Canada is Modernizing its Patent Act and Rules to Streamline Procedures for Applicants

By: Edward Wu

Following the Government’s recent decision to ratify the Patent Law Treaty (PLT), the Orders in Council (OIC) published that the amendments to the Patent Act and Patent Rules under the Economic Action Plan 2014 Act and Economic Action Plan 2015 Act will come into force on October 30, 2019. Furthermore, the new Patent Rules will be published on July 10, 2019, under the Registration Number SOR/ 2019-0251.

The following important changes will be coming into force on October 30, 2019:

42-Month Deadline for National Phase Entries No Longer “As of Right”

The 42-month deadline for Patent Cooperation Treaty (PCT) National Phase entries is no longer “as of right”. To utilize the 12-month extension, Applicants must submit a statement that the failure to meet the regular 30-month deadline was unintentional. Clients should be aware of the shortened period for national entries and make corresponding arrangements.

Requirements of Certified Copies for Priority Documents

After October 30, 2019, certified copies of priority documents must be filed with the Office; however, this requirement does not apply if the priority document is an earlier Canadian Application or, in the case of a national phase entry, where the PCT priority document requirement has already been satisfied. Clients should be aware of this change and make preparations for document certification, if necessary.

Easier to Obtain Filing Dates

International clients can now obtain a filing date without translating the Description because the new Patent Rules will no longer require an English or French Description for obtaining a filing date. The translation of the Description may now follow at a later date.

Furthermore, the new Patent Rules will allow Applicants to obtain a filing date on any day of the year by filing electronically, even on days where the Patent Office is closed for a holiday or the weekend. This important change will allow Applicants to obtain a quick filing date prior to any disclosures being made.

Restoration of Priority Claim

The new Patent Rules provide relief for Applicants that unintentionally miss the deadline for a priority request. The 12-month period for priority claims may be extended to fourteen (14) months if the Applicant submits that the delay was unintentional. However, the Federal Court may revoke the priority request if they later determine that the delay was intentional. Clients should be aware of the limited application of this new right of restoration for priority claims.

Please refer to Brion Raffoul’s previous article for more information regarding the new Patent Act and Patent Rules.

2019 NBA Champions Toronto Raptors: Trademark Fight Ahead with Monster Energy

By: Edward Wu

Despite the Toronto Raptors’ historic win last night, they may have some trouble ahead with their, now iconic, logo. Monster Energy is suing the Toronto Raptors over the clawed basketball logo. Documents from the U.S. Patent and Trademark Office’s (USPTO) Trial and Appeal Board (TTAB) show that the two companies have been fighting over the “claw” style logos since 2015. Monster Energy claims that the Raptors’ logo of a clawed-up basketball is too similar to Monster Energy’s claw logo:

Monster Energy’s Logo

Monster’s “claw” logo is of three jagged vertical gashes. The company has used the three gashes since 2002. The Raptors’ old “claw and a basket ball” trademark was filed with the USPTO in 1994 and registered in 2003.

Raptors’ Old Logo

In 2014, the Raptors redesigned the team’s logos and filed US trademark applications for the following:

Raptors’ New Logos

In May 2015, Monster Energy opposed the Raptors’ new US trademark applications. Over the past 4 years, the two companies attempted to settle the case but failed to reach a settlement by 2018, when the case went into discovery.

A recent document shows that Monster Energy filed a motion for partial summary judgement stating that the equitable defense of prior registration that the Raptors asserted is only available when the marks and goods/services in the subject application are essentially the same as the mark and goods/services in a prior registration. Monster Energy argues that the Raptors’ Trademarks are not substantially identical to the prior registration. Namely, the Raptors’ design was changed from independent claws and a basketball to claws within a basketball. Furthermore, one of the new marks added the words “TORONTO RAPTORS”, which is not found in the old mark. Monster also states that the Raptors described the new marks in very different ways, and they intended to create new marks for evolving the aging Raptors brand. The TTAB has yet to decide the outcome of the motion.

The trademark fight extends to the Raptors’ home court, Canada. Monster Energy opposed the Raptors’ Canadian trademark application for the “TORONTO RAPTORS” logo in December 2016. Interestingly, the Raptors successfully registered their new logo without the “TORONTO RAPTORS” on March 10, 2017 with the Canadian Intellectual Property office (CIPO).

