Taking advantage of the patent prosecution highway between cipo and the uspto
By Eduardo Fonseca and Ashley Chu
Read at THIS LINK.
This article was published in the 13th edition of REVISTA the official magazine of ASPI
Bill 96 – impact on ip practice
by Mark Butler
On June 1, 2022, the National Assembly of Quebec passed Bill 96, An Act respecting French, the official and common language of Quebec. The purpose of the Act, from the Explanatory Notes, is to affirm “that the only official language of Quebec is French” and “that French is the common language of the Quebec nation.” In line with this broad yet pointed purpose, the Act enacts a wide-ranging series of amendments to various provincial statutes.
At the centre of these amendments, and unsurprisingly given their purpose, are changes made to the Charter of the French Language. The Charter is not a new document, having been first adopted in 1977, and persons doing business in Quebec have long been accustomed to compliance with its various requirements. Importantly, certain amendments to the Charter have implications for the use of trademark rights in La belle province.
Trademarks
The Changes to the Law
Pre-amendment, under regulation made pursuant to the Charter, recognized trademarks within the meaning of the federal Trade Marks Act could be displayed in a language other than French if there was no French version of the mark that was registered. This meant that non-French marks did not need to be registered in order to be exempt from the requirement that they appear in French on products—it was sufficient that they be ‘recognized’. Because of this, common law trademarks and marks in the process of being registered qualified for the exemption.
Bill 96 changes this exemption, now limiting it to only ‘registered’ trademarks within the meaning of the Trademarks Act. Registration is, obviously, a higher threshold than recognition, and therefore many non-French marks which benefitted from the previous exemption will no longer be so exempted. Once this amendment comes into force, only registered trademarks under the federal Act without a registered French version will be able to be displayed on products in a language other than French. However, the requirement does not stop there.
Where a registered trademark with no French version does benefit from the new exception, generic and descriptive terms included in the trademark will still need to appear in French on products on which the trademark is displayed. This requirement is aimed at preventing trademark owners from tacking words on to their registered non-French trademarks in an attempt to obviate the need for translation. While debating the Bill, Simon Jolin-Barrette, then Minister Responsible for the French Language, gave the example of “Softsoap Brand, Lavender and Shea Butter, washes away bacteria, deeply moisturize to hydrate skin”. According to Minister Jolin-Barrette, only ‘Softsoap Brand’ would not need to be translated.
Additional changes impacting trademark use come in the form of new requirements surrounding public signage. Under the new amendments, registered trademarks without registered French versions may appear on public signs, posters and in commercial advertising without a French version. But, where public signs and posters are visible from outside premises, French must be ‘markedly predominant’. This means that non-French registered marks ‘visible from the outside of premises’ must be accompanied by ‘markedly predominant’ French text.
The amendments to trademark display on products and public signage discussed in this section will come into force on June 1, 2025.
What this Means for Trademark Owners and Users
Many owners of non-French marks that do not qualify as registered trademarks under federal law will need to take action to continue using their marks after the coming into force of the above amendments in June of 2025. Registration of non-French versions of marks is the surest way to be compliant under the new laws. Given the lengthy delays in examination with the federal Trademark Office, trademark owners should act immediately where they wish to obtain registrations for their non-French marks, and may consider means of expedited examination, where possible.
Where trademark owners own registered marks without French versions, they should still check their marks for generic or descriptive language, as the new law states that such language must be translated even where the mark is registered with no French version.
Finally, trademark owners should be cognizant of how their marks are displayed in public. Where non-French registered marks are legitimately displayed and visible from the outside of premises, they should be accompanied by French text that would appear to passersby to be ‘markedly predominant’.
Contracts in Licensing
The Changes to the Law
Bill 96 enacts important changes to the language requirements of contracts of adhesion (where the terms are dictated by one party). Henceforth, parties may enter into non-French contracts of adhesion, but only where they have first had the opportunity to inspect a French version of the contract. One type of contract to which this requirement does not apply is ‘a contract used in relations with persons outside Quebec’.
Where parties have agreed to enter into a contract exclusively in English, any other materials related to that contract may also be drawn up in English.
These changes come into force on June 1, 2023.
What this Means for Franchisors
In the context of trademark ownership, the above changes to the law of contracts in Quebec will likely have implications for franchisors. In licensing marks in Quebec, the new language requirements in the formation of contracts of adhesion will be important where such contracts are used. Unfortunately, at this time it is not clear just exactly how wide of a scope is contemplated by the phrase ‘in relations with persons outside Quebec’. As this phrase comes to be better defined by the legislature, the courts, and the administrative officials tasked with upholding the Charter of the French Language, franchisors will come to better understand whether and to what extent they can qualify for this exemption.
by Mark Butler
Client alert – changes to patent examination procedure in Canada
Recent amendments to the Canadian Patent Rules which will affect the cost of examining patent applications in Canada have just been registered and will be in effect before the end of the year.
