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Articles
Our professionals regularly report on new developments in all areas of intellectual property and technology law. Please select from our list of articles below.
To search for a particular subject, please use the search tool at the bottom of your screen.
Smart & Biggar/Fetherstonhaugh welcomes new associates
Sep 02, 2010
Firm dominates in IP rankings in The Best Lawyers in Canada®
Aug 31, 2010
Firm receives top honours in recent survey publications
Aug 31, 2010
Federal Court of Appeal overturns invalidity ruling in olanzapine infringement action
Aug 05, 2010
Modernization of the Copyright Act
Jul 21, 2010
Front-of-the-line treatment of “green innovations” coming soon to the Canadian Intellectual Property Office
Jul 21, 2010
Stopping infringing products at the Canadian border
Jul 21, 2010
Bill C-32 — Modernization of the Copyright Act
Jun 08, 2010
Time limitations worth noting: is it too late to protect my rights?
May 19, 2010
Make a statement without saying a (misleading) word
May 19, 2010
Bettering your business position using IP assets
May 19, 2010
Federal Court grants stay of re-examination proceedings pending outcome of patent infringement and validity trial
The Court’s decision was influenced by the need for live testimony and cross-examination to resolve credibility issues arising on the facts of the case.
Apr 27, 2010
CIPO releases new chapters 12 and 13 of the MOPOP
The controversial approaches to examination and statutory subject matter adopted in these chapters are being challenged in the Federal Court.
Apr 27, 2010
Federal Court rejects opposition to distinctive toothpaste design
Apr 27, 2010
Supreme Court of Canada to hear trade-mark appeal
The Court will consider whether a likelihood of confusion between two trade-marks can exist if both marks are not already in use in the same geographic area.
Apr 27, 2010
Federal Court introduces summary trial rules
Apr 27, 2010
Smart & Biggar/Fetherstonhaugh recognized as Copyright Firm of the Year by Managing Intellectual Property magazine
Apr 21, 2010
Act soon to secure new .co domain name
Apr 09, 2010
The risks and rewards of trade secrets
To patent or not to patent – consider the potential benefits and drawbacks of one alternative.
Mar 17, 2010
What’s really in a name?
Mar 17, 2010
Are you ready for new top-level domains?
Changes are coming that will impact addressing standards on the Internet. Will they affect your interests?
Mar 17, 2010
Battle of the brands
Jan 25, 2010
Likelihood of confusion between trade-marks: would Homer Simpson be confused?
Jan 25, 2010
One more try at containing official marks
Jan 25, 2010
When speed matters — obtaining rapid results in IP litigation
Jan 25, 2010
Registering trade-marks incorporating net speak
BTW, R U ^ 4 dinr l8r? :-)
Jan 25, 2010
Amendments to the Patent Rules to revise declaration of entitlement requirements come into force October 1, 2010
Dec 14, 2009
New Wares and Services Manual released; proposed changes in trade-mark prosecution practice
Dec 04, 2009
CIPO issues Practice Notice on obviousness
Dec 04, 2009
CIPO proposes changes to post-Final Action procedures
Proposed amendments to the Patent Rules address issues that have been raised in the Belzberg decisions.
Dec 04, 2009
Canada builds new lanes on the Patent Prosecution Highway
Dec 04, 2009
Federal Court considers good faith requirement in Canadian patent prosecution
Nov 30, 2009
Innovation, Intellectual Property and Intellectual Property Management — 10,000 feet level
Nov 24, 2009
Making promises — warranties and indemnities in intellectual property agreements
Nov 24, 2009
Patent myths debunked
Five common misconceptions about patents and why they are wrong.
Nov 24, 2009
When good trade-marks go bad
Typically, the more quickly a trade-mark becomes well-known, the better. However, when a mark becomes well-known too quickly, the trade-mark owner has to be very careful. This is especially true when the trade-mark is used in association with a new type of product. Failure to take proper precautions can have devastating consequences.
Nov 24, 2009
Federal Court renders judgment in cefaclor litigation
Nov 04, 2009
Smart & Biggar/Fetherstonhaugh ranks as #1 Canadian PCT filing firm
Oct 09, 2009
Oops! I disclosed my invention… now what?
Sep 16, 2009
Got personality? How can you protect it?
Sep 16, 2009
The young and inventive: kids with patents
Sep 16, 2009
The tale of Javacafé
(Or, how one exporter cannot monopolize a geographical designation.)
Sep 16, 2009
Patent for amlodipine besylate declared invalid
Sep 09, 2009
Canada paves the way for subsequent entry biologics
Sep 01, 2009
Three key differences between U.S. and Canadian patent law that can affect patent filing strategies in Canada
Aug 06, 2009
Amazon.com's "One-Click" patent application rejected by Canadian Patent Appeal Board
The Board has adopted a new approach to statutory subject matter in Canada, including a reversal of CIPO's position on the patentability of business methods.
Aug 06, 2009
Federal Court clarifies Final Action and post-appeal procedures
After an applicant obtains a favourable ruling from the Patent Appeal Board, it is not open to an Examiner to re-open examination to raise new grounds of rejection.
Aug 06, 2009
To disclaim or not to disclaim, that is the question
Aug 06, 2009
Canadian Intellectual Property Office news
Public consultations on a number of topics are under way, and new practice notices have been issued.
Aug 06, 2009
Proposed amendments to the Patent Rules to revise declaration of entitlement requirements
A new simplified declaration will avoid many of the difficulties posed by current declaration of entitlement requirements.
Aug 06, 2009
Data protection upheld as valid
Aug 04, 2009
Get noticed: tips for increasing brand recognition and brand value
In these tough economic times, maximizing your profits by increasing the profile of your brands is a top priority. A few simple and cost-effective strategies can help you attract attention in today's competitive market.
