Summary

January 10, 2017

PAB Finds Proposed Amendments Overcome Defects in Stabilized Alpha Helical Peptides Application

PAB 1393 - The Patent Appeal Board found that Canadian Patent Application No. 2,544,223, entitled “Stabilized Alpha Helical Peptides and Uses Thereof” lacked utility, lacked sufficient disclosure, was obvious, and included indefinite claims.
January 5, 2017

Industrial Design Registration for Helmet Face Shield Deemed Valid But Not Infringed

2016 FC 435 - In this industrial design case, the FC commented that the more crowded the field, the smaller the degree of difference required to evade the protection afforded by existing registrations.
January 3, 2017

FC Rules PM(NOC) Prohibition Application Not An Abuse of Process

2015 FC 1016 - In this decision, the FC permitted the applicant to proceed with its prohibition application, despite a previous decision finding that the patent in question was invalid.
December 20, 2016

Bargain Theory Requires Adequate Disclosure in Patents

2015 FC 108 - Patent drafters are required to provide adequate disclosure of an invention in patent applications to reduce the likelihood that the granted patent will be litigated and invalidated years down the road. This Federal Court (“FC”) decision dismissed an application for a prohibition order on the grounds of non-infringement and found the patent to be obvious and lacking in utility.
November 28, 2016

Patent Appeal Board Rejects Waste-Disposal Film Dispensing Cassette for Obviousness and Lack of Novelty

PAB 1392 - Patent applicants should be wary of relying solely on evidence of commercial success to avoid rejection on the grounds of obviousness, as factors such as marketing may be found to be the actual reason for the success.
November 23, 2016

FC Invalidates Selection Patent as Obvious in View of Genus Patent

2015 FC 247 - The Federal Court reminds us that a selection patent will typically require something more than routine testing to justify the reclaiming of a particular compound within a previously known class of compounds.
November 14, 2016

Patent Appeal Board Rejects “Simple” Sports Training Aid for Obviousness, Improper Inclusion of New Matter, and Indefiniteness

PAB 1391 - Although the simplicity of a product may be attractive from a marketing perspective, it makes for an easy rejection of the patent application for obviousness.
October 21, 2016

FCA Clarifies Test for Obviousness-Type Double-Patenting

2016 FCA 119 - The FCA dismissed the appeal, which alleged that Canadian Patent No. 2,226,784 was invalid on the basis of obviousness-type double-patenting and for lack of utility due to no sound prediction. As a result, the ‘784 patent was upheld.
October 6, 2016

Pharmaceutical Patentees Could Face More than 100% of Actual Damages under PM(NOC) Regulations

2014 FCA 68 - Innovator pharmaceutical companies should be cautious and think twice about how aggressively they defend their patents as they could potentially face paying more than 100% of actual damages as an award under section 8 of the PM(NOC) Regulations.
October 6, 2016

FC continues to demonstrate high degree of deference to discretionary orders of prothonotaries

2016 FC 318 - The Federal Court continues to demonstrate a high degree of deference owed to discretionary orders made by prothonotaries.
October 5, 2016

“More or Less Self-evident” Remains the Standard in the Obvious-to-Try Test

2015 FCA 286 - An attack on the Federal Court’s slight rewording of the obvious-to-try test has proven unsuccessful. The FC referring to a 'fair expectation of success'" was not a reviewable error.
October 5, 2016

Canadian Version of Alice Financial Services Patent Rejected for Lack of Statutory Subject Matter

PAB 1408 - The Canadian version of one of the computer-implemented financial services patent applications from the famous U.S. case on software patent eligibility, Alice Corp v CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), was rejected for lack of patentable subject matter.
October 4, 2016

FCA Alters the Standard of Review of Prothonotary Decisions

2016 FCA 215 - The FCA has held that the standard of review applicable to discretionary orders made by prothonotaries that was enunciated in Canada v. Aqua-Gem Investments Ltd. should be abandoned and replaced withthe standard that was set out by the Supreme Court of Canada in Housen v. Nikolaisen.
October 3, 2016

FCA Will not Reweigh Expert Evidence to Appeal Patent Invalidity

2015 FCA 191 - The FCA dismissed an appeal wherein Alcon sought to reverse a finding of invalidity against its patent by surreptitiously asking the FCA to reweigh the evidence as a challenge against the Federal Court Judge’s findings of fact and preferred expert evidence.
October 3, 2016

Careful Patent Drafting Saves Novartis’s EXJADE Patent Despite Two Distinct Promises

2016 FCA 230 - The FCA found that the EXJADE patent was drafted so as to make an important distinction between the utilities of the Formula I and Formula II compounds, and thereby held the Formula II claims to a lesser promise, and dismissed Teva’s allegations of inutility.
September 30, 2016

Software and Data Analytics Patents still a Challenge in Canada

PAB 1407 - The PAB rejected the computer-implemented data analytics patent application of Canadian Patent Application No. 2,798,566, entitled “Identified Customer Reporting”, for lack of statutory subject matter, since no physical feature – no computing device – was found to be essential to the claims.
September 6, 2016

Patent Application for Blackjack Variation Rejected as Unpatentable Subject Matter

In Re Smith, (Fed. Cir. 2015-1664) - A patent application for a variation on the blackjack game was rejected as unpatentable after the CAFC applied the two-step test for patentable subject matter from Mayo and Alice.
August 31, 2016

FCA Confirms Reasonably Diligent Search Correct Test in Obviousness Analysis

2015 FCA 163 - In the obviousness analysis and determining whether a person skilled in the art would have discovered the prior art, the FCA upheld the application of a reasonably diligent search standard.
August 29, 2016

FC Rejects Jurisdiction over Contract Law in Assignment Dispute, Comments that s. 51 of the Patent Act Supersedes Conflict of Laws Principles

2016 FC 830 - The FC dismissed a case of contractual dispute over the ownership of a patent, and commented that, regardless of whether conflict of laws principles apply, no assignment or transfer of a patent can take place except in accordance with the laws of the jurisdiction in which the patent was granted (s. 51 of the Patent Act).
August 22, 2016

FC Bifurcates Infringement & Validity Issues from Section 8 PM(NOC) Proceeding in Hopes of Settlement

2016 FC 720 - The FC bifurcated the issues of infringement and validity from any other section 8 issue in hopes that bifurcation would likely lead to a settlement of all the issues between the parties.