Prometheus v. Mayo: A Setback for Diagnostic Method Patents in the US?
The recent US Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150 raises possible challenges for companies attempting to obtain patent protection for diagnostic methods in the US. Read More »
Thinking of licensing or selling your IP? If so, is your company ready for an IP audit?
By: Amy M. Fong and Henry N. Bian
Nortel sold its patent portfolio for $4.5 billion. Microsoft paid $1 billion for the majority of AOL’s patents. It is undeniable that intellectual property is often a company’s most valuable asset.
If you are considering exploiting your IP, then you should be prepared for an IP audit by potential buyers, investors or licensees. The purpose of an audit is to probe for potential weaknesses or vulnerabilities in your IP which can affect its value. Read More »
When You Need Action on Your Patent Application: Expediting Examination in Canada
By: Edmund Y. Xie
Canada has a deferred examination system, wherein patent applications are examined only upon request. Once examination has been requested, patent applications enter a queue. The Canadian Intellectual Property Office (CIPO) currently has a 2-3 year backlog of applications awaiting examination.
In appropriate cases, there are a few ways for an applicant to accelerate the examination of an application. Expedited examination can reduce the wait time for a first office action to as little as 2 to 3 months. Read More »
Take Advantage of Proposed Changes to Canadian Trade-marks Regulations – Non-Traditional Trade-marks
The Canadian Intellectual Property Office (“CIPO”) recently completed a consultation on proposed revisions to the Canadian Trade-marks Regulations (the “Regulations”). The stated goals of the proposed changes are to streamline and simplify opposition proceedings, and to respond to evolving business and marketing practices and streamline interactions between applicants and CIPO. Read More »
Protecting your trademarks south of the border: Differences between Canadian and American trademark law
By: Amy M. Fong and Cameron G. Funnell
Canadian businesses looking to expand (or which have already expanded) south of the border are well advised to consider registering their trademarks in the US.
Overall, Canada and the US have similar substantive and procedural requirements for trademark applications, however, there are some important differences of which Canadians should be aware when applying to register their mark in the US, including the following: Read More »
From “first-to-invent” to “first-to-file”: How the first-to-file and novelty requirements under the new America Invents Act compare to Canadian patent law
By: Amy M. Fong
The US is presently the only country in the world still operating under a “first-to-invent” system, in which a patent is granted to the first person to conceive the invention. All other countries have a “first-to-file” system, in which a patent is granted to the inventor who is the first to apply to patent the invention, regardless of the date of invention. However, under the new America Invents Act (“AIA”), the US will change to a first-to-file system applicable to US applications with an effective filing date of March 16, 2013 or later. New worldwide novelty requirements will also take effect in the US which lend to some interesting scenarios in comparison with Canadian patent law.
Invention disclosure and patent grace periods: How disclosing your invention before filing a patent application can severely limit your ability to obtain a patent
One of the requirements for obtaining a valid patent is for your invention to be novel. This novelty requirement can differ between countries. In many countries, public disclosure of the invention by any person, including the patent applicant, before filing a patent application destroys novelty and the ability to obtain a valid patent. These countries are said to operate an “absolute novelty” requirement. Public disclosures can include written or electronic publications, public oral disclosures, public demonstrations, public use, offers for sale, and actual sales.
Domain name disputes: An important policy update
by: Michael G. Fink
The Canadian Internet Registration Authority (“CIRA”) is the body that decides Canadian domain name disputes and has the power to order the transfer of a domain from one entity to another. For a while now, the CIRA has primarily been useful in clear cases of domain squatters (e.g. those who register a domain name to try to sell it to the party that holds the trademark rights or to block a trademark holder from registering that domain name) and competitors registering another entity’s name or trademark. In the past six months this has been changing and opening up more situations where trademark right holders can have relevant “.ca” domains transferred to them.
A Big Year for Copyright in Canada
It is shaping up to be an exciting year for copyright law in Canada. On December 6 and 7, 2011, the Supreme Court of Canada heard appeals in five decisions arising from the Copyright Board of Canada. Having the Court grant leave to hear so many appeals in the area of copyright law at one time is unprecedented.
Federal Court of Appeal clears the way for Business Methods in Canada
Amazon.com’s Canadian Patent application for its “one-click” ordering invention issued on 17 January 2012 as Patent No. 2,246,933. This application’s somewhat tortuous path through the Canadian Intellectual Property Office (CIPO) and the courts has been closely followed by Canadian patent practitioners and legal scholars, and has provided some increased clarity to the law of statutory (i.e., patent-eligible) subject matter in Canada.