Author: 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.

SUSSEX ROYAL Trademark in Canada: Safe Heaven, But Maybe Not for Royal Trademarks

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 The UK trademark application for SUSSEX ROYAL was thereby withdrawn.

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Draft Guidelines Published by the Patented Medicine Prices Review Board

The Patented Medicine Prices Review Board (the “Board”) recently published draft Guidelines to replace the current Compendium of Policies, Guidelines and Procedures, leading up to the coming into force of the amended Patented Medicines Regulations on July 1, 2020. The draft Guidelines are needed to facilitate the implementation of the upcoming changes to the Regulations, including: (i) the additional price regulatory factors for consideration by the Board when assessing whether the price of a patented medicine is excessive; (ii) updates to the schedule of comparator countries to be used by the Board for international price comparisons; and (iii) changes to reporting requirements for patentees. Interested parties can make written submissions to the Board on the draft guidelines during the consultation period, which ends on February 14, 2020.

For a more detailed review of the draft Guidelines, please refer to the Fasken bulletin PMPRB Publishes Draft Guidelines to Operationalize Amendments to the Patented Medicines Regulations authored by Ingrid VanderElst and Mark Vanderveken.

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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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.

A Brave New Patent World

fasken patent law
Close up of engineering drawing with electric motor

The long-awaited date has arrived.  The amendments to Canada’s Patent Act and Rules, in order to implement Canada’s obligations under the Patent Law Treaty (PLT), come into effect today.  The PLT is intended to harmonize and streamline formal procedures for national and regional patent applications and patents in order to make them more user friendly.  Briefly, among other changes, the amendments will introduce: (i) shorter deadlines for certain actions; (ii) concepts of “third party rights”, “due care” and omissions being “unintentional”; (iii) notices for missed deadlines; (iv) simplified requirements in order to obtain a filing date; and (v) restoration of priority.  For a detailed overview of some of the most significant changes, please refer to our bulletin on The New Patent Rules.