Category Archives: Patents

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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Rapid Patenting of Solutions to Covid-19

Are you a small business or independent inventor with an invention which may help in the fight against COVID-19?

On 8 May 2020, the United States Patent and Trademark Office (USPTO) announced a new program for accelerating the review of patent applications related to COVID-19. This could be your lucky day (if you’re one of the 500 selected…)!

The purpose of this program is to facilitate the patenting process by reducing cost and allowing rapid review of eligible filed patent applications.

What do you need to know about the new program (“COVID-19 Prioritized Examination Pilot Program”)? Here’s a snapshot:

  • The patent application must cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
  • Only small and micro entities are eligible (companies with <500 employees or independent inventors).
  • Prioritized examination fees are not required under this program (regular fees apply).
  • Total of 500 applications will be reviewed under the program.

Full details may be found by clicking here (link to USPTO).

Canada’s Intellectual Property Office (CIPO) does not have a specific program for inventors in response to COVID-19 but it has multiple programs for expediting review of new patent applications, and at a low cost relative to the U.S., which may be used as before. Canadian patent applications may be expedited under one of the following scenarios:

  1. By payment of a fee of $500CAD (useable on virtually all applications).
  2. By having a corresponding patent issued in a foreign patent office. For example, if you have filed the same patent application in the U.S. and Canada and a U.S. patent has issued, CIPO will expedite review of the corresponding Canadian application.

For any questions or further information, please contact a member of our patent group.

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.

Key Estate Planning Considerations for Individuals with Intellectual Property (Part III: Patents)

This is the third and final entry in a three-part blog series about the interaction between estates law and intellectual property law. Part I introduced Ontario’s succession law regime, and provided an analysis of succession law vis-à-vis copyright law. Part II applied this analysis to trademark law. Finally, Part III will examine this area in relation to patent law, as well as provide some concluding thoughts and considerations.

Patents

In the previous two blog entries in this series, we have provided an overview of succession law in Ontario, and have applied its principles to the relevant provisions of copyright law and trademark law. This week, we conclude by taking this same approach to patent law; as you will see, patent legislation is in some ways more flexible and in other ways more restrictive than copyright or trademark legislation

A patent provides a time-limited, legally protected, exclusive right to prevent others from making, using and selling an invention. An invention can be a product, a composition (such as a chemical composition), a machine, a process, or an improvement upon any of these (with certain exceptions).

Unlike copyrights and trademarks, patents must be registered in order for their owners to exercise the rights associated with them. According to Subsection 27(1) of the Patent Act, only an inventor or their “legal representative” (which has a similar definition to that of the same term in the Copyright Act) may apply for a patent; thus, it may be possible for a testator’s executor to apply for a patent even after that testator’s death.

On that note, similar to copyrights, it is possible for an inventor’s employer to own a patent; however, the Patent Act does not have any provisions that explicitly state this. Instead, the common law establishes that there is a presumption that an employee will have ownership of their invention, and any resulting patent for discoveries made during the course of employment (See Comstock Canada v Electec Ltd (1991), [1991] FCJ No 987, 29 ACWS (3d) 257). In order to rebut this presumption, there must be an express agreement to the contrary, or the employee must have been hired for the express purpose of inventing or innovating. Therefore, in drafting their will with respect to patent rights, an individual should confirm with their contemplated executor that an employer does not have any potential claims to their patent rights.

Furthermore, with respect to assignments of patents via a will, Subsection 49(1) of the Patent Act allows for the transfer of a patent and/or the right to obtain a patent, in whole or in part. Thus, it would be prudent for an individual who does not apply for a patent for whatever reason while they are alive to inform their contemplated executors of their potential right to obtain said patent and should assign said right in their will. Furthermore, under Section 44 of the Patent Act, in a manner slightly different from copyrights and trademarks, the term of a patent is 20 years from the date that an application for said patent is filed. Thus, while a registered patent expires, the right to obtain a patent does not (subject to satisfying additional requirements for obtaining a patent, such as novelty, obviousness, utility and subject matter), and neither term correlates with the death of the inventor.

All of this suggests that if a testator created a new invention during the course of their life without patenting it, the beneficiaries who received the patent rights under the will (or the residuary beneficiaries if there was no specific patent-related provision in the will) could very well make a successful application for a patent and benefit from the rights of the patent over a 20-year period. The financial value of a patent could be significant, so individuals should definitely account for the potential value of the patent in determining how to distribute their estate. That being said, from a practical perspective it would be prudent for an inventor to apply for a patent while they are alive, as they would most likely be more familiar with key details necessary to complete the application than their beneficiaries would be.

Concluding Thoughts and Considerations

In making provisions for one’s intellectual property rights in their will, it is important to consider provisions related to both assignability and terms with respect to said intellectual property rights. For the former, the key federal statutes grant the ability for one to assign these rights through their will. For the latter, knowing when these rights expire is critical for determining how to manage them in an estate planning (as well as an overall financial planning) context, particularly because they may require continued attention and maintenance from an executor. In any event, it is clear that intellectual property is very much property for the purposes of will-making, and thus one should give any intellectual property that they may own just as much attention as any of their other key assets. Thus, it is essential for one to, prior to their death, keep their executors and trustees (and in many cases, their beneficiaries) in the loop about what intellectual property rights they do or may have.

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.