PCK Reporter

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 24, 2016

3D Printing Will Rock the World of IP: The ITC Admits Defeat and Allows the Importation of Digital 3D Models

The ITC finally dropped its investigation against the dental equipment manufacturer ClearCorrect. The move comes long after the ITC lost a legal battle that decided that the ITC does not have the power to police the importation of digital data, even where that digital data is being used to 3D-print a patented product in the United States.
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.