Intellectual Property, Smart & Biggar updates


Contributed by Smart & Biggar
Do you actually own the intellectual property generated by your employees?
  • Canada
  • 26 April 2021

Employees are the source of some of their employer's most valuable intangible assets – namely, IP assets. For this reason, it is usually in a business's best interest to ensure its ownership of IP assets generated by employees. The rules that apply to employer-employee relationships vary greatly between copyright, patents and industrial designs. Thus, any business with employees should be aware of these unique rules.

Federal Court of Appeal upholds Federal Court decision finding Shire's VYVANSE patent valid
  • Canada
  • 19 April 2021

The Federal Court of Appeal has dismissed Apotex's appeal of the Federal Court decision which held that the claims of Canadian Patent 2,527,646 were valid and prohibited the minister of health from issuing a notice of compliance to Apotex for its lisdexamfetamine product (Shire's VYVANSE) until the patent's expiry. The prohibition application was consolidated with Apotex's action seeking a declaration of invalidity and non-infringement.

No more chasing rainbows: advantages of black and white when filing Canadian trademark applications
  • Canada
  • 12 April 2021

Some foreign brand owners may be surprised to learn that in Canada, when seeking to protect design (or figurative) marks, it is sometimes better to register marks in black and white in cases where the marks would normally be displayed in colour. Moreover, broader protection can typically be secured in Canada by registering design (or figurative) marks in black and white as opposed to including a colour claim.

Patentability of diagnostic methods – has the Patent Office drawn the line?
  • Canada
  • 05 April 2021

IP offices have long grappled with whether a medical diagnostic constitutes a traditionally patentable concrete or physical method or instead is merely an unpatentable and intangible abstract idea. Although a new diagnostic tool is typically embodied in a physical device or method, the principal advance often lies in the recognition of a previously unknown correlation. New guidance from the Patent Office is a welcome step forward in this difficult area.

CIPO broadens list of acceptable telephone amendments in trademark prosecution
  • Canada
  • 22 March 2021

In May 2020 the Canadian Intellectual Property Office (CIPO) began an initiative to accept telephone amendments for simple prosecution issues. Considering the initiative's success in helping CIPO to improve efficiency and reduce its backlog, it has decided to expand the list of issues for which telephone amendments are acceptable.

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