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.

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

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.

Natalie Raffoul spoke on IP and AI at Elevate Toronto Tech Festival

Natalie Raffoul joined a long list of exceptional speakers, including Michelle Obama and Chris Hadfield, at the Elevate Toronto Tech Festival today. The Elevate Tech Fest showcases the best of the Canadian innovation ecosystem. Natalie shared the stage with Carole Piovesan of INQ Data Law for the panel “Why Your AI Company Will Fail Without the Right IP Plan” moderated by Sean Silcoff of the Globe and Mail. Natalie spoke about IP trends and legal risks in artificial intelligence and machine learning, providing a IP lawyer and patent agent’s unique perspective on protecting AI assets.

Brion Raffoul Congratulates New Patent Agent Stacey Dunn

The firm would like to congratulate Stacey Dunn for passing the 2019 Canadian Patent Agent Qualification Examinations to become a Registered Canadian Patent Agent. Stacey has a background in molecular genetics and specializes in the life sciences. Stacey is also a lawyer in Ontario and actively supports our legal practice in the area of IP licensing and enforcement.

Brion Raffoul is a premier Canadian IP boutique providing clients with a full range of patent, design, and trademark procurement services, as well as legal advice in the field of IP.  We take time to know our clients and are committed to providing excellent quality service in a timely manner. If you have any questions about intellectual property, please feel free to reach out to any of our professionals.

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.

Protecting Your Innovation: Improvement Patents

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.