Cease and Desist Letters: Use with Care

Cease and desist letters are an important part of a lawyer’s tool kit: they notify the recipient of a claim, and ideally lead to the client resolving an issue without litigation. However, receiving such a letter can be unpleasant. They may even seem excessive, as if they were intended to achieve the maximum possible threatening effect. In Fluid Energy Group Ltd. v. Exaltexx Inc. (“Fluid v. Exaltexx”), Justice McHaffie of the Federal Court found that that indeed appeared to be the intention of Fluid’s letters, taking the unusual step of issuing an injunction ordering Fluid not to communicate with Exaltexx’s suppliers with respect to such suppliers’ alleged infringement of Fluid’s patents.

Where is the line between an appropriate cease and desist letter and one worthy of an injunction? In the case of letters alleging patent infringement, strangely enough, the answer may lie in section 7(a) the Trademarks Act, which was the basis for Exaltexx’s motion for the interlocutory injunction. That section reads: “No person shall … make a false or misleading statement tending to discredit the business, goods or services of a competitor…” This provision, however, must be read down so as to include only statements relating to the competitor’s intellectual property.

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Because It’s 2020: Will Virtual Hearings Become the Norm?

The legal profession is already feeling the impacts of the coronavirus, and following recent judgements in Arconti v. Smith  and Natco Pharma (Canada) Inc. v. Canada (Health), videoconferencing technology is fast becoming a fixture of court proceedings[1] .

In Arconti, the Ontario Superior Court ruled that if the Plaintiffs wanted to examine for discovery one of the Defendants, they had to do it by videoconference, or forfeit the examination. Judge Myers ruled that there was no reason to hold up the proceedings until a traditional, in-person examination could take place once the pandemic restrictions had been lifted. He deemed videoconferencing “more efficient and less costly” than in person examination, reminding us that, after all, “it’s 2020”, and courts should make use of the technology available to them rather than clinging to the usual ways of proceeding. He also stated that in this day and age, a certain level of skill in using technology should be expected of lawyers and the courts.

The plaintiffs resisted discovery by videoconference, arguing that as opposed to in-person examination there is loss of communication and a risk of coordination by the witness and their counsel. The plaintiffs also argued that the lack of a courtroom setting might remove some pressure on witnesses to tell the truth, could facilitate abuse of process, and would reduce the ability to observe witness demeanor.

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UPDATED: The Canadian Intellectual Property Office Extends Deadlines Until June 15th

The Canadian Intellectual Property Office (“CIPO”) continues to provide updates on the continuing disruption to IP office deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act caused by the COVID-19 outbreak. As we reported previously, March 16th to May 29th are considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been extended to June 1st.

CIPO has now announced that June 1st, 2020 to June 12th, 2020 inclusive will also be considered “designated days”. This means that the time period to respond may now be extended to the next business day, namely June 15th, 2020.

While the above noted designations by CIPO apply to most, but possibly not all, due dates that originate with CIPO, it is likely that obligations under international treaties and/or conventions, such as the Paris Convention and the Patent Cooperation Treaty, may still apply and must be complied with accordingly.  As such, any action(s) required to be taken in Canada between now and June 1st should be taken on or before the applicable date or discussed with a Canadian patent agent in order to ensure all rights in Canada and abroad are maintained.

Fasken has also established a Coronavirus (COVID-19) Knowledge Centre. Given the number of cases of COVID-19 in North America, and continued uncertainty around the world, organizations must plan to manage the impact on their operations and workforces, as well as protect their employees, their families and communities. Ensuring the health and safety of our people, clients and business partners is Fasken’s top priority.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients over this period, largely by working remotely. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance.  In the meantime, we will continue to keep you informed of any developments as they occur.

Rapid Patenting of Solutions to Covid-19

Are you a small business or independent inventor with an invention which may help in the fight against COVID-19?

On 8 May 2020, the United States Patent and Trademark Office (USPTO) announced a new program for accelerating the review of patent applications related to COVID-19. This could be your lucky day (if you’re one of the 500 selected…)!

The purpose of this program is to facilitate the patenting process by reducing cost and allowing rapid review of eligible filed patent applications.

What do you need to know about the new program (“COVID-19 Prioritized Examination Pilot Program”)? Here’s a snapshot:

  • The patent application must cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
  • Only small and micro entities are eligible (companies with <500 employees or independent inventors).
  • Prioritized examination fees are not required under this program (regular fees apply).
  • Total of 500 applications will be reviewed under the program.

Full details may be found by clicking here (link to USPTO).

Canada’s Intellectual Property Office (CIPO) does not have a specific program for inventors in response to COVID-19 but it has multiple programs for expediting review of new patent applications, and at a low cost relative to the U.S., which may be used as before. Canadian patent applications may be expedited under one of the following scenarios:

  1. By payment of a fee of $500CAD (useable on virtually all applications).
  2. By having a corresponding patent issued in a foreign patent office. For example, if you have filed the same patent application in the U.S. and Canada and a U.S. patent has issued, CIPO will expedite review of the corresponding Canadian application.

For any questions or further information, please contact a member of our patent group.