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.
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application for SUSSEX ROYAL was thereby withdrawn.
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:
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
application;
stable in its essential
characteristics, in that after repeated propagation it remains true to its
description; and
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).
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.
#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!
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.
