My recent article on patent pendency was published this week on Slaw. For patents granted by the Canadian Patent Office in the first half of 2018, the duration a patent application was pending ranged from less than 6 months to over 18 years.
Here are several news items that may be of interest:
- An Order in Council has indefinitely suspended implementation of the private right of action under CASL, Canada’s anti-spam legislation. The private right of action was scheduled to come into force on July 1, 2017.
- CIPO has advised that it will beginning a series of consultations over the summer on proposed regulatory amendments for Industrial Design Regulations, Trade-marks Regulations, Patent Rules relating to implementation of the Hague Agreement, Madrid Protocol, Singapore Treaty, the Nice Agreement and the Patent Law Treaty.
- Global Affairs Canada has announced consultation on the renegotiation and modernization of the North American Free Trade Agreement (NAFTA). The government invites submissions on a variety of topics including intellectual property.
The United States Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC stating that corporate ‘residence’ refers only to the state of incorporation. The patent venue statute, 28 U. S. C. §1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” This decision will likely have a significant effect on the number of cases filed in Texas, which saw 37% of all patent cases in 2016.
Bill C-30, the CETA implementation legislation received royal assent today. The Bill includes amendments to the Patent Act, regarding supplementary protection for pharmaceutical products and altering patent linkage system, and to the Trade-mark Act regarding geographic indicators with grounds of opposition and certain exceptions for prior use, acquired rights and generic terms. Amendments are also proposed to a number of other acts. Implementation regulations are expected any day.
Combining technology with financial services in the age of mobile, cloud and blockchain gives rise to many potential disruptors and established players trying to increase, protect, license and monetize their intellectual property. I explore some of these ideas in my recent article in Slaw on Protecting FinTech Innovation.
Continue reading Fintech
The United States Supreme Court has released its decision in Samsung v. Apple regarding the damages for design infringement. Finding in favour of Samsung, the court held that in the case of a multicomponent product, the relevant “article of manufacture” for arriving at a §289 damages award need not be the end product sold to the consumer but may be only a component of that product. The $399 million damages award was reversed and the proceeding remanded back to the Federal Circuit.
For those interested, the Fifth Annual Patent Colloquium at the new law building at UofT is a month away on Friday, November 4th. There will be panel discussions on early stage claim construction, independence of experts, non-infringing alternatives, among other topics.
The Supreme Court of Canada will be hearing AstraZeneca Canada Inc. v. Apotex Inc. on November 8, 2016 on the promised utility doctrine. Several intervenors have now filed materials on the promise doctrine: Intellectual Property Institute of Canada (IPIC), International Federation of Intellectual Property Attorneys (FICPI), Innovative Medicines Canada, BioteCanada, Intellectual Property Owners Association (IPO), Centre for Intellectual Property Policy (CIPP) and Canadian Generic Pharmaceutical Association (CGPA).
My recent column on the use of experts in patent cases was published last week on Slaw.ca. It touches on some of the recent developments in this area including the updated guidelines on experimental testing, blinding of experts and number of experts in bifurcated proceedings. Continue reading Patent Experts
The United States Supreme Court issued a unanimous decision today in Halo Electronics Inc. v. Pulse Electronics Inc. relating to the ability of district courts to award treble damages in patent infringement proceedings, rejecting limits arising from Court of Appeal for the Federal Circuit decisions.