a collateral attack on the decision of the board or tribunal, or a ‘sham’ attempt to obtain a judicial review indirectly, and often beyond the expiry of the deadline. “In short, a decision of a federal agency … retains its legal force and authority, and remains juridically operative and legally effective so long as it has not been invalidated.”[2]

This line of case law had several downsides which limited the ability of parties to obtain compensation, such as:

• The short timeline to file a judicial review (30 days, extendable by order in exceptional circumstances)

• A judicial review could prove time consuming and costly, while not directly addressing the issue of whether compensation is owing or providing any relief (as even a successful judicial review does not establish entitlement to compensation).

• Judicial reviews of Federal Government decisions can only be filed in the Federal Court, adding complication to claimants who may have wished to proceed in a provincial court to obtain their damage remedy.

This approach was particularly hard for those parties who did not seek to reverse the tribunal or board’s order, but still sought compensation. This could often arise in cases where the effect or damage caused by the order had already lapsed prior to the claimant seeking relief.

On December 23, 2010, the Supreme Court of Canada released four decisions which clearly overturned this past precedent; as a result, parties may now seek damages directly against the Federal Government, in either Provincial or the Federal Court. The Supreme Court judgments are framed from the point of view of access to justice, attempting to eliminate an often unnecessary hurdle (judicial reviews) before a potentially injured party can receive compensation.

This appeal is fundamentally about access to justice. People who claim to be injured by government action should have whatever redress the legal system permits through procedures that minimize unnecessary cost and complexity. The Court’s approach should be practical and pragmatic with that objective in mind.

If a claimant seeks to set aside the order of a federal decision maker, it will have to proceed by judicial review, as the Grenier court held. However, if the claimant is content to let the order stand and instead seeks compensation for alleged losses (as here), there is no principled reason why it should be forced to detour to the Federal Court for the extra step of a judicial review application (itself sometimes a costly undertaking) when that is not the relief it seeks. Access to justice requires that the claimant be permitted to pursue its chosen remedy directly and, to the greatest extent possible, without procedural detours.[3]

While a party seeking only compensation will now have the option to avoid pursuing a judicial review, such an approach will limit the remedies available (the underlying order can not be overturned).

As well, in the absence of a successful judicial review, the Federal Government may be able to raise the defence of “statutory authority,” and the parties may still need to determine the validity of the underlying order. However, the onus will be reversed from the position of a judicial review. In raising the defence of statutory authority the Federal Government may need to prove the alleged harmful outcome of the order was inevitable or practically impossible to avoid if following the applicable statute. This contrasts sharply with a judicial review, where the party challenging the order has the onus to prove that the order was wrongly decided or that the statute is invalid.

[1] Canada v. Grenier, 2005 FCA 348, [2006]

[2] Létourneau J.A. at para. 19, Grenier supra.

[3] Per Binnie, J. at paras. 18 and 19, Canada (Attorney General) v. TeleZone Inc., 2010 SCC 62

By: James Wagner