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Do you actually own the intellectual property generated by your employees?
Smart & Biggar
  • Intellectual Property
  • 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
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 21 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.

Federal Court of Appeal upholds Federal Court decision finding Shire's VYVANSE patent valid
Smart & Biggar
  • Intellectual Property
  • 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
Smart & Biggar
  • Intellectual Property
  • 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?
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 07 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.

Patentability of diagnostic methods – has the Patent Office drawn the line?
Smart & Biggar
  • Intellectual Property
  • 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.

Protecting innovations through patent due diligence and FTO analysis
Smart & Biggar
  • Intellectual Property
  • International
  • 29 March 2021

Innovations that arise in competitive markets with a well-developed and rapidly evolving IP space often integrate several pre-existing technologies from various scientific and engineering disciplines. For companies that operate in such an environment, protecting innovations by conducting patent due diligence and freedom-to-operate analysis can be integral to growth and provide a competitive advantage.

CIPO broadens list of acceptable telephone amendments in trademark prosecution
Smart & Biggar
  • Intellectual Property
  • 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.

Allowance of Choueifaty application provides insight into CIPO's future approach to patentable subject matter
Smart & Biggar
  • Intellectual Property
  • Canada
  • 15 March 2021

In an apparent conclusion to the patent at the heart of the Federal Court's decision in Yves Choueifaty v Attorney General of Canada, the commissioner of patents has allowed Canadian Patent Application 2635393. The commissioner's decision provides insight into how the Canadian Intellectual Property Office will approach patentable subject matter in future and apply the new guidelines on patentable subject matter released in response to Choueifaty.

Pampered Chef succeeds again in trademark infringement battle
Smart & Biggar
  • Intellectual Property
  • Canada
  • 08 March 2021

The Federal Court of Appeal recently dismissed an appeal of the Federal Court's trial decision in a case concerning trademark infringement, passing off and dilution and depreciation of goodwill. Pampered Chef, a world leader in premium kitchenware products, had previously successfully defended a claim brought by Canada's largest retailer, Loblaws, in relation to its use of a trademark that included the letters 'P' and 'C'.

Federal Court finds silodosin formulation patent valid but not infringed
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 24 February 2021

The Federal Court recently issued a decision in a patent infringement action pursuant to Section 6(1) of the Patented Medicines (Notice of Compliance) Regulations relating to silodosin. Although the court found that the patent was not invalid on the basis of obviousness, it also found that the patent had not been infringed.

Options to consider when requesting an extension to respond to the Patent Office
Smart & Biggar
  • Intellectual Property
  • Canada
  • 22 February 2021

The recent extensive amendments to the Patent Act and Patent Rules have complicated the process of responding to an office action (ie, examiner's report) issued by the Patent Office. This article addresses the legal and practical issues surrounding extensions for responding to examiner's reports and alternative approaches that may be taken.

Federal Court finds silodosin formulation patent valid but not infringed
Smart & Biggar
  • Intellectual Property
  • Canada
  • 15 February 2021

The Federal Court recently issued a decision in a patent infringement action pursuant to Section 6(1) of the Patented Medicines (Notice of Compliance) Regulations relating to silodosin. Although the court found that the patent was not invalid on the basis of obviousness, it also found that the patent had not been infringed.

Trademarks in 2020: notable cases and developments
Smart & Biggar
  • Intellectual Property
  • Canada
  • 08 February 2021

There were several notable trademark cases and developments in Canada in 2020, including cases addressing comparative advertising, depreciation of goodwill, brand parody, trademark use in the absence of a brick-and-mortar location and potential claims by exclusive distributors against importers of grey market goods. This article revisits these cases and developments and considers their implications for 2021.

Federal Court continues trend of granting summary judgment in appropriate patent proceedings
Smart & Biggar
  • Intellectual Property
  • Canada
  • 25 January 2021

In a recent case, the Federal Court granted summary judgment in favour of the plaintiff in respect of its patent impeachment action. This decision further demonstrates the Federal Court's recent willingness to grant summary judgment in patent cases in appropriate circumstances. Accordingly, it appears that in certain cases, summary judgment may be a viable option to resolve patent disputes more expeditiously while avoiding the costs of a full patent trial.

Cloud computing: overview of IP issues
Smart & Biggar
  • Intellectual Property
  • Canada
  • 11 January 2021

Cloud computing has increasingly become a dominant model for computer and IT service, with the majority of businesses worldwide using computing resources and storing data in the Cloud. However, despite the ease of use and convenience of cloud computing, moving data and services into the Cloud raises several legal issues for both cloud computing providers and users. This article highlights some of the issues and questions relating to IP rights raised by cloud computing.

What to expect from Canada's new examination guidelines for patentable subject matter – interview
Smart & Biggar
  • Intellectual Property
  • Canada
  • 21 December 2020

The Canadian Intellectual Property Office (CIPO) recently released new guidelines on patentable subject matter and a set of examples applying these new guidelines. This video summarises the main changes introduced and examines how CIPO will deem computer-implemented inventions to be patentable under the new guidelines. It also offers advice to applicants of computer-implemented inventions to increase their chances of overcoming patentable subject matter objections in Canada.

Trademarks Office to allow expedited examination for COVID-19-related goods and services
Smart & Biggar
  • Intellectual Property
  • Canada
  • 21 December 2020

On 14 December 2020, for the first time in more than a decade, the Trademarks Office announced that it will grant requests for the expedited examination of trademark applications. However, expedited examination will be limited to applications where the goods or services are for the prevention or treatment of COVID-19. This is a notable change in practice, since there is currently a significant backlog facing trademark applications in Canada, with delays in examination of approximately two years from filing.

Why Canadian trademark owners should consider whether international registration is right for them
Smart & Biggar
  • Intellectual Property
  • Canada
  • 14 December 2020

Until 2019 most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside Canada. They had to file separate applications in each country of interest, except in the few areas where a regional application was available (eg, the European Union). Now there is a new option available to Canadian brands and businesses looking to expand and protect their trademarks beyond Canada's borders: international registration.

Innovators challenge final PMPRB Guidelines in new Federal Court application
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 09 December 2020

Innovative Medicines Canada and numerous research-based pharmaceutical companies recently commenced an application for judicial review of the final Patented Medicine Prices Review Board Guidelines. The guidelines aim to operationalise amendments to the Patented Medicines Regulations scheduled to come into force on 1 January 2021.

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