Patent Strategy

February 7, 2022
Photograph of the Peace Tower at the Canadian parliament buildings taken from the ground so that the clock peeks out from behind another building.

Considerations for Applicants Before the Canadian Patent Rules Change

Patent applicants may wish to request examination for their Canadian patent applications soon to take advantage of the fees under the current Patent Rules.
October 27, 2021
Aerial view of a skyscraper in downtown Hangzhou, Zhejiang’s largest city.

Audience of Ten Thousand Tunes into Andrew Currier’s IP Lecture

Andrew was invited to speak about Corporate IP Strategy and Practical Business as part of the Zhejiang High-Level IP Training Program.
October 26, 2021
Photo of two women working on tablets in front of a large window.

IP Basics: Patent Budgeting for Early Stage Startups

When budgeting for a patent, all tech startups face this conundrum: “I need investors to pay for a patent, but I need a patent to attract investors.”
August 30, 2021
Photograph of a woman conducting business at her laptop.

Top Questions We Get Asked About Provisional Patent Applications

Provisional patent applications are generally well known in the start-up community as an affordable way to protect patent rights, but it can be hard to locate practical information. Here are the questions that our clients most frequently ask us about provisional patent applications.
July 21, 2021
Photo of a project planning board covered in yellow sticky notes.

A Synergistic Combination: Patents and SR&ED

The trick is to efficiently resource patent and SR&ED initiatives while keeping product development on track. Here are a few tips that can help you do that.
April 28, 2020
A laptop showing business statistics and financial forecasts in graph format.

COVID-19: Cost Management Strategies for Patent Applicants

Cost management strategies that won't devalue your patent portfolio. Plus: don't miss the April 29th deadline for the Innovation Assistance Program (IAP)!
August 23, 2019
A busnisess's empty board room with desk chairs and a table.

What Can Businesses Expect From the US Patent Reforms?

A draft bill released May 22nd proposes significant reforms to section 101 of the US Patent Act. Businesses should be aware of the commercial impact.
April 25, 2017

Federal Court finds foreign, non-exclusive licensee entitled to damages

2016 FC 593 - The FC awarded Janssen Canada and Janssen US almost $19 million in total damages for Teva's infringement of a Japanese entity's patent, for which Janssen US had never even exercised its licence in Canada.
March 10, 2017

Federal Court implies that it only has jurisdiction to expunge or vary titles to patents, not record documents to them

2016 FC 1092 - The FC heard and granted an order to vary the records of the Patent Office for Canadian Patent No. 2,630,594, but refused to order the recording of documents to it.
February 28, 2017

Patent Appeal Board Rejects Home Healthcare Administration System for Obviousness

PAB 1394 - The Patent Appeal Board rejected the “Home Health Point-Of-Care and Administration System” disclosed in Canadian Patent Application No. 2,579,081 for being obvious to a person skilled in the art.
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.