Canadian Patent Law – Adjusting to New Practice.
Janice G. Kelland explains recent developments in Canadian Patent Law.
The 30th of October 2019 was a red-letter day for Canadian patent law. Amendments made to the Canadian Patent Act in 2014 and 2015, and the completely re-drafted Canadian Patent Rules registered in July 2019, came into force on that day, bringing substantial change to Canadian patent practice …
You can download the article by clicking HERE, or on our PUBLICATIONS page. Janice’s article has been published on pages 16-18 of The Patent Lawyer Annual 2020. The full publication can be accessed at this LINK.
New Patent Rules came into force in Canada effective October 30, 2019. Their purpose by and large is to more closely harmonize Canadian practice with international norms. Existing government fees remain unchanged, but some new ones have been added. There will continue to be no excess claims fees. Many of the changes will have a delayed effect, but others will be more immediate. Existing deadlines are not affected. Here are some of the more notable changes for you to consider:
1) Some Deadlines are now shorter
Requests for examination will now be due 4 years after the Canadian or international filing date instead of the current 5 years.
Responses to Office Actions will now be due 4 months after the Action date rather than the current 6 months. A 2-month extension will be available upon payment of a $200.00 fee. If no extension is requested, or if requested but no response is filed by the extended deadline, the current 12-month reinstatement period remains available as of right upon payment of a $200.00 fee. It is expected that most applicants wanting more time will elect to use the reinstatement period following the initial 4-month response deadline.
The Final Fee will be due 4 months from the date of the Notice of Allowance instead of the current 6 months. If the Final Fee is not paid by the due date, the 12-month period to reinstate as of right remains available on payment of a $200.00 reinstatement fee, but reinstatement will no longer return the application to examination.
2) Some Deadlines are now stricter
Under previous practice, maintenance and examination fees could be late paid within a 12-month reinstatement period as of right on payment of an additional reinstatement fee.
If a maintenance fee for a patent application is not paid by the due date, CIPO will now issue a notice requiring payment of the maintenance fee and a late fee before the later of 2 months from the date of the notice or 6 months from the missed due date. Importantly however, the application will not be deemed abandoned until the notice issues and the 2-month late period lapses, even if that occurs after the 6-month period has lapsed. Once an application is deemed abandoned, the applicant will have 12 months to petition for reinstatement on a showing that the circumstances leading to abandonment were unavoidable and clearly documented. It is expected that most petitions will fail.
In the case of an issued patent, if a maintenance fee is not paid by the due date, CIPO will issue a notice requiring payment of the maintenance fee and a late fee before the later of 2 months from the date of the notice or 6 months from the due date. If the fees are not paid, the patent will be deemed expired as of the missed due date. The patent owner will have 18 months from the missed due date to petition for reversal of the expiry on a showing that the circumstances leading to expiry were unavoidable and clearly documented. It is expected that most petitions will fail.
If the examination fee is not paid by the due date, CIPO will issue a notice requiring payment of the examination fee and a late fee by 2 months from the date of the notice. If the fees are not paid within the 2 months, the application will be deemed abandoned and will enter a 12-month reinstatement period. Reinstatement will be available as of right within 6 months from the missed due date upon payment of an additional $200.00 reinstatement fee. After the 6 months, the applicant must also petition for reinstatement on a showing that the circumstances leading to abandonment were unavoidable and clearly documented. It is expected that most petitions will fail.
Third parties now have rights that will allow them to infringe patents and patent applications when certain deadlines relating to requests for examination and maintenance fees are missed.
It is now more important to meet deadlines relating to maintenance fees and requests for examination.
3) Filing dates will be easier to obtain
Filing dates can now be obtained on weekends and holidays by filing applications electronically.
Paris and non-convention applications can be filed in languages other than English or French provided a translation is filed within 2 months of a request from CIPO for a translation. This does not apply to national phase entries, which must still be filed in English or French.
Paris and nonconvention applications can be filed without a filing fee provided the fee and a late fee are paid within 3 months of a filing fee notice.
4) Applications must be withdrawn from Allowance for amendment
Applications must now be withdrawn from allowance by payment of a $400.00 fee within 4 months from the date of the Notice of Allowance for amendments other than corrections to very obvious errors.
5) Annuity services may now pay maintenance fees on pending applications.
