Canadian Patent Updates

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Canadian Patent Updates

On September 21st, recent amendments to the Canadian Patent Act took effect. One of these amendments is the repeal of section 29. This means that applicants that do not reside in Canada no longer have to appoint a Canadian firm or person with a Canadian address to represent them when filing an application in Canada.

~Monday, September 25, 2017~

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Based on last week’s Brexit vote, where the UK voted to leave the EU, the current speculation is that this change will have a minimal effect on patent rights in Europe or the UK as the European Patent Office is separate from the EU. However, the area that is expected to bear the brunt of the impact from this change in regards to patents is the EU’s Unitary Patent and Unified Patent Court System which is not yet in force. Through this system, the hope was to be able to have only a single patent which would be valid throughout the EU. This vote will mostly likely cause the implementation of this system be either delayed, weakened, or halted.

~Monday, June 27, 2016~

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It is official—patent and trademark agents in Canada now have privilege. On Friday, June 24th, 2016, the recent amendments made in Bill-C59 to the Patent Act and Trademark Act, one of which grants privilege to patent and trademark agents, came into effect. This means that confidential communication between patent and trademark agents and their clients is now protected from disclosure in court granted that it means the criteria. For more information please visit the Intellectual Property Institute of Canada’s website.

~Monday, June 27, 2016~

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The Economic Action Plan 2015, which received royal assent on June 23, 2015, proposed amendments to the fee-related services of the Patent Act. The amendments relate to the correction of clerical errors, changes made to a patent after allowance, and late fees.

In regards to the correction of clerical errors, the change makes provisions to include obvious errors that may not be clerical in nature. If the error originated from the applicant then the fee to correct the error will be $200. For changes made after allowance, CIPO is just modifying the services offered rather than changing the fees. For instance, obvious errors can be corrected in a patent within 6 months of the issue date; however, the ability to correct these errors after the 6 month timeframe will be eliminated. As a result, to reduce the number of corrections after allowance, CIPO is proposing to add means to make corrections to the naming of the applicant, names of the inventors, and to priority claims during the application stage without a required fee.

In regards to late fees, the proposed late fees are the following:

Proposed Fee
Late payment of a filing fee $150
Late payment of a maintenance fee $150
Late request for examination $150

This proposal is open for consultation until July 5, 2016. For more information, please visit CIPO’s website.

~Monday, June 13, 2016~

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On November 5, 2014, we commented on this blog regarding a Canadian case where the Children’s Hospital of Eastern Ontario (CHEO) challenged the Federal Court regarding the patentability of genes.  This challenge was specifically against the owners of five gene patents related to the Long QT syndrome which is potentially deadly heart rhythm comdition.  This case between CHEO and Transgenomic, Inc. has now been settled.  In this case, Transgenomic granted CHEO the license to use the patents for not-for-profit diagnostic testing–which will enable them to test for Long QT syndrome in Canadian patients.  This agreement removes the barriers for the Long QT Patents in the not-for-profit realm granting other public hospitals and laboratories the right to test for Long QT syndrome.  However, it is important to note that the patents hold and are enforceable when it comes to commercial use, thus setting precedence in the realm of gene patenting in Canada.  

For more information please see the CHEO press release.

~Thursday, March 10, 2016~

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Chapters 15 and 19 of the Manual of Patent Office Practice (MOPOP) have recently been updated.  The changes made to chapter 15 reflect the decisions made in recent cases regarding determining novelty and obviousness. Likewise, chapter 19 has been updated in regards to clerical error corrections and includes guidance for the Office on amendments made after allowance when submitted with the final fee. For more information on these changes please visit CIPO.

~Monday, February 1, 2016~

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On October 5, Canada joined several other countries in the Trans-Pacific Partnership Agreement, as noted previously. This past week the full-text of the agreement has been released. Click here to read it in detail. See chapter 18 for the details regarding intellectual property.

~Monday, November 9, 2015~

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At the recent Annual Meeting for the Intellectual Property Institute of Canada, on October 16th,  Johanne Bélisle, CIPO’s Commissioner of Patents, Registrar of Trademarks, and Chief Executive Officer, commented that the implementation date for the changes from the Patent Law Treaty are now expected to come into effect in the fall of 2017, instead of late 2015/early 2016 as initially expected.

~Monday, October 26, 2015~

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Canada is currently negotiating with 11 other counties (Australia, Brunei, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam, and the United States) in the Trans-Pacific Partnership (TTP) in hopes of eliminating tariffs on a variety of products. In regards to how this new agreement will impact our patent system, the Canadian Government states that this deal:

“Ensures patent protection for inventions in all fields of technology; Promotes transparent and efficient patent administration systems; Is in line with Canada’s current regime including criteria regarding patentability exclusion; and Ensures that exceptions under the World Trade Organization (WTO) Doha Declaration on Trade-Related Aspects of Intellectual Property Rights (TRIPS) continue to be available in line with Canada’s current laws.”