Monster Energy may try to bring down the Raptors’ trademarks, but nothing can take away from last night’s win!

#WeTheNorth!

IAMPATENT1000 ranked Brion Raffoul as one of top 14 patent prosecution firms in Canada

IAMPATENT1000 is one of the most respected rankings for patent professionals globally because of peer review in validating its research. The IAMPATENT1000 published the following about Brion Raffoul:

Ottawa-based IP specialist Brion Raffoul is the recipient of emphatic feedback from the market: “Its professionals are extremely organised, proactive and very easy to work with. They have an excellent grasp of their subjects, execute with speed and precision, all while being very responsive.” Cited as being “entrepreneurial and driven practitioners with world-class skills”, Art Brion and Natalie Raffoul form the fulcrum around which the practice turns. Brion is an influential figure in the start-up community and a sought-after representative for companies spun off from universities. Business methods and software patents are bread and butter for Raffoul, who is a “creative, cost-effective, efficient and solutions-oriented partner”.

For more information: https://www.iam-media.com/directories/patent1000/rankings/canada

Ms. Dominique Lambert to attend BIO International Convention from June 3-6

Ms. Dominique Lambert will be representing the patent team at the BIO International Convention (BIO) being held in Philadelphia from June 3 to June 6, 2019.

https://convention.bio.org/

BIO attracts 16,000+ biotechnology and pharma leaders who come together to discover new opportunities and promising partnerships, bringing together a wide spectrum of life science and application areas including drug discovery, biomanufacturing, genomics, biofuels, nanotechnology and cell therapy.

Natalie Raffoul and Dennis Haszko to attend INTA’s Annual Meeting from May 18-22

https://www.inta.org/2019annual/Pages/Home.aspx

The INTA Annual Meeting has become the largest intellectual property congress every year. Managing partner, Natalie Raffoul, and Senior Patent Counsel, Dennis Haszko, look forward to meeting with numerous IP colleagues from around the globe and on exchanging updates on IP practice globally. The Meeting is being held in Boston from May 18 to 22, 2019.

Bonne nouvelle! Une version française de notre site web!

Bonne nouvelle!  Puisque nous offrons tous nos services dans les deux langues officielles, nous avons maintenant une version française de notre site web.  Jetez-y un coup d’œil : https://bripgroup.com/fr/

Dominique Lambert participera au FORPIQ le 1er mai, 2019 à Montréal

Le Forum International sur la Propriété Intellectuelle – Québec (FORPIQ) tiendra sa 10eme édition à Montréal le 1er mai 2019 sous le thème « Naviguer dans une ère où innovation ouverte et propriété intellectuelle s’entremêlent ». Brion Raffoul y sera représenté par l’une de ses agents de brevets, Dominique Lambert. Une programmation relevée et des discussions stimulantes en perspective!

https://www.forpiq.com/accueil#a-propos
https://www.linkedin.com/company/forpiq/

#forpiq10e

CIPO OPENS PUBLIC CONSULTATION ON DRAFT ADMINISTRATIVE TOPICS FOR THE UPCOMING NEW PATENT RULES

By Dominique Lambert

Following the amendments to the Patent Act to comply with the requirements of the Patent Law Treaty (PLT), and proposed amendments to the accompanying Patent Rules, the Canadian Intellectual Property Office (CIPO) has drafted revised administrative procedures for the Manual of Patent Office Practice (MOPOP).

The new Patent Act and Patent Rules are expected to come into force in the Fall of 2019. Many sections of the MOPOP will need to be revised.

This Public Consultation is an opportunity for IP practitioners, IP owners, or any person interested in the Canadian Patent regime to provide feedback on the revised procedures that will be applied by the Office.

The Consultation will be open from March 26, 2019 until May 27, 2019.

Meaningful Progress or Mere Signal Transient?

By Dennis Haszko

“A transient event is a short-lived burst of energy in a system caused by a sudden change of state.” –Wikipedia

Recently, the U.S. Patent & Trademark Office (USPTO) published the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) which has predictably caused a stir in the field of business method patents.

After the U.S. Supreme Court’s key decisions over the last decade in Bilski v. Kappos, 130 S. Ct. 3218 (2010); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), and Alice Corp. Pty. Ltd. V. CLS Bank International, 134 S. Ct. 2347 (2014), the courts in the US have increasingly found certain computerized methods of doing business to be unpatentable.  Moreover, patent examiners at the USPTO have been brought to near deadlock in many instances where patent applications become mired in the threshold question of whether the invention constitutes patent eligible subject matter under 35 U.S.C. 101.