Previously, only the appointed agent could pay maintenance fees on pending applications. Under the new rules, any person authorized by the Applicant will be able to pay application maintenance fees, including an annuity service.
However, CIPO will continue to send late payment notices only to the appointed agent in the event the fee is not timely paid. Accordingly, we urge caution with respect to the use of alternative fee payment arrangements in light of the stricter deadlines and possible consequences for missed payments discussed above.
6) Recordal of transfers of rights easier
If a request to record a transfer of rights with respect to an application or patent is made by the applicant or patentee currently on of record at the Canadian Patent Office, documentation is no longer needed to support the request. A recordal certificate will be issued for the transfer and any documentation filed along with the request will be put on file at the Canadian Patent Office. However, as was the case under the former law, requests to record transfers of rights made by a transferee (the new owner of the rights) will require providing acceptable evidence of the transfer, such as a signed, witnessed assignment.
7) Certified copies of priority documents now required
Certified copies of priority documents must now be provided for Canadian direct filings and national entries of PCT applications. Failure to provide the copy within the required time will result in withdrawal of the priority request. Fortunately, if the priority document is available in the WIPO Digital Access Service (DAS), the Canadian Patent Office will be able to access the document electronically on provision of the access code. As well, if the priority document was filed in the Canadian Patent Office or was provided during the international phase of the corresponding PCT application, no further copy is needed.
If you have any questions about how the new Rules might affect your current or future patent applications, please do not hesitate to contact us.
We are pleased to confirm that on February 8, 2019, Bill Morneau, Minister of Finance, announced the appointment of Susan Beaubien as a Permanent Member of the Canadian International Trade Tribunal (CITT), for a 5 year term commencing March 4, 2019. The CITT is recognized in Canada and around the world as a centre of excellence in the fair and timely adjudication of trade law matters.
The appointment was made on February 5, 2019 by Order in Council.
The CITT is an independent quasi-judicial adjudicative body reporting to Parliament through the Minister of Finance.
It conducts injury inquiries into dumping and subsidy complaints; hears appeals of decisions of the Canada Border Services Agency and the Canada Revenue Agency; inquires into complaints by potential suppliers concerning procurement by the federal government covered under various trade agreements; conducts safeguard inquiries; and provides advice to the Government and/or to the Minister of Finance on economic, trade and tariff issues.
Susan will be retiring from private practice and leaving Macera & Jarzyna LLP, effective March 1, 2019. We wish her all the best in her new career.
Update on Blacklock’s Mega Motion of December 12, 2018.
The hearing of Blacklock’s 3000 page mega motion in its copyright infringement action against the Attorney General took place on December 12, 2018. Howard Knopf attended . Click here for Howard’s overall impression.
Plant Breeders’ Rights for Cannabis in Canada.
On October 17, 2018, recreational marijuana became legal across Canada, joining the already legal medicinal marijuana. As a result, many individuals and companies are keen to create new varieties of Cannabis for sale and are interested in protecting these new varieties.
However, there are still no definite rules for the examination and evaluation of these varieties, and many questions surrounding how this can be done, considering that cannabis is still prohibited in most countries. Even in Canada there are numerous restrictions. In fact, since marijuana has its circulation or transportation banned, many breeders are choosing to do asexual reproduction rather than seed propagation. In light of that, Ashley Chu and Eduardo Fonseca have prepared an article addressing important information about the current scenario of protection and problems and possible solutions for current and future breeders.
The article has been published by the CIOPORA, the International Community of Breeders of Asexually Reproduced Ornamental and Fruit Plants, on its website. CIOPORA is the most important Plant Breeders’ Rights (PBR) / Plant variety protection (PVP) association bringing together 125 plant breeders, national breeder associations, patent attorneys and Intellectual Property consultants from 25 countries. The article will also be included into the next newsletter issue for all members.
You can read and download the publication here: https://www.ciopora.org/single-post/2018/12/12/Canada-Road-to-Plant-Breeders%E2%80%99-Rights-for-Cannabis
Macera & Jarzyna LLP are happy to participate in the Elgin Street Courthouse Angel Program again in 2018! The gifts are for needy children in our community.
Macera & Jarzyna was honoured to co-host a dinner reception with the Consul General of Canada, Mrs. Evelyne Coulombe, at her Official Residence in Rio de Janeiro, Brazil, on November 30, 2018.
