Brion Raffoul LLP Welcomes 3 Law Students!

Brion Raffoul is delighted to welcome three (3) law students for 2020 summer internships! Joining our team are:

Tina Dekker

Tina Dekker

Tina is a law student at the University of Ottawa, graduating in 2022. She holds a Master of Applied Science in Electrical Engineering (specializing in nanotechnology) and a Bachelor of Applied Science Honours Degree in Nanotechnology Engineering (with co-operative education) from the University of Waterloo. Tina will be primarily focused on patent drafting and prosecuting for software, chemical, and mechanical inventions, and on IP licensing.

Alexandra Johnson Dingee

Alexandra Johnson Dingee

Alex is a law student at Western University, graduating in 2022. She holds a Bachelor of Science (Honours) in Biology from Queen’s University. Alex will be focused on patent drafting and prosecuting for medical, bio-tech, and biochem inventions, on trademarks, and on IP licensing.

Joshua Proud

Joshua Proud

Joshua is a law student at the University of Ottawa, graduating in 2022. He holds an Honours Bachelor of Applied Science degree in Biomedical Mechanical Engineering from the University of Ottawa and worked in the automotive industry before law school. Joshua will be primarily focused on patent drafting, searching, and prosecuting of mechanical inventions.

In Patent-Speak: When is a Brassiere an N95 Mask?

In these especially challenging times, one must be able to see through the fog of distracting information.

The same holds true for the bureaucratic process of filing for a patent. A case in point is a 3M Company patent (U.S. Patent No 3,064,329) for a molded nonwoven fabric article and related manufacturing process for making items such as porous breath-filtering face masks used by surgeons, physicians, and nurses subjected to contaminated atmospheres. Nowadays, we might call such items N95 masks. 

Back in 1959, 3M equated their masks to women’s undergarments.  But notwithstanding the distracting patent illustrations, this U.S. patent is not what some may think of when considering N95 masks.  Why is that?

The U.S. Patent & Trademark Office (USPTO) uses an arcane classification system to pigeon-hole patent applications into the proper “bucket” of technology.  Although the original patent classification of this 3M patent has changed during reclassification efforts of the last 60 years, this patent is currently classified in U.S. patent class 450, subclass 39.  Here, the USPTO classifies inventions that include “breast or chest, e.g., brassieres; molded preshaped shell-like cup, e.g., plastic latex”. 

Interestingly, the broadest claims of this patent actually make no mention of breasts or brassieres.  Rather, brassieres are buried in two short claims towards the end of the list of claims.  So how can a brassiere patent not be a brassiere patent, and why would 3M or any patent applicant obfuscate the intended invention?

The answer can be as simple as the first rule of any good persuasive writing:  write for your audience.

The USPTO includes over 8,000 patent examiners that review patent applications in discrete buckets of technology. Over time, each examiner becomes expert in reviewing their own peculiar area of inventions. This pejoratively means that each examiner knows a lot about very little.

One way that seasoned patent practitioners have learned to use this to their advantage is to draft a patent application broadly enough to cover the intended commercial product, but simultaneously insert enough flavour into the application to shepherd the case into a preferred bucket of technology.  In the case of the 3M patent, it is likely that the examiner who reviewed and granted that brassiere patent was expert in women’s undergarments rather than N95 masks.  In theory, this can make a patent practitioner’s job a little easier when trying to persuade a USPTO examiner that an invention is new and nonobvious.

Knowing how to effectively navigate the USPTO patent classification system to get a patent application under the right examiner’s nose can often affect the outcome of negotiations.  So, when is a brassiere not a brassiere: when the patent applicant calls it an N95 mask. 

Indeed, a rose by any other name would smell as sweet!

COVID-19 Crisis: Canadian Government amends Patent Act to produce patented medical supplies

By Liz Gray and Natalie Raffoul

Last week, the Government of Canada passed an omnibus bill in response to the COVID-19 crisis that adds special powers to the Patent Act to ensure medical supplies, medication or vaccines can be produced locally.

