Patents

Case summaries and articles about  patents.

January 24, 2022
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Teva Blocks Competitor With Patent for 40 mg/mL Dose of Copaxone®

Outside Canada, Teva’s Copaxone® 40mg/mL dosing patents have been invalidated for obviousness, making way for generic competitors.
January 13, 2022
Researcher looking into a microscope in a laboratory.

Federal Court Allows Correction to Inventorship Amidst “Pending Litigation”

Some of the most common errors made in patent applications are in the naming of applicants and inventors. If the mistake is not caught in time, it can cause a nasty headache for the patent owner.
October 26, 2021
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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.”
October 5, 2021
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United States Court of Appeals Clarifies “Actual Notice” Under § 287

Fed. Cir. No. 19-2286: The actual notice requirement of § 287 is only satisfied when the recipient is informed of the identity of the patent and the allegedly infringing activity.
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.
August 30, 2021
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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.
August 18, 2021
Concept art of AI showing a humanoid head made out of glowing green binary numbers on a black background.

Are We Ready to Name AI as an Inventor of Patents?

The Australian Federal Court recently recognized that an artificial intelligence can be listed as an inventor under the Australian Patent Act.
August 9, 2021
Photograph of an auto-injector needle with a drop of liquid at the tip of the needle.

Federal Court of Appeal Reaffirms Overbreadth as Grounds for Invalidity

2021 FCA 154: The FCA held that overbreadth is not an “improper re-emergence of the promise doctrine”. Overbreadth is supported by bargain theory and s. 27 of the Act.
July 27, 2021
Photograph of centrifuge tubes in a test tube rack on a laboratory bench.

Variations on Previously Approved Drugs Are Ineligible for Data Protection

2021 FCA 137: On July 12, 2021, the Federal Court of Appeal issued a decision dismissing an application for judicial review of a decision of the Minister of Health denying data protection for a drug. Janssen Inc. had sought protection for its drug SPRAVATO but was rejected on the basis that it was not an “innovative drug” eligible for such protection.
July 21, 2021
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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.
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.
July 7, 2021

CAFC Invalidates a Camera Patent, Blurring Lines in the Patent Eligibility Inquiry

Fed. Cir. No. 2020-1760: The CAFC sided with Apple and Samsung, finding a patent for an “improved” digital camera to be an abstract idea and not patent-eligible subject matter.
June 7, 2021
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PAB Allows Two Software Patents, Revealing Post-Choueifaty Approach

2021 CACP 9, 2021 CACP 12: In two recent decisions involving software patents, the Patent Appeal Board found the inventions to be directed to patentable subject-matter
May 19, 2021
Photograph of a row of glass bottles containing vaccines against COVID-19.

Promoting Diversity vs COVID-19 Patents: Why We Must Get It Right

As the pandemic rages and the vaccines roll out, we face a difficult question about whether to relax patents on COVID-19 technologies in order to accelerate global vaccine distribution. For intellectual property professionals, we must ensure that we help guide the right policy decision. History is going to judge us. 
May 12, 2021
Black textbook with red spine. The title "Canadian Patent Law" is written on the cover in gold.

PCK IP Releases 4th Edition of Canadian Patent Law

Co-authors Stephen Perry and Andrew Currier have drawn on years of experience in the field of IP to craft a complete resource for the patent prosecutor.
April 20, 2021
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Canadian Innovation Deserves Robust Roster of Canadian Patent Agents Registered Before the USPTO

This paper uses publicly available filing statistics and a professional survey in an attempt to gather empirical data on the work done by Canadian Patent Agents in the Canadian Intellectual Property Office (“CIPO”) versus the United States Patent and Trademark Office (“USPTO”).
March 26, 2021
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Federal Court Applies Its Own Claim Construction to Infringement Case

2021 FC 85: The Federal Court upheld the validity of all claims, but found that PetroChina was not infringing Maoz Betser-Zilevitch's patent for an SAGD.
March 3, 2021
Model of a human brain photographed in an anatomy lab.

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 1, 2021
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Federal Court of Appeal Restricts Admissibility of Foreign Prosecution History

2021 FCA 7: The FCA narrowly interpreted section 53.1 of the Patent Act, refusing to look at a corresponding US application that was not named by number.
January 19, 2021

Quebec Court Finds New Drug Pricing Rules Tip Constitutional Scale

2020 QCCS 4541: Court held that forthcoming amendments to the Patented Medicines Regulations are unconstitutional and infringe on provincial powers.