News (Page 3)

The Comprehensive Economic and Trade Agreement (CETA) was signed by Canada and the European Union on October 30, 2016. The Canadian government has indicated that Canada intends to implement the provisions of CETA by legislation in the near term. The purpose of CETA is to stimulate trade by aligning trade rules and reducing tariffs between the European Union and Canada. As a result, there will be changes to certain areas of intellectual property law relating to patents and trademarks. Pharmaceutical Patents – New pharmaceutical patent laws to be implemented under CETA include patent term extension relating to delays in the regulatory approval process for pharmaceuticalsRead More →

The Canadian Intellectual Property Office (CIPO) has recently published the first Intellectual Property Canada Report. The Intellectual Property (IP) Canada Report 2016 discusses trends in the use of IP, both domestically and by Canadian innovators and businesses abroad. This Report relies both on CIPO’s own internal data and on data from the World Intellectual Property Organization (WIPO), which collects data from around the world. Highlights of the Report include that Canadians are increasingly filing patent applications abroad, although Canadian filings by Canadian applicants appear to be stagnating. In contrast, more and more foreign applicants have been seeking protection in Canada for their intellectual property drivingRead More →

A recent decision of the Federal Court serves as a reminder of the importance of promptly registering, in the Canadian Intellectual Property Office (“CIPO”), assignments and other forms of change in ownership of Canadian patents and patent applications. In this case, SALT Canada Inc. applied to the Federal Court for an order that CIPO’s records be varied to change the recorded owner of a patent from John W. Baker to SALT Canada Inc. Section 52 of the Patent Act grants the Federal Court jurisdiction to vary or expunge entries in CIPO’s records relating to the title of patents. Multiple assignments relating to the patent inRead More →

Introduction Until recently, DDR Holdings v. Hotels.com, Fed. Cir. 2014, was the only United States Court of Appeals for the Federal Circuit decision to uphold the validity of computer implemented patent claims since the Supreme Court’s decision in Alice Corp. v. CLS Bank,  S. Ct. 2014. Recently, there have been two further cases which have allowed computer implemented patent claims and so help indicate what might be allowable in the U.S. The current test, outlined in Alice, for establishing whether a computer implemented invention is patentable is as follows: Determine whether the claims at issue are directed to a patent ineligible concept (e.g. an abstractRead More →

The Canadian Intellectual Property Office (CIPO) has recently issued guidance (see here) warning clients of various scam letters or emails that are being sent to holders of patent and trademark applications and registrations. This problem is not unique to Canada. Imposters also impersonate other Intellectual Property Offices including the World Intellectual Property Office (WIPO) which processes international (or PCT) patent applications (see here) and the US Patent and Trademark Office (see here). If you receive a suspicious document relating to your Intellectual Property, please contact us to verify whether it is a scam notice.Read More →

On July 14, 2016, the U.S. Patent and Trademark Office (USPTO) issued a Memorandum to its Patent Examining Corps indicating that the recent court rulings in Rapid Litigation Management v. Cellzdirect and in Sequenom v. Ariosa  are consistent with the subject matter eligibility framework employed by the USPTO in patent examination.  As such, it proposes no changes to the framework. The Memorandum includes commentary on how the decision in Rapid Litigation Management clarifies the subject matter eligibility test for determining whether claims are directed to a patent ineligible concept such as a law of nature. In Rapid Litigation Management, the illustrative claim held valid by theRead More →

Since March 3, 2011, the Canadian Intellectual Property Office (CIPO) has had in a place a green technology “fast-track” program with the objective of expediting the procurement of patent protection for green technologies. Provided that a patent application relates to “technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources”, examination of the application can be accelerated without the payment of any additional fees to CIPO. Under accelerated examination, an Office Action is typically received within 1 to 3 months of requesting participation in the “fast-track” program. This is a significant reduction from the 12Read More →

Congratulations to our associate, Dr. William Murphy, who recently passed his Canadian patent agent qualifying exams and is thereby eligible to be registered as a patent agent in Canada .  William initially qualified as a UK and European Patent Attorney and practised in the United Kingdom for a number of years before joining Hicks & Associates in the Spring of 2015.  William’s background is in the field of atomic and laser physics.  His practice includes drafting and prosecuting patent applications in a wide range of technical fields.Read More →

The President of the European Patent Organisation has issued a statement to reassure applicants and patentees that the referendum decision of the U.K. to leave the European Union does not affect the U.K.’s status as a contracting state of the European Patent Convention. His statement underlined that “the outcome of the referendum has no consequence on the membership of the UK to the European Patent Organisation, nor on the effect of the European Patents in the UK”. This confirms that patent protection in the U.K. can still be obtained through the European Patent Office, and that granted European patents will continue to be valid inRead More →

Eli Lilly v. Mylan 2015 FC 125 (de Montigny J; 2,371,684 – tadalafil dosage form – CIALIS) This case confirms the possibility that some actions taken during prosecution can be used to interpret the scope of a claim. Facts The patent in question relates to pharmaceuticals and in particular to dosage regimes. The patent included the following claim: 1. A pharmaceutical unit dosage form comprising about 1 to about 20 mg of a compound having the structural formula: said unit dosage form being suitable for oral administration. Issue A question arose as to whether a maximum daily dosage of 20mg should be considered to beRead More →