Patents

Case summaries and articles about  patents.

September 30, 2016

Software and Data Analytics Patents still a Challenge in Canada

PAB 1407 - The PAB rejected the computer-implemented data analytics patent application of Canadian Patent Application No. 2,798,566, entitled “Identified Customer Reporting”, for lack of statutory subject matter, since no physical feature – no computing device – was found to be essential to the claims.
September 6, 2016

Patent Application for Blackjack Variation Rejected as Unpatentable Subject Matter

In Re Smith, (Fed. Cir. 2015-1664) - A patent application for a variation on the blackjack game was rejected as unpatentable after the CAFC applied the two-step test for patentable subject matter from Mayo and Alice.
August 31, 2016

FCA Confirms Reasonably Diligent Search Correct Test in Obviousness Analysis

2015 FCA 163 - In the obviousness analysis and determining whether a person skilled in the art would have discovered the prior art, the FCA upheld the application of a reasonably diligent search standard.
August 29, 2016

FC Rejects Jurisdiction over Contract Law in Assignment Dispute, Comments that s. 51 of the Patent Act Supersedes Conflict of Laws Principles

2016 FC 830 - The FC dismissed a case of contractual dispute over the ownership of a patent, and commented that, regardless of whether conflict of laws principles apply, no assignment or transfer of a patent can take place except in accordance with the laws of the jurisdiction in which the patent was granted (s. 51 of the Patent Act).
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 […]
August 22, 2016

FC Bifurcates Infringement & Validity Issues from Section 8 PM(NOC) Proceeding in Hopes of Settlement

2016 FC 720 - The FC bifurcated the issues of infringement and validity from any other section 8 issue in hopes that bifurcation would likely lead to a settlement of all the issues between the parties.
August 8, 2016

FC Calls on Opening Canadian Patent Prosecution File Histories for Claim Construction

2016 FC 883 - The Federal Court followed the longstanding rule against the use of patent prosecution file history in interpreting the claims of a patent, but made a strong case for why the patent prosecution file history is worth considering, as is common practice in the U.S.
August 8, 2016

Knowledge of Related Patents not “Actual Knowledge” for Awarding Pre-Issuance Damages

In U.S. patent infringement, the “actual notice” requirement in 35 USC § 154(d) requires actual knowledge of a published patent application. Knowledge of related patents, even those sharing a description, and indirect references to a published patent application in emails may not be sufficient to prove actual notice.
August 2, 2016

FC Denies Data Protection for Ester of a Previously Approved Medicinal Ingredient

2015 FC 959 - The Health Minister denied data protection for Cysview after finding it was not an “innovative drug”, and the FC indicated the scope of “innovative drug” does not extend to combinations of the enumerated variations of previously approved medicinal ingredients in the Regulations (salt, ester, enantiomer, solvate or polymorph).
May 20, 2016

Software Patent Lines are Drawn: USPTO Comments on Enfish and TLI Communications Decisions

In the Enfish case, the Federal Circuit confirmed the patentability of a “self-referential” database invention as not being directed to an abstract idea under 35 U.S.C. § 101. In the TLI Communications, the Federal Circuit found a proposed invention of classifying and storing digital images using a telephone unit to be abstract.