The reception took place a few days after the Inter American Intellectual Property Association (ASIPI) annual meeting, also held in Rio, which was attended by our partners Eduardo Fonseca and James Palmer. The dinner was a great opportunity to celebrate with the firms and companies from Rio who have entrusted their business to our firm. It was also a chance for all the participants to discuss future cooperation and partnerships. The Canadian Consulate in Rio is very active in the development of business relations between Canadian and Brazilian entrepreneurs. We are pleased and proud to successfully assist these entrepreneurs and we hope that these partnerships endure.
Follow Up on Bill C-86 – The Omnibus Bill that Amends Canadian IP Law.
Bill C-86 has already been given second reading and is at the Finance Committee of the House of Commons. Yesterday, November 7, 2018, in the Finance Committee, there were about 10 minutes in total testimony by Grant Lynds, past President of the Intellectual Property Institute of Canada …
Massive Canadian IP Law Reform in a Budget Bill – Throwing Parliamentary Scrutiny Under the Omnibus Bus with Bill C-86.
Bill C-86, which was given first reading on October 29, 2018, is 884 pages long. It is an omnibus budget implementation bill that touches innumerable unrelated issues and amends dozens of acts …
Rogers v. Voltage – Howard Knopf comments on CTV – September 14, 2018.
On September 14, 2018 the Supreme Court of Canada held that An ISP can recover its costs of compliance with a Norwich order, but it is not entitled to be compensated for every cost that it incurs in complying with such an order. Recoverable costs must be reasonable and must arise from compliance with the Norwich order. Where costs should have been borne by an ISP in performing its statutory obligations under the notice and notice regime, these costs cannot be characterized as either reasonable or as arising from compliance with a Norwich order, and cannot be recovered.
Two New Copyright Board Appointments: Nathalie Théberge and Adriane Porcin.
More from Howard Knopf On Mass Copyright Litigation in Canada – Part II
American NAFTA Inconsistency Re Copyright Term Extension – And Why This Issue Matters Bigly & Involves Billions.
More from Howard Knopf on Mass Copyright Litigation in Canada – Part I
James Palmer has prepared a discussion paper on how upcoming changes to the Trademarks Act may impact dealings with the Canadian Intellectual Property Office (CIPO), titled A Modernized Trademark Regime for Canada. The following is brief excerpt from the introduction:
In 1954 Canada brought into force the current Trademarks Act that broke with many of Canada’s longstanding traditions concerning the registration of trademarks. One of the more controversial changes was the acceptance of applications based on proposed use! After more than 60 years of loyal service to Canadians the venerable ‘54 Act is about to be retired and replaced with an Act that will again shake up the trademark community.
After years of extensive consultations with industry, trademark owners and trademark practitioners, a new Trademarks Act was adopted in 2014 thereby completing the first stage of modernizing the Canadian trademark system.
Stage two of this process was completed earlier this year with the release of a draft of a new Trademarks Regulations. The goal is to complete final revisions this summer and have a final version ready for adoption in the fall of 2018.
The final stage of this transition will be an upgrade of the Trademarks Office IT system which is required to handle the very significant changes that the modernized trademark system will introduce. CIPO has recently made it known that the new Act and Regulations are to be implemented in early 2019 however, the specific date will remain a mystery until CIPO completes the update of the IT System.
In addition to the implementation of a new Trademarks Act and Regulations, Canada will implement the Madrid Protocol, adopt the NICE Classification System and adhere to the Singapore Treaty.
The full paper is available here.
EXCESS COPYRIGHT: Some Notes from Howard Knopf About Recent Developments at the Copyright Board of Canada – click on Learn More.
Macera & Jarzyna LLP Celebrates 40 Years in Business.
It was July 1978 when Andy Jarzyna and John Macera got together and opened shop in Canada’s capital city, Ottawa. Since then, Macera & Jarzyna LLP has become known internationally and at home for its excellence and specialization in Intellectual Property.
Andy Jarzyna – 1978 John Macera
Macera & Jarzyna, LLP is a firm of barristers and solicitors, specializing in Intellectual Property disputes and litigation. The firm works side by side with Moffat & Co., a firm of patent and trademark agents, specializing in the preparation, filing and prosecution of Patent, Trademark, Industrial Design, Copyright and Plant Breeders Rights applications in Canada and around the world. Macera & Jarzyna, LLP has developed a reputation as one of the country’s leading intellectual property boutiques. Congratulations Macera & Jarzyna LLP. Job well done.
