Brion Raffoul Supports Local Food Bank

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.

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.

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.

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.

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.

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.