Before this agreement can come into effect it still must be approved and is expected that it will be brought forth in the next session of Parliament. 

~Tuesday, October 6, 2015~

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In 2013 a pilot Patent Prosecution Highway (PPH) project was established between the Canadian Intellectual Property Office (CIPO) and the State intellectual Property Office (SIPO) in China.  This pilot project speeds up the process of obtaining corresponding patents in both countries.  It was recently announced that this PPH pilot program has been extend for another three years until August 31, 2015.  For information please visit the CIPO website.

~Monday, August 31, 2015~

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As of July 1st, 2015, Canada, Mexico, and the United States have collaborated in a two year pilot program for the Patent Prosecution Highway (PPH) to make procedures uniform in PPH applications.  The existing PPH application procedures in Canada remain the unaffected at this time.  As a result of the new pilot program, the existing pilot program between Canada and Mexico has been extended until June 30, 2016. For information please visit the CIPO website.

~Friday, July 3, 2015~

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On June 19th the amendments to the Patented Medicines (Notice of Compliance) regulations were registered and came into force. As noted previously these amended regulations are due to inconsistency with the original intent of the PM(NOC) regulations which caused several patent applications claiming single medicinal ingredients in combination drugs to become ineligible.  Patents that were denied or deleted from the Patent Register between October 18, 2014 to June 19, 2015 due to this issue have 30 days from June 19th, to be resubmitted. The final amendments are expected to be published on July 1, 2015. (Privy Council Office)

~Monday, June 29, 2015~

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On June 23rd, Bill-C59, implementing the provisions noted in the Economic Action Plan 2015 such as privilege for patent agents and trademark agents, was granted royal assent. This privilege protects confidential communications between clients and their IP advisors from forced disclosure during litigation.  The privilege provisions (sections 54 & 66) of Bill-C59 will come into effect on June 23, 2016.

~Tuesday, June 24, 2015~

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On May 7, 2015, Bill C-59 was introduced in parliament to implement provisions noted in the Economic Action Plan 2015. One of the significant changes that this bill puts forth in regards to intellectual property is to provide statutory privilege to patent and trademark agents.  This provision enable communications between registered Canadian patent agents and trademark agents, and their clients, to be privileged and confidential, where the communication is for giving or seeking advice for the protection of an invention or any trademark matter. Based on these conditions, this privilege will enable agents to maintain confidentiality with their clients by preventing disclosure in civil, criminal, or administrative legal actions.  These amendments come into effect 12 months after the Act receives royal assent.  It appears as though the Government would like to pass this Bill prior to Parliament rising for summer recess and so we may see it granted royal assent as early as June 2015.  Privilege will be retroactive, with the exclusion of any legal action that has already commenced.

~Tuesday, May 12, 2015~

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In recent cases regarding medicinal claims, the Federal Court’s interpretation of the Patented Medicines (Notice of Compliance) regulations has been inconsistent with the original intent for these regulations. As a result, several patent applications claiming single medicinal ingredients in combination drugs became ineligible.  The Canadian Gazette clarifies the intent of the regulations stating:

 The policy intent of the PM(NOC) Regulations is reflective of the realities of the drug development process whereby after a medicinal ingredient is patented and a drug with that medicinal ingredient is developed, an innovator may seek to combine the patented medicinal ingredient with other known medicinal ingredients to create new, innovative, and efficacious combination drugs without forgoing the benefit of the protections afforded under the PM(NOC) Regulations. (P. 908)

Therefore, the Governor in Council has put forth a set of proposed amendments aiming to restore the original intent of the PM(NOC) regulations while providing clarity over ambiguous matters. These amendments will help restore eligibility to patents that were rendered ineligible. For more details please see Canada Gazette Part I–May 2, 2015.

~Monday, May 11, 2015~

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On  April 21, 2015 the Canadian Government released the federal budget plan for 2015. This budget proposes to amend Canada’s Patent ActTrademark ActIndustrial Design Act, and Copyright Act in order to be more current with international intellectual property trends, particularly those of the other common law countries (Australia, New Zealand, and the United Kingdom). The Government states: “Economic Action Plan 2015 proposes to further modernize Canada’s intellectual property framework to keep pace with internationally recognized best practices” (Economic Action Plan 2015, Page 113). These amendments will influence communication between agents and their clients. As well, one of the proposed changes is to be able to extend deadlines in the event of majeure events such as floods and ice storms, like the major ice storm that hit eastern Ontario and western Quebec in 1998. These will be welcome changes.

~Monday, April 27, 2015~

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The anticipated date for the proposed amendments to the Patents Act to come into effect is now later than previously anticipated.  CIPO notes: “Interested stakeholders will also have the opportunity to comment when the proposed amendments/regulations are pre-published in Canada Gazette, Part 1 (expected late 2016)”.  The earliest the changes to the act and rules come into effect would typically be 2 months after publication in the Canada Gazette. For more information please see the CIPO website.

