Category Archives: Patents

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.

Patent Tips for Halloween

#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! 

Times They Are a Changing! Patentees Proceed with Caution: Courts may use what you say against you!

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.

Continue reading »