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.

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!

File Wrapper Estoppel in Canada – How Far Are the Courts Willing to Go?

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.

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.

IP Strategy Within a Global Marketplace

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 Welcomes 3 New Law School Students for Summer 2020

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)

Happy National STEM Day!

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Brion Raffoul wishes all the budding scientists, computer scientists, engineers, and mathematicians a Happy National STEM Day. Without STEM careers, patent law would not have developed to what we know it as today. If any budding scientists or engineers need some motivation to continue on the STEM path, here are some historical Canadian patents for inspiration!

For example, one of the first electric light prototypes (before Edison’s) was patented in 1874 by Canadian inventors Henry Woodward and Mathew Evans. Unable to secure investors, Woodward sold the rights to the US Patent to Edison in 1879. Edison later bought a share in the Canadian rights.

By Stacey Dunn