PCK Reporter

September 15, 2015

FCA Rejects “Exact Matching” Requirement in PM(NOC) Regulations

Eli Lilly Canada Inc v Canada (Attorney General), 2015 FCA 166 - The FCA rejected the notion adopted by the Federal Court that a higher level of specificity is required to adhere to the Regulations than is required for an element to be claimed as a matter of claim construction, bringing the law in line with Industry Canada proposed amendments.
September 9, 2015

The Word “will” can Indicate a Patent Promise, not an Expectation

AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 - The FCA acknowledged that the word “will” often refers to an expectation or goal rather than a promise, but still held that the FC did not err in finding that a promise was made when reading the patent as a whole from the eyes of a skilled reader.
September 8, 2015

Federal Court Revisits Schmeiser Differential Method for Calculating Profits

ADIR v Apotex Inc, 2015 FC 721 - In an accounting of profits case, the FC stated that if a non-infringing alternative is to be considered, it “cannot be what one would have done had one complied with the law”.
September 2, 2015

In Situ Reaction Cannot Avoid AstraZeneca’s Product Claim

AstraZeneca Canada Inc v Apotex Inc, 2015 FC 322 - Claim 1 was worded general enough to capture Apotex’s subcoating layer even though Apotex’s subcoating layer was generated by an in situ chemical reaction, a process that the patentee had not contemplated.
August 20, 2015

USPTO Proposes AIA Rule Changes

USPTO Proposes AIA Rule Changes - Proposes to affirm the "broadest reasonable interpretation standard" in IPR proceedings and other changes.
August 17, 2015

IPR Proceedings in the US retain the Broadest Reasonable Interpretation Standard for Claim Construction & Strict Claim Amendment Requirements

Microsoft Corporation v Proxyconn, Inc, - The “broadest reasonable interpretation standard” (“BRI”) standard is the standard for claim construction in Inter Partes Review IPR proceedings and newly substituted claims must be demonstrated to be patentable over the prior art of record.
August 10, 2015

Patent Royalties Restricted to Term of the Patent by SCOTUS

Kimble et al v Marvel Entertainment, LLC, 576 U.S. ____ (2015) - The U.S. Supreme Court upheld the 50 year old rule from Brulotte v Thys Co, 379 US 29, that prohibits royalties from being charged on formerly patented products after the patent has expired.
July 5, 2015

ONSC Orders Inspection and Photographs of One-of-a-Kind Home in Copyright Infringement Case

Tan-Jen Ltd v Di Pede, 2015 ONSC 3685 - In a copyright infringement case regarding supposedly one-of-a-kind design moulds for a home's exterior, the Court allowed inspection of the property for valuation purposes and refused a request to keep the court proceedings closed from the public.
June 30, 2015

Writing Provisional Software Patent Applications

In the age of the “Lean Startup” $100,000 can be enough to get a startup well off the ground. However, with such tight budgets and limited funding there is often not much room left to pay a professional patent agent several thousand dollars to draft your patent application. This article provides some pointers on how to draft your own provisional software patent application.
June 30, 2015

ABQB Upholds Patent Assignment from Employee Despite Partially Unpaid Salary

Groves v Canasonics Inc, 2015 ABQB 314 - After a falling out between a director and Canasonics Inc., the former director sought to ensure that any intellectual property in critical unpatented tools remained his own, and sought to reverse the transfer of a number of patents that he had already assigned to the company.