Validity

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.
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 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 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 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.