Whether this is your first time enforcing your Canadian patent, or you’re a frequent flyer in the Canadian courts, it is important to cover your bases before firing off a claim. Prudent planning will help to ensure that legal and financial resources are deployed efficiently. Although not exhaustive, here are the top 5… → Read More
Category Archives: Patents
Subscribe to Patents RSS FeedResponding to Threats of Patent Infringement
Posted in Intellectual Property, PatentsPatent disputes have proliferated in Alberta. As the economy has levelled-off in recent years, patentees have increasingly sought to enforce patents as part of their business strategy. Threats of patent infringement have proliferated and infringement actions have been filed in all Courts, particularly the Federal Court. Companies in the oil and gas sector must be… → Read More
Ontario Court Grants Summary Judgment Dismissing Apotex’s Claim for Unjust Enrichment
Posted in PatentsOn January 15, 2013, the Honourable Justice Michael G. Quigley of the Ontario Superior Court granted summary judgment to Abbott and Takeda, denying Apotex’s claim for disgorgement of profits on the basis of unjust enrichment. The case involved a claim for damages arising from Abbott’s invocation of the Patented Medicines (Notice of Compliance) Regulations. The PM(NOC)… → Read More
Responding to Canadian Patent Office Objections: Inherent Anticipation
Posted in PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a typical objection, the patent examiner asserts that the claimed compound is anticipated and cannot be patented because, although unknown at… → Read More
Obviousness: Clarifying the Inventive Concept
Posted in PatentsThe Federal Court of Appeal’s recent decision in Allergan, Inc. et al v. Apotex Inc. et al is the most significant decision on the question of obviousness to be rendered following the Supreme Court of Canada’s landmark decision in Apotex Inc. v. Sanofi‑Synthelabo Canada Inc. The Federal Court of Appeal’s decision is particularly significant for… → Read More
Why Innovators Need a Right of Appeal in PM(NOC) Applications
Posted in PatentsOn Friday, November 23, 2012 the Federal Court of Appeal released its decision in A-312-12 dismissing Apotex’s appeal of Justice Hughes’ order dated June 18, 2012 granting Allergan’s application for a prohibition order in respect of the drug COMBIGAN. This decision, and related litigation involving COMBIGAN, clearly demonstrates why innovators need a right of appeal… → Read More
Tanner, How Do I… Download a Canadian Patent?
Posted in PatentsTanner, How Do I… is a blogging series in which Steven Tanner provides helpful answers to IP law questions. You want to download a Canadian patent. Is this possible? Yes! And here’s how. There are three good ways to download a Canadian patent. 1. My Preferred Way to Download a Canadian Patent My preferred way… → Read More
Supreme Court Invalidates Pfizer’s Blockbuster VIAGRA® Patent
Posted in PatentsCanada’s top court has struck down Pfizer Inc.’s lucrative patent on VIAGRA, paving the way for generic entry into the Canadian marketplace shortly. In Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60, the Supreme Court of Canada unanimously (7-0) declared Pfizer’s patent for its blockbuster VIAGRA drug invalid on the basis of insufficient… → Read More
FCA Describes Specificity Requirements for Listing Patents on the Patent Register
Posted in PatentsThe Federal Court of Appeal has clarified that there must be a “high threshold of consistency” between the content of a new drug submission and a patent’s claims in order for the patent to be listed on the patent register pursuant to section 4(2)(a) of the PM(NOC) Regulations. This decision, Gilead Sciences Canada Inc. v…. → Read More
Tanner, How Do I… Examine an Inventor Who Lives in Canada?
