The Brion Raffoul team was proud to make a donation to Partage Vanier through the proceeds of our holiday bake sale and a matched donation by the firm. It was fitting that we gave back to this amazing community on our move day(!) after being there for 8 years.
Partage Vanier is the most used food bank in Ontario, feeding approximately 450 families a month. The foodbank relies solely on donations from the community to feed its patrons. To donate to Partage Vanier click here.
The Toronto Chapter of the Licensing Executives Society (LES) (USA and Canada) is providing a Certified Licensing Professional (CLP) exam preparation course on March 25, 2020 from 8 am to 5:30 pm. Natalie Raffoul will join Michele Riley, Managing Director of Stout Risius Ross LLC and Paul Stewart, Managing Director of PASCO Ventures LLC, in providing a 9-hour, in-depth and substantive course that will help prepare professionals for the CLP Exam.
The course will be held at Torys LLP, 79 Wellington St. W., 33rd Floor (reception), Toronto, Ontario M5K 1N2
Register before February 14, 2020 for the early bird rate!
Register today at https://www.lesusacanada.org/event/clptoronto2020
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.
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!
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:
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.
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.
Big news in the world of luxury goods: earlier this week, French multinational LVMH (Moët Hennessy Louis Vuitton SA) acquired renowned jeweler Tiffany’s for $16.2bn. According to Reuters, one of the biggest draws for the luxury conglomerate was the breadth and value of Tiffany’s IP. The famous Tiffany packaging, boxes of trademarked “Tiffany Blue” tied with white satin ribbon, might be more pricey than any jewels. “We’re [now] the owner of a colour”, said Bernard Arnault, CEO of LVMH. “It’s a pretty rare thing.”
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.
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.
Brion Raffoul is pleased to announce the addition of 3 new law school students to our team:
Tina Dekker (M.A.Sc. Electrical Engineering – Nanotechnology)
Joshua Proud (Biomedical Mechanical Engineering)
Alexandra Dingee (Biology)
