Patent Strategy

February 14, 2017

FC Determines Use of Xpresspost(TM) is Delivery to a Designated Establishment

2016 FC 517 - The FC held that patent applicants and holders using Xpresspost(TM) need only submit correspondence for CIPO to a Canada Post location by the deadline, rather than ensure physical delivery is completed by the deadline. The decision saved Biogen’s response to a requisition in a conflict proceeding from being deemed abandoned.
August 24, 2016

PCK StartIP Series: 2 – Patent Grace Periods; A Way for a Lean Startup to Defer Patent Filing Costs

Provisional patent applications are the traditional way that a lean startup can obtain some preliminary patent protection at reasonable cost while they accelerate product development and […]
April 26, 2016

PCK StartIP Series: 1 – Patent Budgeting for Lean Startups

We have prepared a guide that outlines the timelines and major spend points for two common patent filing strategies: a global patent filing and US-only patent filing.
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.
May 12, 2015

The Oft Missed Synergy: Patents and SRED

Flat-out ignoring patents and SRED can result in leaving a lot of value on the table. Whatever one may think of patents, it is a fact that they can provide enormous value to a technology company if they are done correctly. By the same token, a successful SRED claim can lead to a significant short term financial boost for cash conscious companies.
March 6, 2015

Three Simple Steps Towards Building a Patent Strategy

Canadians demonstrate excellence at many things. There are the obvious clichés like maple syrup, hockey, politeness and modesty. However, our excellence at politeness hides some of our other impressive strengths, like innovation and technology. In turn, our modesty seems to keep Canadians from protecting their intellectual property (IP) at rates disproportionate to our OECD counterparts. I have been working in the intellectual property field for nearly twenty years and can share many anecdotes of Canadian companies that are world innovation leaders who, because of that charming modesty, essentially give away their intellectual property.