Posted in PatentsTanner, How Do I… is a blogging series in which Steven Tanner provides helpful answers to IP law questions. You are involved in a foreign case and want to examine an inventor of a patent. Just one problem: the inventor lives in Canada. Can you compel the inventor’s testimony for use in your foreign proceeding? … → Read More
Responding to Canadian Patent Office Objections: Proof of Utility
Section 2 of the Patent Act
Posted in PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a typical objection, the patent examiner asserts that the claimed composition of matter, while novel and non-obvious, cannot be patented because… → Read More
Recent Pair of Rampiril Decisions Clarifies Limits on s. 8 Damages in Patent Law
Posted in Intellectual Property, PatentsWhen a generic drug claims damages against a brand name drug, what limits should be put on calculating compensation? Section 8 of the Patented Medicines (Notice of Compliance) Regulations was designed to answer just that question, but it left some questions unanswered. A pair of twin judgments by Justice Snider, Teva Canada Ltd. v. Sanofi-Aventis… → Read More
Responding to Canadian Patent Office Objections: Dosing Regimens
Posted in Intellectual Property, PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a typical objection, the patent examiner asserts that the claimed medical treatment with dosing elements is unpatentable subject matter falling outside… → Read More
Responding to Canadian Patent Office Objections: Breadth of Claims
Posted in Intellectual Property, PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a standard objection, the patent examiner asserts that the claims do not comply with section 84 of the Patent Rules because… → Read More
Hot Off the Press – Doing Business in Canada 2012
Posted in Copyright, Intellectual Property, M&A/Finance, Patents, Privacy, Trade-marksIf your organization is currently thinking about establishing or acquiring a technology business in Canada, the 2012 edition of Doing Business in Canada, written by McCarthy Tétrault, will prove to be a valuable resource. The guide provides a broad overview of the legal considerations that non-residents should take into account to help ensure their success… → Read More
Responding to Canadian Patent Office Objections: The Equivalents Clause
Posted in PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Clause Equivalents clauses are common in patent specifications, particularly those originally prepared and filed in the United States. A classic equivalents clause provides… → Read More
Responding to Canadian Patent Office Objections: Patent Prosecution Primer
Posted in PatentsThe Canadian Patent Act and Patent Rules provide the entire statutory framework for patent law in Canada. The Act and Rules contain all of the requirements to be satisfied before the Commissioner of Patents is obliged to grant a patent. These requirements relate to two main aspects of patents: (a) the nature of the invention… → Read More
Tech Law Summit Recap – Key Developments in IP Law
Posted in Copyright, Intellectual Property, Patents, Trade-marksThe recent McCarthy Tétrault Technology Law Summit included a panel on “Key Developments in IP Law,” featuring James Skippen, Chairman and Chief Executive Officer, WiLAN Inc. and McCarthy Tétrault partners Beth MacDonald, David Gray and Barry Sookman. Paul Armitage, another McCarthy Tétrault partner, moderated the panel. Patents James Skippen commented on the growing awareness of… → Read More
An Early Present for Amazon – Amazon’s One-Click Patent Application Allowed by the Canadian Patent Office
Posted in Intellectual Property, PatentsIn a surprising move, less than one month after the much publicized Federal Court of Appeal decision in Canada (AG) v. Amazon.com, Inc., the Commissioner of Patents has allowed Amazon’s “one-click” patent application containing the same claims that were reviewed by the Federal Court of Appeal. As we previously reported, the Federal Court of Appeal… → Read More
Obviousness: New Decision Holds that Court is to Look at Patent Disclosure to Determine the Inventive Concept
Posted in Intellectual Property, PatentsTo determine whether an invention claimed in a patent is obvious, what parts of a patent can the court consider to ascertain the inventive concept of the claims? According to the Federal Court decision in Allergan Inc. v. Canada (Minister of Health), the disclosure of a patent – not just the claims themselves – can be used… → Read More
Federal Court of Appeal Sends Amazon One-Click Patent Application Back to Commissioner of Patents
Posted in Intellectual Property, PatentsThe Federal Court of Appeal has released its decision in Canada (AG) v. Amazon.com, Inc. (Court Docket No. A-435-10), a case which is being closely watched because of its potential implications for the patentability of business methods. The Court of Appeal allowed the appeal in part, directing that the Commissioner of Patents resume the examination of Amazon.com’s patent application in accordance with the Court’s reasons…. → Read More
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