Under the new Section 19.4(1), upon application of the Minister of Health, the Commissioner of Patents shall authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application.

The application must include the Chief Public Health Officer’s confirmation that “there is a public health emergency that is a matter of national concern”, as well as a description of that public health emergency (subsection (2)). Further, subsection (7) explicitly clarifies that the use or sale of a patented invention under such an authorization, in relation to a public health emergency, is not an infringement of the patent.

Upon granting the authorization, the patent holder would receive “adequate remuneration under the circumstances” as determined by the Commissioner of Patents.

Any authorizations made cease to have effect when the Minister of Health determines that they’re no longer needed, or one (1) year after grant, whichever comes first. Additionally, no authorization shall be granted after September 30, 2020.

Take Your Career in IP Commercialization to the Next Level by becoming a Certified Licensing Professional (CLP)

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

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.

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.

The New Gold Rush: Open Innovation in Canada

“It’s impossible for any organization to have all the best ideas”

~ General Electric, Open Innovation Manifesto

Open Innovation as an R&D strategy may seem counter-intuitive; traditional corporate culture dictates the use of secret R&D labs that operate in an information silo. However, open innovation can offer many competitive advantages, such as complimenting your company’s internal skills and know-how with external knowledge and ideas, lowering R&D costs, and increasing differentiation in the market.

For example, in 2000, the Canadian gold mining company Goldcorp Inc. crowdsourced gold prospecting in an under-performing mine; Goldcorp knew they were sitting on a literal and figurative gold mine but their geologists could not find the main deposits of gold. Goldcorp created a challenge for the general public; they released all Goldcorp’s geological data (going back as far as 1948) and offered $575,000 in prize money to the innovators that could find the elusive gold deposits. At the time, this type of open innovation was contrary to traditional mining practices: Goldcorp was admitting they were unable to find the gold and was releasing all their proprietary data. However, Goldcorp’s challenge led to more than 110 gold deposits that yielded over $6 billion worth of gold.

So, if that doesn’t answer why open innovation is a worthy consideration for any business, consider that patent filings in Canada have not increased significantly in the past ten (10) years. However, this stagnation is not an issue of lack of funding. Indeed, statistics from Industry Canada indicate that Canada is second only to the United States when it comes to venture capitalist funding.


Collaboration between companies and with the public at large should be considered to invigorate innovation in Canada. In another successful example of open innovation, Bombardier held a contest to solicit urban mobility designs. They created a social media open innovation community integrated with live, offline workshops. The contest rules stipulated that the winners must transfer their IP to Bombardier in exchange for a small prize. Bombardier also kept a right of first refusal for a year for all non-winning ideas. By creating a community around innovation, even outside their company, Bombardier created a sense of self-determination and pride in the community, that resulted in innovation pouring into Bombardier. Indeed, Bombardier received input from 2,486 participants from 102 countries that contributed 4,239 designs, 25,979 evaluations, 8,565 comments and 3,445 messages on Bombardier’s proposed urban transportation projects. As a bonus to uncovering a gold mine of innovation, Bombardier customers were very receptive to their more open and customer-orientated brand.

However, it is important to note that “open” innovation does not necessarily mean the innovation is in the public domain; the devil is in the details. IP ownership provisions should be clearly outlined in an agreement between all involved parties. The following questions can be helpful in outlining the preferred ownership details:

  • Who will own the IP stemming from the project (foreground IP)?
    • What about jointly created IP (joint ownership/management of IP assets should be approached with caution)?
    • Consider motivation factor for crowdsourcing when innovators own their IP?
    • Does a royalty-free license in perpetuity make sense given the motivations of the IP owner (i.e., the company or the innovator)?
  • What IP do the innovators and the company already own (background IP)?
  • Who owns the feedback stemming from the project?
  • Should a right of first refusal be included for IP that is not exploited during the project?

The bottom line: open innovation can be a great way to invigorate innovation within your company without resorting to a significant increase in R&D funding.

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.

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.