Natalie Raffoul Named IAM Global Leader

Brion Raffoul is pleased to announce that Natalie Raffoul has been selected as an IAM Global Leader. “When it comes to business method and software patents, few are as knowledgeable as Natalie Raffoul. More than just a prosecution pro, she is a savvy strategist who understands how to secure commercial advantages for clients in global marketplaces.” Click here to find out more.

As a patent agent, Ms. Raffoul specializes in procuring IP assets for her Canadian clients worldwide.  She also advises on worldwide IP filing strategies and portfolio management, which includes trade secret considerations.  Her technology expertise includes: electronics, communications and networking, manufacturing, consumer products, artificial intelligence, cybersecurity, and mobile applications.

As a lawyer, Natalie also advises on IP enforcement issues, in the pre-litigation context, and she is an expert in negotiating successful agreements for her clients, that cover IP rights in Canada and globally. 

Natalie holds a degree in electrical engineering from Western University (London, Canada) and a Juris Doctor in law from Queen’s University (Kingston, Canada).  She is also a registered patent agent.

A new year, a new location!

The Brion Raffoul team looks forward to welcoming clients at our new offices, located at 329 Churchill Ave, Ottawa, when the practice moves to its newly renovated building in February, 2020.

Over the holidays, Brion Raffoul will be closed on December 25 and 26, 2019. The Canadian Intellectual Property Office (CIPO) is also closed these same days. Any patent, trademark or industrial design deadlines falling on December 25 and 26, 2019 are extended to December 27, 2019.

Wishing you a wonderful holiday season and a joyous new year!

Offering for sale could be a public disclosure of your invention: get patent pending before selling!

By: Dennis Haszko

Generating income is typically top of mind for any business. For technology companies, this often means that sales and marketing go hand-in-hand with product development. During product development, confidential clauses in agreements shield companies from public disclosure of the invention. However, the United States has an “on-sale” bar which prevents one from patenting an invention that has been offered for sale for more than one (1) year prior to the patent application filing date.

Recently, the U.S. Supreme Court held in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (Helsinn) that a sale made under confidentiality obligations (a so-called “secret sale”) qualified as prior art under the “on-sale” bar in 35 U.S.C. 102(a)[1]. In that case, Helsinn Healthcare S.A. entered into a confidential agreement that granted a partner company the right to, inter alia, sell Helsinn’s chemotherapy product. Helsinn filed the first patent application on their product more than a year after executing the agreement. The U.S. Supreme Court held that even though the agreement between Helsinn and its partner company was confidential, the “secret sale” was a bar to patentability and thus Helsinn lost their patent rights. Accordingly, although confidentiality clauses may work in many circumstances, caution should be exercised when discussing new products with prospective customers prior to filing a patent application.

So how does a company prevent the self-inflicted wound of invalidating its patent before the application is even filed? Consider what actually makes the “secret sale” a problem in the first place.  The US Supreme Court cited Pfaff v. Wells Electronics, Inc., which provided the requirements for the conditions that create an on-sale bar:

  • the product must be the subject of a commercial offer for sale; and
  • the invention must be ready for patenting. [2]

A commercial offer for sale will typically require some manifestation of intent. However, determining when a product is ready for patenting can be confusing. The court held in Pfaff that drawings or other descriptions of the invention that enable a skilled artisan to practice the invention were sufficient to make a product “ready for patenting”. Notably, the Court in Pfaff held that even an offer for sale that did not disclose the details of the invention could cause an inventor to lose the right to patent.

Key Takeaway

Helsinn raises significant issues for early stage business activities.  During early product development, offering product solutions for sale can be easy and unintentional. For example, whiteboard presentations to prospective customers may in fact provide enough detail of the product to make the invention ready for patenting. Any suggestion of an offer for sale during such discussions could easily run afoul of the on-sale bar. An NDA is not enough, both parties should be clear as to whether or not there is an intention to sell the product.  The other option: file a patent application before your one-year grace period lapses.


[1] US Supreme Court, No. 17 – 1229, 2019.

[2] US Supreme Court, No. 97-1130, 1998.

File Wrapper Estoppel in Canada – How Far Are the Courts Willing to Go?

By: Stacey Dunn

Since the coming-into-force date of new section 53.1 of the Patent Act in December 2018, Canadian practitioners have been waiting to see how broad this “file wrapper estoppel” provision will be interpreted. Recently, the Federal Court released a decision that expands the scope of s. 53.1 to potentially include foreign prosecution file wrappers. However, this case is currently under appeal.

Section 53.1(1) states that written communications prepared in respect of the prosecution of a patent application between the applicant or patentee and an employee of the Canadian Patent Office may be admitted into evidence to rebut any representation made by the patentee in claim construction. However, the Court held in Canmar Foods Ltd. V TA Foods LTD (2019 FC 1233) that foreign prosecution could be admissible to the court under “extraordinary circumstances”.

During the prosecution of Canadian Patent No. 2,582,376, a Response to an Office Action stated “New claims 1 to 19 correspond substantially to those submitted during prosecution of a related United States application” and “the newly submitted claims are much narrower in scope than the previously examined claims”. Accordingly, the Court held that because the patentee specifically referenced the corresponding US Application’s prosecution history and acknowledged that the amendments were made to overcome novelty and obviousness concerns raised in the US Application’s prosecution history, the applicable US Application’s prosecution history was admissible. The Court stated that if they were to ignore the US prosecution history in this specific case, “patent applicants in Canada would be incentivized to intentionally refrain from being transparent with the Canadian Patent Office as to why amendments were made to limit claims during prosecution”. However, an unintended consequence of this case may be that patent practitioners may intentionally refrain from being transparent. Instead of providing Examiners with information regarding where the amendments are coming from, Applicants are now incentivized to not mention any reference to foreign prosecution. Under this interpretation, Applicants would be better served to merely state that the claim amendments are not disclosed, taught or fairly suggested by the prior art without reference to a foreign Patent Office’s work.