To date, the USPTO has applied the key decisions inconsistently and oftentimes seemingly arbitrarily.  This has made negotiating with patent examiners less a science and more of an art.  Typical rejections under 35 U.S.C. 101 include a blanket assertion that the subject matter “forms an abstract idea” and “fails to constitute something significantly more.” 

The 2019 PEG is an effort by the USPTO to provide clarity and consistency during the patenting process. Patent examiners are now directed to review and analyze patent applications in a more stringent manner.  The updated analysis can be distilled to the following steps:

  1. Does the claimed subject matter recite a judicial exception related to:
  1. Mathematical concepts— mathematical relationships, mathematical formulas or equations, mathematical calculations;
  • Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); or
  • Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)?
  • If a judicial exception is identified, then is it integrated into a practical application? If so, then the invention is at least subject matter eligible, though it must still be analyzed for novelty and non-obviousness.
  • If a judicial exception is identified, but not integrated into a practical application, then the claimed subject matter may only be considered subject matter eligible if it provides an inventive concept where the claimed subject matter forms “significantly more” than the recited judicial exception.

While this updated analysis under the 2019 PEG still reflects a lot of gray area, it does clearly lay out the types of claimed subject matter in a more distinct list.  Moreover, the analysis provides patent practitioners with a more “scientific” or logical approach to arguing that a practical application exists.  This is better than the previous, more ambiguous approach of arguing that the invention provides “significantly more.”  As experienced patent practitioners can attest, previous USPTO attempts at dealing with business method inventions had led to arguments that can, at best, be characterized as mere throws of the dice.  The 2019 PEG, at the very least, should provide a seemingly logical blueprint for crafting suitable arguments.

Only time will tell whether the 2019 PEG is a mere signal transient or something more meaningful in terms of obtaining business method patents from the USPTO.

The Carlton Not Elaborate Enough for Copyright Protection

By Stacey Dunn

The US Copyright Office has rejected “The Carlton” dance from The Fresh Prince of Bel-Air as a choreographed routine worthy of copyright protection. While instantly recognizable for decades, the US Copyright Office says that The Carlton is merely a “simple routine that is not registrable as a choreographic work”. In coming to this conclusion, the Copyright Office detailed the dance in cringe-worthy detail, stating that the

dancer sways their hips as they step from side to side, while swinging their arms in an exaggerated manner. In the second dance step, the dancer takes two steps to each side while opening and closing their legs and their arms in unison. In the final step, the dancer’s feet are still and they lower one hand from above their head to the middle of their chest while fluttering their fingers.

Such detail may be required for a Copyright Office decision; but, of course, most know the dance:

https://giphy.com/explore/carlton-dance

The US Copyright Office’s refusal raises questions of copyright protection in Canada. Would The Carlton be protectable as a “choreographic work”, a subsection of “dramatic work”, under the Copyright Act? Unfortunately, the Copyright Act offers no guidance as to what may be covered, barely elaborating to define a choreographic work to include “any work of choreography, whether or not it has any story line”. A choregraphed dance that is fixated and original may be covered under the Copyright Act, but there is very little Canadian case law to elaborate on how complex a dance must be to constitute a choreographic work.

In FWS Joint Sports Claimants v. Canada (Copyright Board) ([1992] 1 FC 487), the Court held that playing a sports game cannot be a choreographic work “because, unlike a dance, a sporting event is for the most part a random series of events. The unpredictability of the action is inconsistent with the concept of choreography”. In Pastor v Chen (2002 BCPC 0169), a case where a dance instructor sued his former dance student for teaching the instructor’s version of a Cuban form of Salsa called “La Rueda”, the Court held that the “uniquely choreographed moves and dance styles” were covered by copyright. However, the dance was extremely complex, requiring a minimum of three couples and each move is done by a “call” from the leader. Furthermore, the instructor was successful on the basis of a breach of confidentiality agreement and the Court’s comments regarding copyright in the dance were merely in obiter.

The question remains as to how elaborate a dance must be to constitute a choreographic work in Canada; however, similarly to the US, something as simple as The Carlton may not warrant protection in Canada.