Author: Mark Penner

Mark Penner

About Mark Penner

Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

IP Strategies for the Cannabis Industry

How the Canadian cannabis industry has sparked interest in one of the lesser known IP rights

Introduction

Intellectual Property (“IP”) typically provides a significant commercial advantage in the marketplace.  With the legalization of cannabis in Canada in 2018 and increasing competition among cannabis producers, the cannabis industry has been exploring ways to protect its cash crop.  Given that proprietary varieties of cannabis plants are highly valued in the cannabis industry, a lesser known and very specific type of IP right called Plant Breeders’ Rights (“PBR”) may see a rise in prominence.  Cannabis producers would be well advised to consider how PBR can be used to protect their commercially valuable proprietary varieties and supplement their existing IP arsenal.

PBR Eligibility and Scope of Protection

The federal Plant Breeders’ Rights Act enables the protection of a plant variety where that variety is:

  1. new, in that its propagating or harvested material has not been sold by or with the concurrence of the breeder inside or outside Canada within a prescribed time period (either one, four, or six years) before the filing date of the application;
  2. by reason of its identifiable characteristics, it is clearly distinguishable from all varieties whose existence is a matter of common knowledge at the filing date of the application;
  3. stable in its essential characteristics, in that after repeated propagation it remains true to its description; and
  4. having regard to the particular features of its sexual reproduction or vegetative propagation, it is sufficiently homogeneous (i.e. in the event of sexual reproduction or vegetative propagation in substantial quantities, any variations in characteristics are predictable, capable of being described, and commercially acceptable).
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Canada’s Trademark Modernization Continues: NICE Classification and Registered Marks

Earlier this year, the trademark system in Canada was modernized to bring in the Nice classification system.  The Nice classification system is an international classification system that is used to classify goods or services into 34 classes for goods and 11 classes for services for the purposes of registering trademarks.  As part of this modernization, the Canadian Trademarks Act was amended to add section 44.1, which provides the following:

44.1 (1) The Registrar may give notice to the registered owner of a trademark requiring the owner to furnish the Registrar, in the prescribed time and manner, with a statement of the goods or services in respect of which the trademark is registered, in which those goods or services are grouped in the manner described in subsection 30(3).

(2) The Registrar may amend the register in accordance with the statement furnished under subsection (1).

(3) If the statement required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the statement is not furnished, the Registrar may expunge the registration of the trademark or refuse to renew it.

(4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

As a result, owners of existing trademark registrations in Canada will be required to classify the listed goods and/or services in order to maintain rights to the mark in Canada or the registration will be expunged.  We note the Canadian Trademarks Office allows six-months to respond to this notice.  The deadline to classify is extendable for another six-months but under limited exceptional circumstances.  If the deadline to classify is missed, a notice of default will issue which provides two-months to respond failing which will result in the expungement of the registration.

If a response is filed on or before the deadline to classify, the Canadian Trademarks Office will either accept the proposed classification of the goods and services, or issue an action requesting amendments.

Please note these notices issue to the agent of record noted on the registration.  If the trademark owner renews directly or a third party renews the registration on behalf of the trademark owner, the agent of record will receive the notice only.

If you require any assistance with the above (or any other trademark matters), don’t hesitate to contact the Fasken IP group

Fasken and IPIC hold Seminar on Patenting Artificial Intelligence

On November 13, 2019, the Intellectual Property Institute of Canada (IPIC) and Fasken held a webinar on advanced patent prosecution strategies for patenting artificial intelligence (AI) related inventions.

Isi Caulder from Bereskin & Parr and I spoke on a number of topics including:

• AI Industry Trends to Watch
• Claiming Strategies
• Satisfying Subject Matter and Enablement Requirements
• AI Patenting Considerations in Canada, the U.S. and Europe
• Enforcement Considerations and Trends

Hosted in the Toronto office of Fasken, the seminar was webcast to Fasken’s Montreal, Ottawa, Calgary and Vancouver offices. The aim of the seminar was to provide attendees with understanding and insight into intellectual property (IP) and patent prosecution strategies for AI-based systems while considering the evolving subject matter/enablement landscape and current enforcement trends. We also considered more esoteric topics such as whether AI-based systems could be considered inventors under the patent system.

If you are interested in AI and IP law, please reach out for more information as any of the participants would be more than happy to discuss this ever changing area with you.

Patent Tips for Halloween

#SpookyIP U.S. Patent No. 3,965,574 to Harry Edwin Graves entitled “Apparatus for forming a jack-o-lantern”

Ever wished you had help with carving your Halloween pumpkin? If so, Harry Edwin Graves invented something just for you! Graves (the perfect name for the inventor of a Halloween themed invention) developed a device for carving a “jack-o-lantern” made of two curved plates engaging opposite sides of the pumpkin and retained in place by cords which are laced through the adjacent edge portions of the plates, the front plate having cutters for the eyes, nose and mouth. Enjoy carving your pumpkin and Happy Halloween! 

Times They Are a Changing! Patentees Proceed with Caution: Courts may use what you say against you!

In view of legislative changes and a recent Federal Court decision, patent applicants in Canada should be more circumspect as to what material makes its way into the Canadian prosecution file.

Traditionally, statements made during prosecution of Canadian patent applications or corresponding foreign patent applications (the “file wrapper”) were not admissible for construing terms in the claims of Canadian patents (so-called “file wrapper estoppel”).  The Supreme Court of Canada even went so far as to refer to file wrapper estoppel as a “pandora’s box”.  In the immortal words of Bob Dylan, however, times they are a changing.  Recent legislative changes to the Canadian Patent Act, and more recently the decision of the Federal Court of Canada in Canmar Foods Ltd. v. TA Foods Ltd. appears to have changed that.

In view of the the legislative changes and the Canmar decision, patent applicants in Canada should be more circumspect as to what material makes its way into the Canadian prosecution file. As with many things in life, sometimes the less said the better!

In Canmar, the parties were competitors in the manufacture and supply of flax seed products, particularly roasted flax seed products. The plaintiff/patentee, Canmar Foods Ltd. (“Canmar”), owned a Canadian patent directed to methods for roasting oil seeds and the products produced by these methods. Canmar became aware of the defendant’s roasted flax seed products and, when talks broke down, Canmar commenced infringement proceedings.

In a motion for summary judgment. the defendant, TA Foods Ltd. (“TA Foods”), argued that its activities fell outside the scope of the claims of the Canadian patent, when properly construed.  TA Foods took the position that in addition to applying a purposive construction to the claims based on a reading of the claims and the specification as a whole, the Court must also take into account representations made during prosecution (e.g. the file wrapper) of the Canadian patent.  TA Foods, relying on both the Canadian and U.S. prosecution histories, argued that limitations added to overcome prior art cited in the U.S. case, which were incorporated into the Canadian patent, argued against infringement.

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