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!
“Build a better mousetrap, and the world will beat a path to your door.”
Blockchain, nanomaterials, AI, CRISPR – disruptive technologies can transform entire industries. A common misconception is that patents are only for protecting cutting-edge and disruptive innovation. Indeed, only technology that is new and non-obvious can be protected by a patent. However, these requirements do not mean that only disruptive technologies can be protected. In fact, the Canadian Intellectual Property Office (CIPO) estimates that 90% of patents are for improvements to existing patented inventions. For example, a patent was granted this week for a bar of soap!
An improvement patent is based on technology that builds on a previous idea or invention – a better mouse trap if you will. An improvement patent does not give you the right to use the original patented invention as the patent holder can exclude others from using their invention. However, an improvement patent gives you the right to exclude others from using the improvement.
Exclusivity over the improvement can be a valuable defensive tool when faced with the threat of an infringement suit. Companies can avoid protracted and expensive patent litigation by aligning with would-be competitors or infringers and cross-licensing your technology with the patent holder of the original invention.
A cross-license is an agreement to grant mutual rights to each party’s respective patents.
A perfect example of a beneficial cross-licensing relationship is Google and Samsung Electronics, who signed a broad cross-licensing agreement in 2014. By joining forces, Google and Samsung Electronics mitigated their risk of infringement, allowing the companies to place a larger emphasis on innovation. Cross-licensing agreements are especially effective for companies that target different markets, creating a win-win for everyone.
Far too often companies underestimate the value of small improvements made to existing technology. By protecting incremental improvements, companies can bolster their IP portfolio and create new opportunities to license other technology.
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.
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:
- Does the claimed subject matter recite a judicial exception related to:
- 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.
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:
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) ( 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.
Natalie Raffoul as a Campaign Cabinet Member helped the 2nd Annual Charity Skiathon double its net proceeds for the Boys and Girls Club of Ottawa (BGCO).
The firm was also a proud Sponsor of the day and recruited other business leaders to join its ski team for a gorgeous day at Camp Fortune.
Over $150,000 was raised in one day(!) for the BGCO, an organization supporting Ottawa’s children and youth since 1923, by specializing in after school and weekend programs for kids aged 6 to 18.
To see some great local coverage of the event, please follow these links:
Under the new Rules, an Applicant can obtain a filing date by submitting: an indication that a Canadian patent is sought; the Applicant’s information; and a document describing the invention in any language. A translation of the invention description document into English or French and the filing fee may now follow at a later date.
Furthermore, Applicants may now obtain a filing date on a holiday or on the weekend as electronic communications will be deemed received on the day they are submitted, even if the Patent Office is closed.
If the priority claim requirements are not complied with, the priority claim will merely be disregarded rather than being deemed abandoned.
Certified copies of each priority document must be submitted or made available through an acceptable digital library. This requirement will not apply when the priority document is an earlier Canadian application or a national phase application that already satisfied its PCT priority document requirement.
Restoration of Priority Claim
The Office will now provide a two-month extension beyond the twelve-month period for claiming priority. Applicants may now file an application up to fourteen months from the earlier filed application and restore priority.
Streamlined Process for Amending an Application After Allowance
Applicants are no longer required to withhold paying the final fee to let an application go abandoned to re-enter examination. The new Rules allow for requesting a Notice of Allowance to be withdrawn, after which the Application re-enters Examination and the Application may be amended.
Notice Required from Patent Office Prior to Abandonment
Under the new Rules, an Application will not go abandoned for failure to pay maintenance fees or to request examination without prior notification of a deadline. A notice letter will be sent establishing a deadline of the later of six months from the missed deadline or two months from the notice date.
42 Month Deadline for National Phase Entries is No Longer “As of Right”
The twelve-month deadline extension for entering
While these changes are a step in the right direction for patent practice, Patent Applicants should be aware of the tightened timelines and additional requirements coming into force within the year.
If you have any questions regarding the new Rules, please do not hesitate to contact us at [email protected].
Natalie Raffoul collaborates with Jim Hinton, a patent lawyer and principle at Own Innovation, to discuss the critical importance of having strong intellectual property expertise advising the government on IP rights, in particular on the ownership of patent and data rights, when negotiating public-private partnership (P3) agreements and in setting government policy on such P3 agreements.
Their article appeared in the business section of The Globe and Mail on February 18, 2019
Read the full article here
Brion Raffoul’s Managing Partner, Natalie Raffoul, will be attending the Licensing Executive Society International (LESI) Winter Planning Meeting in Miami from January 25-27, 2019. Ms. Raffoul is Co-Chair of the Education Committee. The Winter Planning Meeting provides an opportunity for the global LES leadership to meet and plan the year ahead for the society and also learn from intellectual property licensing industry experts. The LESI will meet again for its Annual Meeting in May in Yokohama, Japan. https://www.lesi.org/events/2019-winter-planning-meeting
Ms. Raffoul will be attending the 1st Asia Pacific Licensing Executive Society International Young Members Congress Meeting in Hong Kong on November 30th, 2018. Ms. Raffoul will be leading a panel of distinguished international speakers to discuss the challenges around managing international intellectual property disputes. Natalie will bring her perspective on managing IP disputes for her own clients where you have enforcement or defence issues arising on patent assets outside of Canada, particularly in the US or Europe. Ms. Raffoul has been successful in settling numerous international patent and design infringement disputes on behalf of her Canadian and foreign clients.