Prosecution

December 19, 2024
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Understanding Canada’s Patent Term Adjustment Framework

Effective January 1, 2025, Canada’s Patent Term Adjustment (PTA) framework compensates patentees for unreasonable delays in patent issuance by the Patent Office. The PTA grants additional term protection, calculated based on delays beyond prescribed timelines, for applications filed on or after December 1, 2020.
November 11, 2024

European Patent Office Boards of Appeal Issues Notable Decision on Machine Learning and Patentability

A recent EPO decision on machine learning patents emphasizes the need for detailed technical disclosures, clarifying standards for inventors aiming to secure patent protection for AI innovations.
October 8, 2024

Defining Goods and Services in Canadian Trademark Applications: Requirements and Tips for Applicants

Defining goods and services in Canadian trademark applications requires precision. This guide covers key requirements from the Canadian Intellectual Property Office (CIPO), including using "ordinary commercial terms" and avoiding vague language. By following CIPO’s guidelines and utilizing their Pre-Approved List, applicants can expedite examination, reduce costs, and avoid common issues with trademark applications.
September 19, 2024
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CPATA: Reflections and Updates from an Elected Director, Andrew Currier

Andrew Currier, CPATA Elected Director, reflects on recent developments in Canada's IP landscape, covering board transitions, regulatory updates and more!
September 4, 2024
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Divisional Patent Applications in Canada: An Overview

Divisional patent applications play a crucial role in patent portfolios, particularly when an application describes multiple closely related inventions.
January 10, 2024
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Appeal Board Weighs in on Patentability of Software Subject Matter

2023 CACP 23: Hot on the heels of the recent Benjamin Moore decision, Canada's Patent Appeal Board has considered the patentability of a computer-implemented invention.
July 31, 2023
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Canada Introduces Patent Term Adjustment for the First Time

Bill C-47: Before CUSMA replaced NAFTA, Canada did not provide compensation to patent owners for delays in the processing of a patent application.
January 5, 2023
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USPTO to Launch Cancer Moonshot Expedited Examination Pilot Program

Starting on February 1st, the US Patent and Trademark Office (USPTO) will offer accelerated examination for patent applications aimed at preventing cancer and cancer mortality.
April 7, 2022
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Is it Time for Video Provisional Patent Applications?

In a world of Instagram, Youtube and TikTok, why can't inventors submit their provisional patent applications entirely in video format?
November 15, 2021
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Landmark Graphics Benefits Again From PAB’s Post-Choueifaty Approach

2021 CACP 42: Cementing its post-Choueifaty approach to patentable subject-matter in Canada, the PAB found all claimed elements to be essential in the computer-implemented invention.
September 14, 2021
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Federal Circuit Denies Relief to USPTO From Prolific Inventor Gilbert Hyatt

Fed. Cir. Nos. 20-2321-2325: The Federal Circuit clarified that, while an applicant is required to pay all the expenses of PTAB proceedings, this does not include expert witness fees.
July 15, 2021
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Amendments to Patent Rules Continue: Further Streamlining Canadian Patent Prosecution

Proposed changes to Canada’s patent system include excess claim fees and limits on office actions which will lay the groundwork for patent term adjustments.
March 3, 2021
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A Closer Look: CAFC Finds Immersion Photography Claims Are Obvious

Fed Cir, 2019-1927: The CAFC overturned a finding of non-obviousness by the US Patent Trial and Appeal Board on a patent owned by Melanoscan, LLC.
February 16, 2021
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Patent Appeal Board Rules Choueifaty Patent Application to Be Patentable

PAB 1556: Canada’s Patent Appeal Board reconsidered Mr. Choueifaty’s patent application for a computer-implemented method of managing portfolio assets.
December 2, 2020
Close-up photograph of a fountain pen writing words in ink on paper.

Written Description Particularly Important if Amending Claims in Response to Competitor

Fed. Cir. 2018-1779: A patent for testing fetal DNA was found to be unpatentable because the claims were not fully supported by the written description.
November 2, 2020
Photograph of eyeglasses focusing on a computer screen displaying software code.

After Choueifaty: A New Test for Examining Software Inventions in Canada

Andrew Currier and Stephen Perry review best practices for drafting software patents to global standards and propose a new test for examining software inventions in Canada.
June 18, 2020
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Federal Court Clarifies the Admissibility of Patent Prosecution History

In a patent infringement case between two major ice skate manufacturers, the Federal Court clarified s. 53.1 and the admissibility of prosecution history.
April 3, 2020
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COVID-19: Time Extensions for Patents & Trademarks in North America

In this article, we explain how the intellectual property offices in Canada and the United States are responding to the COVID-19 pandemic.
December 16, 2019
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Clawing Deeper into the Monster v. Raptors Trademark Battle

The Raptors are tipping off against Monster, who allege the Raptors trademark featuring a clawed-up basketball is confusingly similar to the Monster "M".
September 20, 2019
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Allergan’s Glaucoma Patents Saved by “Wherein” Clauses

CAFC 2018-2207 – The US Court of Appeals for the Federal Circuit ruled that “wherein” clauses in patent claims can be limiting if they are material to patentability.