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.

2019 NBA Champions Toronto Raptors: Trademark Fight Ahead with Monster Energy

By: Edward Wu

Despite the Toronto Raptors’ historic win last night, they may have some trouble ahead with their, now iconic, logo. Monster Energy is suing the Toronto Raptors over the clawed basketball logo. Documents from the U.S. Patent and Trademark Office’s (USPTO) Trial and Appeal Board (TTAB) show that the two companies have been fighting over the “claw” style logos since 2015. Monster Energy claims that the Raptors’ logo of a clawed-up basketball is too similar to Monster Energy’s claw logo:

Monster Energy’s Logo

Monster’s “claw” logo is of three jagged vertical gashes. The company has used the three gashes since 2002. The Raptors’ old “claw and a basket ball” trademark was filed with the USPTO in 1994 and registered in 2003.

Raptors’ Old Logo

In 2014, the Raptors redesigned the team’s logos and filed US trademark applications for the following:

Raptors’ New Logos

In May 2015, Monster Energy opposed the Raptors’ new US trademark applications. Over the past 4 years, the two companies attempted to settle the case but failed to reach a settlement by 2018, when the case went into discovery.

A recent document shows that Monster Energy filed a motion for partial summary judgement stating that the equitable defense of prior registration that the Raptors asserted is only available when the marks and goods/services in the subject application are essentially the same as the mark and goods/services in a prior registration. Monster Energy argues that the Raptors’ Trademarks are not substantially identical to the prior registration. Namely, the Raptors’ design was changed from independent claws and a basketball to claws within a basketball. Furthermore, one of the new marks added the words “TORONTO RAPTORS”, which is not found in the old mark. Monster also states that the Raptors described the new marks in very different ways, and they intended to create new marks for evolving the aging Raptors brand. The TTAB has yet to decide the outcome of the motion.

The trademark fight extends to the Raptors’ home court, Canada. Monster Energy opposed the Raptors’ Canadian trademark application for the “TORONTO RAPTORS” logo in December 2016. Interestingly, the Raptors successfully registered their new logo without the “TORONTO RAPTORS” on March 10, 2017 with the Canadian Intellectual Property office (CIPO).

Monster Energy may try to bring down the Raptors’ trademarks, but nothing can take away from last night’s win!

#WeTheNorth!

Bonne nouvelle! Une version française de notre site web!

Bonne nouvelle!  Puisque nous offrons tous nos services dans les deux langues officielles, nous avons maintenant une version française de notre site web.  Jetez-y un coup d’œil : https://bripgroup.com/fr/

Brion Raffoul supports Boys and Girls Club of Ottawa at 2nd Annual Charity Skiathon at Camp Fortune

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:

Ottawa Business Journal

Ottawa Citizen