Blog

December 12, 2014

UK Court holds email file transfer program is unpatentable subject matter

Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463 - The UK Court rejected a patent on a method of transferring files via email communication for unpatentable subject matter for being no more than a computer program.
November 30, 2014

SCC Recognizes an Organizing Principle of Good Faith in Contract Law and a New Duty of Honest Contractual Performance

Bhasin v Hrynew, 2014 SCC 71 - The Supreme Court of Canada recognized a general organizing principle of good faith that underlies many facets of contract law, and created a new common law duty requiring contracting parties to honestly perform contractual obligations as a manifestation of this organizing principle.
November 29, 2014

UK Supreme Court: Patent Infringement Does Not Support a Defence of Illegality

Les Laboratoires Servier v Apotex Inc, [2014] UKSC 55 - The UK Supreme Court rejected the argument that patent infringement could form the basis for the defence of illegality since patent rights do not give rise to the sort of public interest consideration that underpins the defence of illegality.
November 21, 2014

FCA Dismisses Apotex Appeal to have the Promise Doctrine Extended

Apotex Inc v Pfizer Canada Inc, 2014 FCA 250 - The Court rejected Apotex’s sweeping argument that any given promise in the patent must be construed as overarching to all of the patent’s claims.
November 14, 2014

A Verbal Contract Makes Transpharm Liable for Costs of Patents that Name its CEO as Owner

Gowling Lafleur Henderson LLP v Transpharm Canada Inc, 2014 ONSC 5643 - There was no written retainer to explicitly identify the client. However, citing the 10 year period during which Gowlings treated Transpharm as its client and as responsible for the cost of the patent services, the Court concluded that Transpharm verbally retained Gowlings.
November 12, 2014

Ownership of a Patent was Transferred from a Director to the Corporation as if the Director were an Employee

Nature-Control Technologies Inc v Li, 2014 BCSC 1868 - The Court determined that a patent transferred from a director and co-owner of a corporation to the corporation by the implied intention of the parties by importing the analysis that is undertaken when determining if intellectual property impliedly passes from an employee to an employer.
November 8, 2014

Federal Court Denies Co-Inventorship to Marketing Collaborators

Drexan Energy Systems Inc v Canada (Commissioner of Patents), 2014 FC 887 - The Court found that two out of four contributors to the invention could not be added to the list of inventors because their contribution essentially amounted to suggesting desired features of the invention and communicating feedback from potential customers, which did not constitute an inventive contribution.
November 7, 2014

Federal Court to Hear Challenge to the Patentability of Isolated Nucleic Acids

Children’s Hospital of Eastern Ontario v University of Utah Research Foundation, T-2249-14 - The CHEO will argue that the Long QT Patents that are inhibiting its ability to conduct medical testing claim unpatentable subject matter since the claimed nucleic acids are naturally occurring, encode for naturally occurring human genes, and were discovered by extracting genetic material from human beings. Validity of the method testing claims are also disputed.
October 31, 2014

Highlights of Proposed Amendments to the Patent Act in Bill C-43 (Royal Assent Received)

Bill C-43 - New sections of the Patent Act concerning representation by patent agents demand attention. Note: Bill C-43 has received royal assent as of December 16, 2014.
October 29, 2014

Federal Court Rejects Subway Video Advertising Patent for Obviousness

Blair v Canada (Attorney General), 2014 FC 861 - In coming to its finding of obviousness, the Commissioner determined that while the combination of the elements in the invention as a whole was novel, it did not involve ingenuity since there was a “trend in the art” of installing video systems in a wide variety of transportation systems.
October 28, 2014

Commissioner Upholds Rejection of Patent on Computerized Auction System

Commissioner’s Decision # 1355 - Canadian Patent Application No. 2,493,971 on a computerized auction system was rejected for lack of statutory subject matter for being merely an abstract set of rules.
October 27, 2014

Expert witnesses proven to be pivotal in Dow Chemical patent infringement suit

Dow Chemical Co v NOVA Chemicals Corp, 2014 FC 844 - The Federal Court found that NOVA Chemicals infringed Canadian Patent No. 2,160,705, owned by The Dow Chemical Company, by NOVA’s use of its “SURPASS” polyethylene product. Allegations of invalidity for lack of utility, claims broader than any invention made or disclosed, anticipation, obviousness, double patenting, and insufficiency of the specification were unsuccessful.
October 22, 2014

Novak Druce Executive Partner Suspended from USPTO for 2 years for Inadequately Supervising Non-Lawyer Assistant

USPTO Office of Enrollment and Discipline: Tracy W. Druce, D2014-13 - Tracy W. Druce, an executive partner at the American IP firm Novak Druce Connolly Bove & Quigg LLP was disciplined for not adequately supervising a non-lawyer assistant
October 20, 2014

Australian Federal Court Upholds Patentability of Isolated DNA Sequences, Parts Ways with Supreme Court of the United States

D’Arcy v Myriad Genetics Inc [2014] FCAFC 115 - The Federal Court of Australia Full Court upheld the validity of Australian Patent No. 686004, which claims an isolated sequence of DNA useful for cancer diagnosis, as qualifying as a “manner of manufacture” and thus patentable subject matter pursuant to section 6 of the Statute of Monopolies.
October 18, 2014

Federal Court Holds Failure to Disclose Public Servant Status in Patent Application is an Untrue Material Allegation

Louis Brown et al v HMTQ et al, 2014 FC 831 - Canada successfully argued that the inventor made an untrue material allegation for having not indicated in the patent application that he was a public servant, but whether this would invalidate the patent was considered a genuine issue requiring a trial.
October 17, 2014

Federal Court Invalidates Patent on Infomercial Garden Hose

E Mishan & Sons, Inc v Supertek Canada Inc, 2014 FC 326 - The Federal Court dismissed an infringement claim made by the plaintiffs regarding the sale of self-expanding garden hoses by the defendants because the infringed claims were declared invalid for obviousness.
October 16, 2014

Federal Court Upholds Re-examination Board’s Decision Invalidating Waste Heat Recycling Claims

Newco Tank Corp v Canada (Attorney General), 2014 FC 287 - The person of ordinary skill in the art was determined to have background knowledge that there was a heat inefficiency problem that the invention seeks to address. The only evidence for this proposition is that it was discussed under the “SUMMARY OF THE INVENTION” heading of the patent.
August 12, 2014

Wrongfully-obtained Patents One Step Closer to Creating Potential Class Action Liability

Low v Pfizer Canada Inc, 2014 BCSC 1469 - This decision brings one step closer the possibility of wide-ranging, class-based, third-party liability created by patents that are found to be “wrongfully obtained”.
August 11, 2014

Federal Court Assess Damages, Settles Pre- and Post-judgement Interest in PM(NOC) Case

Teva Canada Limited v Pfizer Canada Inc, 2014 FC 634 - Following an action for damages under s. 8 of the PM(NOC) Regulations, Teva and Pfizer were unable to agree on the quantum of costs or pre- and post-judgement interest.
July 31, 2014

Federal Court Prohibited Issuance of a NOC for Generic Version of Lumigan

Allergan Inc v Apotex Inc, 2014 FC 567 - In terms of claim construction, this case shows the tension between construing claims based solely on the wording of the claims versus peering beyond the wording of the claims to distill an underlying invention.