Mediatube Corp. v. Bell Canada – Federal Court of Appeal – A company called Media Tube sued Bell Canada for patent infringement with respect to technology pertaining to Bell Fibe TV. Bereskin & Parr acted for Media Tube. Media Tube lost at trial (decision dated January 4, 2017) and appealed.
On its appeal, Media Tube (now represented by Aitken Klee) tried to amend its notice of appeal to add “ineffective assistance by trial counsel” as a ground of appeal. According to Media Tube, Bereskin was concurrently acting for Microsoft whose software was used in the allegedly infringing system used by Bell. This apparent conflict caused Bereskin to “pull its punches” in its representation of Media Tube in order to avoid harming the business interests of Microsoft and advance those of Bereskin (keeping Microsoft happy as a client). Or so Media Tube claims.
Media Tube also sought discovery of Bereskin & Parr in order to ascertain the full extent of the conflict.
The Court of Appeal (Justice Stratas), on June 26, 2018, dismissed Media Tube’s motion. Ineffective assistance of counsel is sometimes used in a criminal context – it is exceptionally rare to be found in civil cases. Media Tube needed to show:(1) the existence of an actual (not “apparent”) conflict and (2) and that the conflict adversely affected counsel’s performance at trial – it is not necessary to show that the outcome would have been different.
Here, Bereskin had filed trademark applications for Microsoft. Justice Stratas was not satisfied that trial counsel knew of this work or that it would have been enough to constitute an actual conflict.
In answer to Media Tube’s complaint that it needed to discover Bereskin in order to get all of the details, the judge observed (not surprisingly) that there is no provision for discovery before an appellate court. He went on to say that Media Tube still had the option of suing Bereskin “for negligence, breach of fiduciary duty, or both in the provincial superior court” where full discovery would be available. If Media Tube succeeded, it could recover from Bereskin (or its insurers) any amounts awarded against Media Tube in the Federal Court action and/or seek to have the Federal Court judgment set aside.
The judgment is here:
Review prepared by – Susan Beaubien
From May 28 to June 1, 2018, Howard Knopf attended the 36th World Intellectual Property Organization (WIPO) Standing Committee on Copyright and Related Rights held in Geneva, Switzerland on behalf of the Civil Society Coalition. Howard made the following submissions – one – two.
On June 19, 2018, Howard Knopf and Joe Ulvr attended Canada in International Law: At the Inflection Point, sponsored by The Centre for International Governance Innovation. The conference explored the challenges Canada faces in contributing to shaping global rule of law. The conference coincided with the launch of CIGI’s latest publication Reflections on Canada’s Past, Present and Future in International Law in which Howard Knopf contributed a chapter.
On June 28, 2018, Susan Beaubien was elected to the Board of Directors of the Canadian chapter of the International Commission of Jurists (ICJ). ICJ is an international NGO headquartered in Geneva whose mission is promotion of the rule of law, human rights and the independence of the legal profession. The Canadian chapter of the ICJ operates from the University of Ottawa and draws its members and volunteers from the legal profession across Canada. ICJ Canada provides legal expertise at both the international and national levels to ensure that developments in international law adhere to human rights principles and that international standards are implemented at the national level.
On May 5, 2018, Howard Knopf gave a talk titled “Copyright: Upcoming Changes and What You Need to Know”, at the Artists’ Legal Services Ottawa (ALSO) Arts Law Conference held at Arts Court. Howard focused on the Government’s review of the Copyright Act and the Copyright Board – What’s at Stake. Howard’s blog post is here. The slides for his talk can be found here.
Howard Knopf’s recent paper titled “Canada’s Role in the Relationship of Trade and Intellectual Property” has been published as Paper #17 in the series “Canada in International Law at 150 and Beyond” by the Centre for International Governance Innovation (“CIGIO”). You can view the paper here.
Diagnostic methods cause controversy at CIPO – Read Jerome Bastien’s blog post on the recently published policy of the Canadian Intellectual Property Office (CIPO) on patent applications for medical diagnostic methods, which has been the subject of criticism. The English translation is available at this LINK.