Starting tomorrow, patent and trademark agents can claim privilege analogous to solicitor-client privilege for communications between the agent and their client, that is intended to be confidential and is made for the purpose of seeking or giving advice relating to the protection of inventions or trademarks. Continue reading Agent Privilege
Tag Archives: Trademarks
CIPO Fees
CIPO has opened consultations on proposed fees for various steps under upcoming amended Patent and Trademark rules. These steps include fees per Nice Classifications and renewal fees for trademarks and correction, after-allowance amendments and late fees for patents. The consultation is open until July 5, 2016.
SCC grants leave on Google injunction
On Thursday, the Supreme Court of Canada granted leave to appeal in the case of Google Inc. v. Equustek Solutions Inc., et. al, an appeal from a British Columbia Court of Appeal decision, in which a broad worldwide injunction was granted restraining Google, a non-party to the action, from including the defendants’ websites in Google’s search results.
Canadian Trademark Firms in 2015
About 53,000 trademark applications were filed in Canada in 2015. Of these, about 22% were filed in-house or without an agent (about the same as in the last couple of years). Gowlings, Bereskin & Parr and Smart & Biggar were the firms that filed the most trademark applications. Check out my list of the 50 firms/agents that filed the most applications in 2015.
TPP
Last week, the official text of the Trans-Pacific Partnership was posted, including the chapter on Intellectual Property and various related side instruments. The new Liberal government has said it will review the agreement and have consultations.
Agent Privilege
Bill C-59 received royal assent yesterday which includes changes to the Patent Act, Trade-marks Act, Copyright Act and the Industrial Design Act. The changes include agent privilege, provisions for force majeure and term extension. The provisions on privilege will come into force next year at this time while other sections will require implementing regulations and further orders in council.
IP Items
A few items that may be of interest:
- The United States Supreme Court issued its decision today in Kimble v. Marvel Entertainment, LLC, upholding the rule that a patentee cannot continue to receive patent royalties for sales made after the patent expires.
- The House of Commons has adjourned for the summer so pending bills, including Bill C-65, amending the Copyright Act to implement the Marrakesh Treaty for the blind, will need to be re-introduced. Bill C-59, the budget implementation bill which includes amendments to the Patent Act, Copyright Act, Industrial Design Act and Trade-marks Act, is still pending before the Senate.
- The Federal Court has issued a practice notice on the publication of decisions having ‘precedential’ and ‘non-precedential’ value.
Budget Bill
Bill C-59, entitled An Act to implement certain provisions of the budget tabled in Parliament on April 21, 2015 and other measures, was introduced today to implement portions of the budget. The proposed changes include amendments to:
- Copyright Act – term of sound recording and performance rights;
- Patent Act – privilege for patent agents, force majeure, correcting errors and other changes;
- Trade-marks Act – privilege for trade-mark agents, force majeure, correcting errors;
- Industrial Designs Act – force majeure, correcting errors.
Budget
Today, as part of its budget announcement the government indicated its plans to amend the Patent Act, Trade-marks Act and Industrial Design Act to provide statutory privilege for confidential communications with agents and permit CIPO to extend deadlines in cases of force majeure. The government also plans to amend the Copyright Act to implement and accede to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired or Otherwise Print Disabled and to extend the term of protection of sound recordings and performances for an additional 20 years.
Canadian Trademark Firms in 2014
About 50,400 trademark applications were filed in Canada in 2014. Of these, about 20% were filed in-house or without an agent (about the same as in the last couple of years). Gowlings, Bereskin & Parr and Smart & Biggar were the firms that filed the most trademark applications. Check out my list of the 50 firms/agents that filed the most applications in 2014.