snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: Patent Act

‘Promise Doctrine’ Abolished by the Supreme Court of Canada

Posted in Intellectual Property, Litigation, Patents

On June 30, 2017, the Supreme Court of Canada, released a landmark patent decision (2017 SCC 36) abolishing Canada’s so-called ‘Promise Doctrine’ by finding it “unsound”, “not good law” and “incongruent with the both the words and scheme of the Patent Act.”Continue Reading

CETA Implementation in Canada: Bill C-30 Brings Significant Changes to the Canadian Patent System

Posted in Intellectual Property, Litigation, Patents

Changes are coming swiftly, as the federal government moves to implement the Comprehensive Economic and Trade Agreement (“CETA”) just days after it was signed by Prime Minister Trudeau in Brussels at the end of October 2016.

These changes will significantly impact biologic/pharma patents in two major ways. First, they will implement, for the first time, a Canadianized version of patent-term restoration. Second, they will revamp the current framework for linkage between patents and the approval of biosimilar/generic drugs in Canada by giving innovators the right of appeal, by changing the nature of the PM(NOC) proceedings to a more U.S.-style approach, … Continue Reading

Responding to Canadian Patent Office Objections: Inherent Anticipation

Posted in Patents

This 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 the time, the compound was inherently present in circumstances described in an earlier disclosure. The examiner will rely on section 28.2 of the Patent Act as the statutory basis for the objection.

This objection relates to the nature of the claimed invention, rather than an … Continue Reading

Responding to Canadian Patent Office Objections: Proof of Utility

Section 2 of the Patent Act

Posted in Patents

This 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 the application’s description fails to prove the utility of all claimed embodiments. The examiner usually will rely on:

  • the definition of “invention” in section 2 of the Patent Act as the statutory basis for the objection.
  • recent case law, mainly from abbreviated proceedings under the
Continue Reading

Responding to Canadian Patent Office Objections: Dosing Regimens

Posted in Intellectual Property, Patents

This 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 the definition of “invention” in section 2 of the Patent Act. The examiner may state that:

  • the “inventive concept” identified from the disclosure is a patent-ineligible dosing regimen;
  • the applicant relies on a patent-ineligible dosing regimen to distinguish the claimed treatment from the prior
Continue Reading

Responding to Canadian Patent Office Objections: Breadth of Claims

Posted in Intellectual Property, Patents

This 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 they are broader in scope than the teachings of the description. Frequently, the examiner will request that the claims be amended to incorporate an “essential element” identified from the disclosure.

The Regulatory Provision

The Patent Rules are subordinate legislation enacted pursuant to section 12 of … Continue Reading

Responding to Canadian Patent Office Objections: The Equivalents Clause

Posted in Patents

This 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 that the invention is not limited to specific embodiments disclosed in the description, and encompasses modifications falling within the scope of the claims. In the US, the clause reinforces application of the doctrine of equivalents. In Canada, the clause has a similar function, reinforcing a … Continue Reading

Responding to Canadian Patent Office Objections: Patent Prosecution Primer

Posted in Patents

The 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 for which patent protection is sought; and (b) the patent application that describes and claims the invention. 

The Act and Rules form a complete code for patent grant. Subsection 27(1) of the Patent Act requires the Commissioner of Patents to grant a patent if the … Continue Reading