Tag Archives: Canadian Patent Act

Federal Court of Canada provides narrow interpretation of the scope of Patent Agent Privilege

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One does not need to be a legal scholar to know that confidential communications between lawyers and their clients for the purpose of seeking and giving legal advice are generally privileged.  The so-called “solicitor-client” privilege is a cornerstone of law and allows clients and their lawyers to freely discuss legal issues without unintended disclosures.  Thus, apart from certain exceptions, Canadian courts will not compel production of privileged communications such as emails, letters and reports exchanged between clients and their lawyers for the purpose of legal advice.

For years, this special treatment did not attach to communications between clients and their patent agents.  This was problematic because patent agents often provide equally strategic and sensitive advice and opinions in the specific area of patents.  As a result, it was common practice to channel such communications through lawyers to shroud these under solicitor-client privilege.

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A Brave New Patent World

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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.

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.

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