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Current IP News
April 26 is World IP Day. This year’s theme is the celebration of visionary innovators. The World Intellectual Property Office hopes to promote dialogue and recognize the role of innovators, from Archimedes to Zeppelin, in helping to shape society. See Full Article
The Supreme Court of Canada has agreed to hear an appeal by Teva Canada Limited, a generic drug manufacturer, regarding the validity of Pfizer Canada Inc.’s patent for Viagra. Teva is seeking a declaration that the Viagra patent is invalid for failing to provide sufficient disclosure regarding the active ingredient in Viagra. See Full Article
A United States government report states that companies that depend heavily on intellectual property such as copyright, patents and trademarks support 40 million jobs, or around 28% of the US workforce. More than $5 trillion of the US GDP comes from 75 intellectual property intensive industries employing or supporting these 40 million people. “[I]nnovation can’t create jobs without strong IP protection” says Thomas Donohue, president of the US Chamber of Commerce. See Full Article.
Canada Post is alleging copyright infringement of its postal code database in a federal court action launched against Geolytica Inc., an Ottawa-based firm that provides free and paid mapping services, including provision of a Canadian postal code database which Geolytica claims was generated through crowd-sourcing but which Canada Post claims is a reproduction of its postal code database. See Full Article
The Anti-Counterfeiting Trade Agreement (ACTA) has been referred to the European Court of Justice for evaluation in response to concerns it could interfere with people’s basic rights and deny Internet access to suspected infringers. ACTA provides for penalties for large-scale digital file-sharing and using counterfeit trademarks. Canada signed on to the ACTA last fall. Canada’s copyright bill C-11 is seen as a step towards implementing aspects of ACTA. See Full Article
OWGM News & Events
Oyen Wiggs Green & Mutala LLP is proud to announce that again this year Catherine Mutala has been ranked as one of Canada’s leading trademark practitioners in the 2012 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals (WTR). Additionally this year, Bruce Green has been ranked as one of Canada’s leading trademark litigators in the 2012 edition of WTR. WTR conducts in-depth research and interviews of clients and peers to select the top trademark firms and individuals in more than fifty jurisdictions worldwide.
In Precision Door & Gate Service Ltd. v. Precision Holdings of Brevard, Inc., 2012 FC 496, Bruce M. Green of Oyen Wiggs Green & Mutala LLP successfully represented the applicant in having three trademark registrations of the respondent struck from the Canadian trademark register under section 57 of the Trade-Marks Act. The applicant, Precision Door and Gate Service Ltd., argued that the respondent, Precision Holdings of Brevard, Inc., was not entitled to register the trademarks in question because the applicant had already been using a confusingly similar trademark before the filing of the respondent’s proposed use application in 2002. In general, the first entity to use a trademark in Canada or file a proposed use trademark application is entitled to register that trademark in Canada. This means that other entities who use or apply for a confusing trademark at a later date should not be entitled to a Canadian trademark registration. READ MORE »
Oyen Wiggs Green & Mutala LLP is featured in the April 2012 issue of BC Business magazine. See Full Article
An arms race in intellectual property is killing innovation .
War is a favourite metaphor in discussions about intellectual property (or IP) law, and it’s easy to understand why. In litigation, patents are wielded like weapons: Owners of intellectual property use them to attack competitors, wringing big settlements out of infringement claims, and those companies that find themselves unarmed rush to acquire defensive patents to deter such onslaughts. But the martial metaphor also applies on a larger scale to countries, not just companies.
OWGM Newsletter Articles
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 »
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 »
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 »
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 »
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 »