PCK-Reporter

October 5, 2021
A close-up photograph of a metal vaporizer or vape-pen

United States Court of Appeals Clarifies “Actual Notice” Under § 287

Fed. Cir. No. 19-2286: The actual notice requirement of § 287 is only satisfied when the recipient is informed of the identity of the patent and the allegedly infringing activity.
September 14, 2021
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Federal Circuit Denies Relief to USPTO From Prolific Inventor Gilbert Hyatt

Fed. Cir. Nos. 20-2321-2325: The Federal Circuit clarified that, while an applicant is required to pay all the expenses of PTAB proceedings, this does not include expert witness fees.
August 23, 2021
photo of a hockey stick and a hockey puck on an ice rink.

And He Scores! Patent Infringement Suit Against CCM Hockey Dismissed

2021 FCA 166: The Federal Court of Appeal's observations on the use of prosecution history demonstrate that courts continue to adapt to recent amendments to patent law.
August 18, 2021
Photograph of a black robotic hand reaching out to touch a human hand

Are We Ready to Name AI as an Inventor of Patents?

The Australian Federal Court recently recognized that an artificial intelligence can be listed as an inventor under the Australian Patent Act.
August 9, 2021
Photograph of an auto-injector needle with a drop of liquid at the tip of the needle.

Federal Court of Appeal Reaffirms Overbreadth as Grounds for Invalidity

2021 FCA 154: The FCA held that overbreadth is not an “improper re-emergence of the promise doctrine”. Overbreadth is supported by bargain theory and s. 27 of the Act.
July 27, 2021
Photograph of centrifuge tubes in a test tube rack on a laboratory bench.

Variations on Previously Approved Drugs Are Ineligible for Data Protection

2021 FCA 137: On July 12, 2021, the Federal Court of Appeal issued a decision dismissing an application for judicial review of a decision of the Minister of Health denying data protection for a drug. Janssen Inc. had sought protection for its drug SPRAVATO but was rejected on the basis that it was not an “innovative drug” eligible for such protection.
July 21, 2021
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A Synergistic Combination: Patents and SR&ED

The trick is to efficiently resource patent and SR&ED initiatives while keeping product development on track. Here are a few tips that can help you do that.
July 7, 2021

CAFC Invalidates a Camera Patent, Blurring Lines in the Patent Eligibility Inquiry

Fed. Cir. No. 2020-1760: The CAFC sided with Apple and Samsung, finding a patent for an “improved” digital camera to be an abstract idea and not patent-eligible subject matter.
June 21, 2021
Photograph of a remote control for a smart tv pictured in front of a television screen displaying a streaming service.

Access Denied: Federal Court of Appeal Affirms Use of Site-Blocking Orders

2021 FCA 100: A recent decision affirms the Federal Court's power to make site-blocking orders requiring third-party ISPs to limit access to copyright-infringing content.
June 7, 2021
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PAB Allows Two Software Patents, Revealing Post-Choueifaty Approach

2021 CACP 9, 2021 CACP 12: In two recent decisions involving software patents, the Patent Appeal Board found the inventions to be directed to patentable subject-matter
June 2, 2021
A metal worker using an angle grinder to cut steel.

$7 Million Award Upheld for Employee Theft of Confidential Information

2020 BCCA 361: A BC court upheld one of Canada's largest awards for trade secret theft. GEA was awarded over $7 million against a group of former employees.
May 19, 2021
Photograph of a row of glass bottles containing vaccines against COVID-19.

Promoting Diversity vs COVID-19 Patents: Why We Must Get It Right

As the pandemic rages and the vaccines roll out, we face a difficult question about whether to relax patents on COVID-19 technologies in order to accelerate global vaccine distribution. For intellectual property professionals, we must ensure that we help guide the right policy decision. History is going to judge us. 
April 20, 2021
Canadian flag waving in front of the Parliament buildings in Ottawa.

Canadian Innovation Deserves Robust Roster of Canadian Patent Agents Registered Before the USPTO

This paper uses publicly available filing statistics and a professional survey in an attempt to gather empirical data on the work done by Canadian Patent Agents in the Canadian Intellectual Property Office (“CIPO”) versus the United States Patent and Trademark Office (“USPTO”).
March 26, 2021
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Federal Court Applies Its Own Claim Construction to Infringement Case

2021 FC 85: The Federal Court upheld the validity of all claims, but found that PetroChina was not infringing Maoz Betser-Zilevitch's patent for an SAGD.
March 3, 2021
Model of a human brain photographed in an anatomy lab.

A Closer Look: CAFC Finds Immersion Photography Claims Are Obvious

Fed Cir, 2019-1927: The CAFC overturned a finding of non-obviousness by the US Patent Trial and Appeal Board on a patent owned by Melanoscan, LLC.
February 16, 2021
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Patent Appeal Board Rules Choueifaty Patent Application to Be Patentable

PAB 1556: Canada’s Patent Appeal Board reconsidered Mr. Choueifaty’s patent application for a computer-implemented method of managing portfolio assets.
February 1, 2021
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Federal Court of Appeal Restricts Admissibility of Foreign Prosecution History

2021 FCA 7: The FCA narrowly interpreted section 53.1 of the Patent Act, refusing to look at a corresponding US application that was not named by number.
January 19, 2021

Quebec Court Finds New Drug Pricing Rules Tip Constitutional Scale

2020 QCCS 4541: Court held that forthcoming amendments to the Patented Medicines Regulations are unconstitutional and infringe on provincial powers.
December 18, 2020
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Less Baggage: Trademark Registration Later Expunged Will Not Be Liable for Prior Damages

2020 FCA 210: Court held that parties are not entitled to damages or an accounting of profits following the expungement of an infringing trademark.
December 2, 2020
Close-up photograph of a fountain pen writing words in ink on paper.

Written Description Particularly Important if Amending Claims in Response to Competitor

Fed. Cir. 2018-1779: A patent for testing fetal DNA was found to be unpatentable because the claims were not fully supported by the written description.