Category Archives: Canada

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.

Concerned About Patent Deadlines During the COVID-19 Pandemic? The Canadian Intellectual Property Office Offers An FAQ Page

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 Canadian Intellectual Property Office Extends Deadlines Until April 1st due to the Pandemic

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.