These requirements can be avoided if a request for examination is filed before October 3, 2022.
Excess claims fees will be required:
when examination is requested:
Effective October 3, 2022, if a patent application has more than 20 claims when examination is requested, an additional government fee of $100 CAD per additional claim must be paid. For example, if an application has 25 claims when examination is requested, the government examination fee will be increased by $500. A 50% reduction of this fee (to $50 CAD per additional claim) applies if small entity fees are paid for the application.
A voluntary amendment can be filed at the time examination is requested to reduce the number of claims for which excess claims fees must be paid.
when the final issuance fee is paid:
As well, if more claims than were paid for at the time examination was requested are added to the application at any time before the application is allowed, even if they are deleted before allowance, excess claims fees to pay for the further added claims will be included in the final fee which must be paid for grant of the patent. Fees are due for claims which add to the total number of claims on file at any one time, not for claims which simply replace deleted claims without increasing the total number.
Examples of calculations are summarized below:
| No. of claims in application when examination requested | Additional examination fee for excess claims | Max. no. of claims presented at any time during examination | No. of claims in application at allowance | Additional final fee for excess claims |
| 20 or fewer | $0 | 20 + x | 20 + x or fewer | $100x ($50x) |
| 20 + x | $100x ($50x) | 20 + x | 20 + x or fewer | $0 |
| 20 + x | $100x ($50x) | 20 + x + y | 20 + x + y or fewer | $100y ($50y) |
Requests for continued examination will be required if more than two office actions are issued
A further new requirement coming into effect on October 3, 2022 is related to the number of examination reports issued by the Examiner during examination of the patent application.
If the examiner issues a third report identifying defects in the application that need to be addressed before the patent can be granted, a request for continued examination (RCE) will need to be submitted along with payment of a government fee of over $800 CAD. Again, a 50% reduction of this fee applies if small entity fees are paid for the application.
If a further two examiner’s reports are issued after a request for continued examination has been filed, a further RCE must be filed along with payment of an additional government fee. Issuance of examiner’s reports and filing of requests for continued examination can continue until the application is allowed, finally refused or abandoned.
If you wish to proactively file a request for examination for one or more applications before October 3, 2022 to prevent these additional government fees being applied, or if you have any questions or would like more information, please contact us – we are happy to help.
Rebecca Huang – called to the bar
The Partners, Associates and Staff at Moffat & Co. wish to offer their congratulations to Rebecca Huang on her recent call to the Bar. Rebecca completed her articles with our sister firm Macera & Jarzyna LLP this spring and is now a freshly minted Barrister & Solicitor and member of the Law Society of Ontario. Congratulations Rebecca !!
Federal court clarifies test for patent subject matter eligibility
By Jerome Bastien
The Federal Court has recently issued a decision in the case of Benjamin Moore & Co. v. The Attorney General of Canada, 2022 FC 923. This case follows the Amazon decisions by the Federal Court and the Federal Court of Appeal, and the more recent Choueifaty decision, in articulating what the legal test for patent subject matter eligibility is in Canada.
At issue in the case were two patent applications by Benjamin Moore which were rejected by the Canadian Patent Office. The claims, directed to a computer-implemented colour selection method, were found by the Patent Office to not comply with section 2 of the Patent Act. In reaching this conclusion, the Patent Office analyzed the problem solved by the claims, found that the problem was not a computer-related problem, and therefore concluded that the computer was not a part of the solution.
Both the appellant (Benjamin Moore) and the respondent (the Attorney General), agreed that the Patent Office applied the “problem and solution approach”, which was previously rejected by the Federal Court. Moreover, the Federal Court noted that despite paying lip service to the purposive construction approach prescribed by earlier decisions, CIPO continued to apply the problem and solution approach.
As all parties agreed that the Patent Office had applied the wrong legal test, the only issue to be decided by the court was which legal test should CIPO apply. The respondent requested that the matter be remitted to the Patent Office with instructions to follow the Choueifaty decision as guidance. In contrast, the appellant sought an order instructing the Patent Office to follow a legal test proposed by the Intellectual Property Institute of Canada (IPIC), which was an intervener in the case.
The test proposed by IPIC is reminiscent of prong 2 of step 2A in the subject matter eligibility test used by the USPTO, as it asks whether the claimed subject matter comprises a practical application which uses an abstract idea or scientific theorem, or whether the claims are just directed to a mere abstract idea or scientific theorem.
In a victory for the appellant and the intervener, the court agreed to instruct CIPO to use the practical application test proposed by IPIC. The matter will be remitted to CIPO for evaluation in accordance with the court’s instructions.
However, it is too early to tell whether this victory will translate into CIPO adopting the approach prescribed by the courts or whether it will continue paying lip service to court decisions while still applying the “problem and solution approach”, as it has done following past decisions.
By Jerome Bastien