Canada Announces Accelerated Exam for Pandemic Related Inventions Filed by “Small Entities”

On July  7th, 2020, the Canadian Intellectual Property Office (“CIPO”) announced a pilot project allowing applicants who qualify as “small entities” (e.g. universities, or businesses employing 50 or fewer employees) to expedite the examination of their patent applications for COVID-19-related inventions. Details of the program can be found on the CIPO website here. The program is limited, however, to only fifty (50) patent applications.

As businesses work to address the COVID-19 pandemic, this pilot project is designed to help smaller sized entities get products to market as soon as possible. To request accelerated examination under the program, applicants must include a statement that the technology is medical and related to COVID-19 and that an approval for its use has been obtained from or has been submitted to Health Canada.  Applicants must also have requested examination and paid the applicable Canadian government fee for requesting examination. Finally, the application must be open to public inspection or the applicant must have submitted a request for early publication. There is no additional fees to use this process.

For further information on whether you qualify and how to take advantage of this program or any other program at CIPO, please reach out to one of the patent professionals at Fasken.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients during the pandemic. 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 with your intellectual property.

Changes to the PMPRB Delayed Due to COVID-19

The Patented Medicine Prices Review Board (PMPRB) has delayed the coming into force of the amended Patent Medicines Regulations to January 1, 2021.

The Regulations Amending the Patented Medicines Regulations (Additional Factors and Information Reporting Requirements) were set to come into force on July 1, 2020 and provide the PMPRB with additional price regulatory factors to assess whether the price of a patented medicine sold in Canada was “excessive”. But on June 1st, 2020, the Canadian government delayed their coming into force, citing an increased demand on the pharmaceutical industry in light of COVID-19.

Then, on June 19th, 2020, the PMPRB released its Draft Guidelines 2020. These changes were the result of extensive stakeholder feedback received during public consultations. While the new Guidelines have the same conceptual structure as those released back in November 2019, there are now some substantial quantitative changes.

In particular, in the new Draft Guidelines 2020, the thresholds for identifying high-priority drugs has changed: The PMPRB will classify new patented drugs as either high or low priority based on their anticipated financial impact. If they have a high treatment cost (now above $90,000 annually per patient) or large anticipated marketed size (now above $50M in sales) then they will be subject to a more comprehensive price review. This comprehensive review will take into consideration new additional price regulatory factors, including a drug’s pharmacoeconomic value, market size and the gross domestic product (GDP) and GDP per capita in Canada.

The Draft Guidelines are available for public comment until July 20, 2020. We have extensive experience in this area and are available for a consultation if you are interested in responding.

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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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.