Publications

August 10, 2020

Intellectual Property: New Options for Patent Ownership Disputes

Since 1995, the Federal Court of Canada has refused to hear questions relating solely to patent ownership. In Lawther v. 424470 B.C. Ltd.1 the Federal Court declined jurisdiction, stating that “[t]his Court has no jurisdiction to entertain a dispute which is solely a matter of contract”, thereby (…)

May 29, 2020

Natural Products and Pharmaceutical Innovations: What are the Patent Options?

Natural products play an important role in pharmaceutical innovation. They are active components in many medicines. For example, nearly half of the small molecules used to treat cancer are natural products or directly derived from natural products.1 They are also components of vaccines. The (…)

October 31, 2019

Estoppel based on patent prosecution history in Canada: The Pandora’s box is opened

Nearly twenty years ago, the Supreme Court of Canada1 rejected the theory of estoppel based on a patent’s prosecution history, more commonly known as "file wrapper estoppel"2). At the time, Justice Binnie wrote, “[…]purposive construction, which keeps the focus on the language of the claims, seems (…)

October 25, 2019

Changes to the Canadian Patent Rules came into force on October 30^th 2019

The new Patent Rules, as well as certain amendments to the Patent Act, came into force on October 30, 2019. These changes implement the Patent Law Treaty and reduce the risk to applicants of a loss of rights but also bring about practice changes worthy of mention. Canadian national phase of a PCT (…)

July 10, 2019

Ready, set go! Changes to Canadian patent practice coming into force later this year

The Government of Canada has just announced that the new Patent Rules, as well as certain amendments to the Patent Act, will come into force on October 30, 2019. These changes implement the Patent Law Treaty and reduce the risk of a loss of rights to Applicants but also bring about practice changes (…)

October 5, 2018

Use it and (maybe) lose it : Prior use and patentability

It is generally universal in patenting that an invention cannot have been previously disclosed to the public in order to qualify for patent protection. Canadian law stipulates that the subject matter of a patent claim must not have been disclosed “in such a manner that the subject-matter became (…)

September 21, 2017

The Canada-European Union Comprehensive Economic and Trade Agreement (CETA) is coming into force today!

It is today, September 21st 2017, that Bill C-30 1 comes into force. As a result of its provisions, several Canadian laws are amended in order to allow for implementation of the Canada–European Union Comprehensive Economic and Trade Agreement “CETA” 2. Chapter 20 of the CETA deals with the (…)

August 1, 2017

Medical use claims not involving the professional skill of a physician are patent-eligible in Canada.

In a previous newsletter 1, we discussed a change in Canadian patent practice in respect of the patent-eligibility of claims relating to medical uses, further to a decision from the Federal Court 2. Following this decision, the Canadian Intellectual Property Office (CIPO) issued a revised Practice (…)

May 10, 2017

Getting on the fast track: Accelerating patent examination in Canada

Would you like to obtain a Canadian patent quickly? You’re in luck – mechanisms are available to accelerate patent examination at the Canadian Intellectual Property Office (CIPO), depending on the technology, the situation and your particular needs. Benefits Such acceleration of examination (…)

January 23, 2017

Exemptions to infringement for research under Canadian law

Various jurisdictions provide exemptions to patent infringement based on research or non-commercial activities.  Canada is no exception (pun intended) and provides both statutory and common law exemptions to patent infringement. Statutory Exemption The statutory exemption to infringement under (…)

December 7, 2016

Double Patenting Under Canadian Patent Law

Double patenting occurs when the same invention is claimed in more than one patent owned by the same entity. Double patenting is prohibited in most jurisdictions. However, there are unique aspects to double patenting under Canadian practice that may significantly influence patent prosecution (…)

January 25, 2016

Beware If You Compare: Data Protection May Stop Approval Of A New Drug Submission

Sanofi-Aventis’s ELOXATIN® had been sold in Canada since 1999 under the Special Access Program (SAP) of Health Canada, which allows for sale of a drug in exceptional cases prior to receiving regular marketing approval, i.e. prior to the issuance of a Notice of Compliance (NOC).  The active (…)

April 7, 2015

Recent developments on patent-eligibility of medical use claims in Canada

Last December, the Federal Court of Canada overturned a decision of the Commissioner of Patents to refuse a patent claiming a fixed dosage regimen for the drug Humira® (Adalimunab) used in rheumatoid arthritis. The Court’s decision 1 is found here: 2014 FC 1251. This Court decision was an appeal of (…)