~Friday, April 24, 2015~

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Yesterday, the Canadian Intellectual Property Office released a list of examples for medical use claims that can be used to help evaluate statutory subject-matter in light of the recently revised practice guidelines. For more information or to see the complete list of examples please visit CIPO’s webpage.

~Wednesday, April 1, 2015~

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The Federal Court’s decision between AbbVie Biotechnology Ltd. v. The Attorney General of Canada,  2014 FC 1251, has resulted in the Canadian Patent Office issuing a revision to the practice guidelines for the examination of patent applications with medical use claims, particularly in the area of dosage regimens or dosage ranges. For more information please click here.

~Wednesday, March 18, 2015~

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Patent Prosecution Highway (PPH) pilot agreement between Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) comes into effect January 6, 2015 and runs for 3 years.  CIPO advises:

“Under the new agreement, applicants whose claims have been found to be patentable by either the EPO or CIPO may request accelerated processing of their corresponding applications that are pending before the other office. A PPH request at CIPO can be made based on EPO national and Patent Cooperation Treaty work products, such as the written opinion of the International Searching Authority (WO-ISA), the written opinion of the International Preliminary Examination Authority (WO-IPEA) and the International Preliminary Report on Patentability (IPRP). In order to be eligible for entry onto the CIPO–EPO PPH, the CIPO application must have been filed or have entered the national phase at CIPO on or after the start date of the pilot agreement.”

~Wednesday, January 7, 2015~

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Bill C-43, which puts forth amendments to the Patent Act and the Industrial Design Act, was granted royal assent yesterday. CIPO comments: “The amendments will allow Canada to ratify the Patent Law Treaty and to accede to the Geneva Act of the Hague Agreement.” For more information, please visit the CIPO website.

~Wednesday, December 17, 2014~

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Should human genes be patentable? Canada is one of only a few countries that currently allow gene patenting. However, 5 Canadian patents relating to genes are being challenged by the Children’s Hospital of Eastern Ontario (CHEO). Currently, a few American Universities hold patents in Canada for certain genetic sequences and tests related to diagnosing Long QT Syndrome, a rare heart disorder; but CHEO argues that this could result in patients with this disorder being left without treatment. Alex Munter, CEO of the CHEO, argues: “No one should have a monopoly on something that occurs naturally…Patenting a gene is like patenting the water we drink and the air we breathe. Genetics is the future of medicine, and we need clarity on this issue.” Now the question remains: what will Canada decide? For the access to the full article in Toronto Star click here.

~Wednesday, November 5, 2014~

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In Canada there has been a lack of clarity in regards to the utility requirement for patented inventions.  There was hope that the Plavix case  would shed light on this issue; however, on November 3rd, the case that was thought to “provide guidance on Canada’s ‘promise’ doctrine of utility and the test for sound prediction of utility,” has been settled prior to its hearing in Supreme Court. A full article is available at Managing Intellectual Property.

~Wednesday, November 5, 2014~

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As of November 1st, the Austrian Patent Office and the Intellectual Property Office of Singapore have joined the Global Patent Prosecution Highway, bringing the total number of participating countries to 19.

~Monday, November 3, 2014~

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On Thursday, Bill C-43 was introduced that amends the Patent Act to make it consistent with the Patent Law Treaty. In summary, these amendments include:

  • Reduced requirements in regards to obtaining a filing date for a patent application
  • Notifying an applicant of a missed due date prior to the application becoming abandoned
  • Making provisions so that “a patent may not be invalidated for non-compliance with certain requirements relating to the application on the basis of which the patent was granted.”

For more information click here.

~Monday, October 27, 2014~

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In attempt to support innovation, the Government of Canada has attempted to modernize its IP framework and has put forward a report, entitled Modernizing the IP Community, containing recommendations dealing specifically with patent and trademark agents. For example, it puts forward the need for agents to maintain continuing professional development to keep current. These recommendations are open to consultation until December 9th and can be found on CIPO’s website.

~Friday, October 10, 2014~

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Drexan Energy Systems Inc. vs. Commissioner of Patents – 2014 FC 887 – 2014-09-16

Federal Court refuses to join two inventors to an issued Canadian Patent.  The Honourable Mr. Justice O’Keefe held that “the applicant has not proven that it was anything more than suggesting desired features and communicating feedback from potential customers. Although that is certainly helpful … it is not inventive and I would not find that they are co-inventors.” For more details click here.

~Wednesday, October 8, 2014~

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As of October 1st, CIPO has generated a new document entitled the Search Report. This document will provide information regarding the work of the examiner, prior art, and search history and will be appended to the examination report.

~Wednesday, October 8, 2014~

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