Patents

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 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.
October 3, 2016

FCA Will not Reweigh Expert Evidence to Appeal Patent Invalidity

2015 FCA 191 - The FCA dismissed an appeal wherein Alcon sought to reverse a finding of invalidity against its patent by surreptitiously asking the FCA to reweigh the evidence as a challenge against the Federal Court Judge’s findings of fact and preferred expert evidence.
October 3, 2016

Careful Patent Drafting Saves Novartis’s EXJADE Patent Despite Two Distinct Promises

2016 FCA 230 - The FCA found that the EXJADE patent was drafted so as to make an important distinction between the utilities of the Formula I and Formula II compounds, and thereby held the Formula II claims to a lesser promise, and dismissed Teva’s allegations of inutility.