The rapidly evolving coronavirus pandemic continues to have a significant impact on intellectual property rights holders in Canada and around the world. As noted in our most recent IP bulletin, the Canadian Intellectual Property Office (“CIPO”) recently announced that, due to the COVID-19 pandemic, March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act,Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020).
To assist those having or seeking patent rights in Canada, CIPO has now prepared a series of Frequently Asked Questions (“FAQs”) regarding the COVID-19 service interruptions and patent prosecution matters before CIPO. Information on service interruptions with respect to the Trademarks Opposition Board (“TMOB”) can be found here.
CIPO is careful to point out that the
answers provided are only a guide and should not be considered legally
binding. CIPO recommends that everyone
consult a registered patent agent who can advise on any specific
situation. Anyone concerned about
Canadian patent prosecution deadlines should review all of the FAQs provided on
the CIPO website and consult a Canadian patent agent as applicable.
To that end, Fasken’s IP group is taking
steps to ensure continuity of our services to our clients over this period,
largely by working remotely. 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.
The coronavirus pandemic is having a significant impact on our personal lives, our countries and our economies! Canada’s Intellectual Property Office is no exception. While the Canadian Intellectual Property Office (“CIPO”) currently remains open and in operation, significant delays in all CIPO services should be expected.
More importantly, CIPO has, on account of the unforeseen circumstances resulting from COVID-19, recently announced that for now March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act,Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020). CIPO has also indicated that, if the circumstances that led to this designation continues, CIPO may decide to extend the applicable time period. CIPO’s decision coincides with fee, rule and procedural accommodations by other intellectual property offices, including the EU Intellectual Property Office and the United States Patent and Trademark Office.
Fasken’s IP group is taking 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.
The past two months have been marked by
unprecedented turmoil for the British royal family, after the announcement by
the Duke and Duchess of Sussex, Prince Harry and Meghan Markle, that they would
step down as senior members of the royal family and entertain their own
financial independence. Under a new working arrangement, they will be free to
earn professional income and will have more liberty to pursue their charitable
endeavours. Further details on the specific arrangements can be found here.
In anticipation of their new
projects, a trademark application and a domain name registration for SUSSEX
ROYAL had been sought in the UK. Following a recent intervention by Her Majesty
the Queen herself, however, the use of the term “royal” has now been
disallowed. Since the Duke and Duchess of Sussex would no longer be serving as
“royal” members and representatives, as they gave up their royal duties, then
there was no justification for them to further use this term. The UK trademark
application for SUSSEX ROYAL was thereby withdrawn.
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:
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;
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
stable in its essential
characteristics, in that after repeated propagation it remains true to its
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
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.