The Court held that “extraordinary circumstances” arise where “the patentee acknowledges that the claims have been amended to be substantially the same as claims submitted in another jurisdiction, and the patentee admits that the amendments have limited the scope of claims in order to make the claims novel and non-obvious”. When this occurs, the Court held that the foreign prosecution history is admissible for the limited purpose of purposively construing the Canadian claims. The Court specifically mentioned expedited examination via the Patent Prosecution Highway (PPH), where Applicants are required to identify allowable claims in another jurisdiction and amend the claims to substantially conform to those allowable claims. Accordingly, Canmar appears to suggest that the foreign prosecution history of the Office of Earlier Examination (i.e., the country with allowable claims to which a PPH request is being made) will be admissible in court as there is an implicit admission that the amendments limit the scope of the claims to be novel and non-obvious.

What does this mean for Canadian patent prosecution moving forward?

Canadian practitioners are well aware that anything put on the record in Canada may be admissible in US court proceedings. Accordingly, verbose Responses have always been avoided, and indeed directly referring to US prosecution was a way to avoid adding anything new to the worldwide file wrapper for that patent family. However, practitioners should avoid mentioning foreign prosecution history, even to show the Examiner that these amendments have been deemed allowable elsewhere. Furthermore, Applicants should be wary of entering PPH in Canada, as the prosecution history of the Office of Earlier Examination may be used to rebut a representation made by the patentee in claim construction.

Utility models and industrial designs – IP rights worth considering

By: Natalie Raffoul

This article first appeared in IAM Yearbook: Building IP value in the 21st century 2020,a supplement to IAM, published by Law Business Research – IP Division. To view the guide in full, please go to www.IAM-media.com.

Also, check out the article on Lexology.

IP Strategy Within a Global Marketplace

Join Dr. Minya Gavrilovic, founding CEO of Galtronics Canada, and now COO/CTO of its parent, Baylin Technologies and Ms. Natalie Raffoul, a leading IP Lawyer and Patent Agent and the Managing Partner of Brion Raffoul, for a fireside chat. Dr. Gavrilovic will expand on formulating an IP strategy within a broader business strategy, as well as managing both registered and unregistered IP rights within the context of a global marketplace.

Click here to register. Entrepreneurs, business leaders, IP professionals and policy makers would benefit from attending this event. 

Happy National STEM Day!

File:Educación STEM.jpg

Brion Raffoul wishes all the budding scientists, computer scientists, engineers, and mathematicians a Happy National STEM Day. Without STEM careers, patent law would not have developed to what we know it as today. If any budding scientists or engineers need some motivation to continue on the STEM path, here are some historical Canadian patents for inspiration!

For example, one of the first electric light prototypes (before Edison’s) was patented in 1874 by Canadian inventors Henry Woodward and Mathew Evans. Unable to secure investors, Woodward sold the rights to the US Patent to Edison in 1879. Edison later bought a share in the Canadian rights.

By Stacey Dunn

Happy Canadian Thanksgiving from the team at Brion Raffoul!

Brion Raffoul will be closed on October 14, 2019 for Canadian Thanksgiving. The Canadian Intellectual Property Office is also closed, so any patent or industrial design deadlines falling on October 12 to 14, 2019 are extended to October 15, 2019.

Of Trademarks, Towers, and Trolls: How Far Does Trademark Protection Reach?

By: Liz Gray

A fantasy novel set in Toronto is the centre of a trademark controversy.  The cover of James Bow’s new book, The Night Girl, features shadowy fantastical figures running along a rooftop with the iconic CN Tower on their left.  The image of the CN Tower was obtained from a stock photo site under a Creative Commons license.

But, to the surprise of Bow and the book’s publishers, the CN Tower’s owner is alleging that the cover violates their trademark.  According to representatives of Canada Lands Company Ltd. (CLCL), the Crown corporation that manages the CN Tower, every image of the CN Tower is protected as a trademark.  They are asking that the cover be redesigned for subsequent print runs, but Bow and his publishers are pushing back.

A lawyer for Bow is asking CLCL to drop the matter.  Ren Bucholz points out that ‘confusion’ is the basic yardstick for trademark infringement, and that The Night Girl is a fantasy novel “featuring a strong female protagonist who helps trolls and goblins succeed in the human world through her work at an employment agency”, rather than a guidebook or map.  It is unlikely, according to Bucholz, that anyone would see this cover and think that CLCL believes the CN Tower to be overrun with trolls.

The matter is still ongoing, but one thing is clear: stock photo licenses might not always tell the full story.

Natalie Raffoul spoke on IP and AI at Elevate Toronto Tech Festival

Natalie Raffoul joined a long list of exceptional speakers, including Michelle Obama and Chris Hadfield, at the Elevate Toronto Tech Festival today. The Elevate Tech Fest showcases the best of the Canadian innovation ecosystem. Natalie shared the stage with Carole Piovesan of INQ Data Law for the panel “Why Your AI Company Will Fail Without the Right IP Plan” moderated by Sean Silcoff of the Globe and Mail. Natalie spoke about IP trends and legal risks in artificial intelligence and machine learning, providing a IP lawyer and patent agent’s unique perspective on protecting AI assets.