Benefits of a Canadian Patent Filing for High-Tech Innovators
January 16, 2018
Treatment of computer-implemented inventions by the Canadian Intellectual Property Office (CIPO) has remained consistent for many years. CIPO’s predictable treatment of computer-implemented inventions has likely contributed to the uptick in computer-implemented invention patent filings since 2011. …
Read MorePatenting Artificial Intelligence
January 05, 2018
Artificial intelligence (AI) and its applications are the focus of many emerging companies and many new products across a diverse number of fields. As such, it’s natural to consider whether patent protection may be available for various AI innovations. First, as with any other kind of invention,…
Read MoreDon’t Cut Corners on Provisional Patent Filings
November 15, 2017
Patent offices often warn the public about blatant scams such as fake payment notifications sent by third parties, but do not generally warn the public about other less-overt rip-offs or pitfalls. In many cases, practitioners that simply take a summary of an invention prepared by an inventor and…
Read MoreBroadest Reasonable Interpretation Unreasonably Broad?
October 31, 2017
In US patent law, during patent examination, claims are to be given the broadest reasonable interpretation (BRI) consistent the specification. A pair of recent decisions of the US Federal Circuit explored this principle in the context of inter partes review and ex parte…
Read MoreProposed Amendments to the Patent Rules
October 12, 2017
The Canadian Intellectual Property Office (CIPO) recently engaged in public consultation on proposed amendments to Canada’s Patent Rules. The proposed Patent Rules, once implemented, will allow the coming-into-force of amendments to Canada’s Patent Act which, amongst other…
Read MoreFurther Discussion of Subject Matter Eligibility by Patent Appeal Board
September 07, 2017
On the heels of its decisions relating to patentability of graphical user interfaces (previously discussed here) from late last year, the Canadian Patent Appeal Board (PAB) has provided further insight on the issue…
Read MoreWho owns an invention created by an employee?
August 21, 2017
When an employee conceives of an invention, who owns it? The employer or the employee? In Canada the general rule is that the employee owns his or her inventions in the absence of an agreement the contrary. Many employers address this through ensuring that employment agreements include a…
Read MoreAre trademarks in association with computer software goods evolving with technology?
August 11, 2017
Computer software companies are cognizant of evolving challenges relating to patentable subject matter. Computer software companies should also consider managing trademark portfolios by evaluating whether existing trademark registrations may be at risk of expungement. Under the current Trade-marks…
Read MoreWhat about Schlumberger?
July 25, 2017
For decades, Schlumberger Canada Ltd v Canada (Commissioner of Patents), [1981] 56 CPR (2d) 204 (FCA), was the only Canadian decision on computer-implemented inventions. In that case, the court upheld the Commissioner’s rejection of an invention implemented by way of software. The Federal…
Read MoreRecent Decisions Increase Canada’s Appeal as a Patent Filing Jurisdiction
July 11, 2017
In recent weeks Canadian courts have been busy issuing patent-related decisions and patent filers should take notice of some interesting developments which may enhance the appeal of Canada as a filing jurisdiction. Two decisions which were released to the public in the last two weeks make…
Read MoreUnintended Effects: Impact of Making Changes to a U.S. Provisional when filing a Regular Patent Application
May 31, 2017
Provisional patent applications (PPAs) are often filed as part of a patent portfolio filing strategy. A PPA is not a regular patent application. A PPA will not be examined by any patent office and will not result in a granted patent. PPAs are unique to the United States patent regime. For example,…
Read MoreExpediting Patent Prosecution in Canada
May 17, 2017
In Canada, as in many other jurisdictions, a patent application is only examined upon request. To avoid abandonment of an application, a request for examination must be made within five years of the filing date of the application. Applications are generally examined sequentially according to the order…
Read MorePre-filing commercialization can undermine your patent rights
May 09, 2017
Most people are familiar with the principle that if you publicly disclose your invention you might lose your right to seek patent protection for that invention. Canada, the U.S. and a handful of other countries provide a bit of a grace period, but in general people try to ensure that they file a patent…
Read MorePotential Perils of Relying on Unregistered Intellectual Property Rights
May 02, 2017
Companies sometimes decide to forgo registering intellectual property rights and hope that they will have some protection under the law without having formally registered such rights. A recent case highlighted some of the perils in attempting to rely on unregistered intellectual property rights to…
Read MoreChanges to Canadian Industrial Design Practice
March 28, 2017
Industrial design registration remains an underutilized form of intellectual property protection. In Canada, an original industrial design can be registered to protect the look and appearance of a finished article. Unlike a patent, which protects the way an article is used or functions, an industrial…
Read MoreInnovation in the 2017 federal budget – all talk, no action
March 22, 2017
The Canadian federal government released its 2017 budget on March 22, 2017. It was billed in pre-budget leaks as the “innovation” budget. Since coming to power in 2015, the current Liberal government has been fond of using the word “innovation” as often as possible in its policy statements and marketing. …
Read MoreThe trademark “Green Rush” is on in Canada
March 15, 2017
While marijuana has been legal for medicinal purposes in Canada since 2001, the marijuana industry has only recently seen a high level of trademark activity. Annual trademark filings for marijuana-related goods and services began accelerating in 2012 and there was much activity from 2014 to 2017. …
Read MoreAttention Content Creators: Technological Protection Measures Hold Weight in Canada
March 07, 2017
In 2012, the Copyright Act was amended to include new provisions outlining prohibitions for circumventing technological protection measures (“TPMs”). The recent decision of Nintendo of America Inc v King, 2017 FC 246, is the first time the Federal Court of Canada substantively considers…
Read MoreKeyword Advertising: When “Sponsored Links” Can Get You in Hot Water
February 28, 2017
With catchphrases such as “search engine optimization”, “AdWords”, and “pay-per-click” dominating the online marketing vernacular, it is helpful for commercial entities and marketing professionals to be cognizant of potential trademark law issues that may arise when engaging in promotional activities.…
Read MoreDo FinTech Patents Have a Future?
February 22, 2017
Every day brings a new flurry of articles about FinTech (“financial technology”) startups and their potential to be disruptive forces. Traditional banking and financial industry players are said to be at great risk. However, many of them have seen this coming and are preparing to defend their turf.…
Read MoreShould a Patent Applicant File Prior Art at the Canadian Intellectual Property Office?
February 14, 2017
In the United States, “[e]ach individual associated with the filing and prosecution of a patent application … [has] a duty to disclose to the Office all information known to that individual to be material to patentability” (see e.g., 37 CFR 1.56, 1.97, 1.98). Prior art is filed with the United States…
Read MoreTreatment of GUI Patent Claims in Canada
February 07, 2017
Canadian patent examiners sometimes object to graphical user interface claims on the basis that they are unpatentable since they have “purely intellectual or aesthetic significance.” There is an old line of decisions that hold that something having solely intellectual or aesthetic significance is…
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