Jul 22, 2009
Three deadly sins of patent portfolio building
Jul 22, 2009
Firms congratulate our newest associates and patent agents
Jul 06, 2009
Going organic with confidence
The Canadian government has unveiled tough new standards for organic producers and a logo that confirms compliance.
Jul 02, 2009
Federal Court issues Practice Direction aiming to streamline complex litigation
Jun 09, 2009
911 for your IP: who’s policing your intellectual property?
May 21, 2009
Staying on your mark
May 21, 2009
Use it or lose it: maintaining your intellectual property portfolio in Canada
While most of us are aware of the consequences of failing to get a bit of exercise from time to time, the potential for loss of an intellectual property right through failure to use is less well-known. In both, however, maintenance is critical to success.
May 21, 2009
The claim game: obscure language, broad patent protection
Even common household objects can be difficult to recognize when described using patent claim language, but such language is usually in the patent holder's best interests.
May 21, 2009
Brian P. Isaac appointed Chair of the Canadian Anti-counterfeiting Network (CACN)
Apr 01, 2009
New summary trial mechanism proposed for Federal Court
Apr 01, 2009
New practice for Canadian trade-mark oppositions
Apr 01, 2009
Implications of inaccurate Declaration of Use examined by Federal Court
Apr 01, 2009
Cape Breton distiller wins back the right to use GLEN for whisky
Apr 01, 2009
Federal Court of Appeal finds VIAGRA worth a try but not obvious
The new “obvious to try” standard requires a “self-evident” expectation of success.
Apr 01, 2009
Grace period disclosure by patent applicant cannot be transformed into prior art by a third party application
This decision is believed to be the first to consider the applicability of the one-year grace period to co-pending applications where the earlier application describes a product disclosed to the public by the applicant of the later-filed application before either application was filed.
Apr 01, 2009
CIPO issues new biotechnology examination guidelines
The Canadian Manual of Patent Office Practice has been updated to include a revised chapter on biotechnology.
Apr 01, 2009
Smart & Biggar/Fetherstonhaugh honoured with award for 2009 Canadian Trade Mark Case of the Year
Mar 30, 2009
Smart & Biggar/Fetherstonhaugh welcomes Daniel S. Drapeau
Mar 16, 2009
The official mark — a creature unique to Canada
Jan 21, 2009
Managing patent portfolios during tough economic times
With a well-conceived strategy, a company’s patent portfolio can be managed during difficult economic times while continuing to maintain and build a competitive edge.
Jan 21, 2009
It’s all about the advertising
Advertising can make or break a brand. Avoid common pitfalls and get the most out of your advertising campaign.
Jan 21, 2009
Overcoming Canada's Two Step Country of Origin Trade-mark Registration Hurdle
Jan 12, 2009
Protecting the look and feel of consumer products
Patenting technological innovations is a familiar concept to most. However, there may be value in patenting other unique aspects of a consumer product as well.
Nov 19, 2008
Going global with your brand, part 3: foreign filing strategies and options
The third article in this series looks at options for filing international trade-marks more efficiently and cost-effectively.
Nov 19, 2008
Marking patented products: practical guidelines for Canadian companies
Patent marking can play a significant role in realizing the full benefits of patent protection.
Nov 19, 2008
Amendments to Copyright Act on hold
Nov 18, 2008
Federal Court rejects inequitable conduct doctrine in Canada
Canada’s brief flirtation with U.S. doctrine seems to be over but baggage remains.
Nov 18, 2008
Trade-marks Office considers changes to opposition practice
Among the most significant changes is the introduction of a cooling-off period to encourage settlement.
Nov 18, 2008
Settlement of conflict proceeding did not contravene Competition Act
A competition law violation requires something more than the mere existence or enforcement of statutory patent rights.
Nov 18, 2008
.TEL top level domain to provide new mechanism for electronically publishing business or individual contact information without using the World Wide Web
For registered trade-mark owners, “
Nov 18, 2008
Supreme Court upholds PLAVIX selection patent
Nov 06, 2008
Federal Court releases first section 8 decision: Merck liable for damages, not profits
Nov 04, 2008
The Canadian Regime for Protecting Against Pharmaceutical Trademark Confusion and Mistakes
Oct 27, 2008
Provincial Courts: intellectual property understudies
In intellectual property cases, which Canadian court should you use? The answer depends on what you’re trying to achieve.
Sep 17, 2008
Talk to your doctor – got it, but what is the drug for?
Have you ever wondered why drug companies advertise their products but don’t tell you what they do? The answer is that it’s the law – but there are exceptions.
Sep 17, 2008
PMPRB releases Draft Revised Excessive Price Guidelines
Sep 03, 2008
Court of Appeal applies strict matching requirement for listing against SNDS for new use under amended Regulations
Aug 08, 2008
Canada’s legal drug wars – what’s all the fuss about pharmaceutical patent litigation in Canada?
The stakes are high in the pharmaceuticals market in Canada, both for those researching and inventing the drugs and those who want to produce generic versions.
Jul 16, 2008
Patently ridiculous
A brief look at a number of amusing Canadian patents.
Jul 16, 2008
Wine, cheese and other edible treats – a sampling of geographical indications
The origin, production process and resulting quality of a product can make all the difference. How can you be sure to get the real thing?
Jul 16, 2008
Cape Breton distiller loses right to use GLEN for whisky
Jul 03, 2008
Special relationship precluded anticipatory public disclosure
A written disclosure of the invention by the inventor to a third party, for the purpose of obtaining manufacturing advice, was held not to constitute prior art due to the special relationship between the parties.
Jul 03, 2008
CIRA restricts the availability of information regarding certain types of domain name registrants
It will now be more difficult to determine the identity of .ca domain name registrants who are individuals.
Jul 03, 2008
Canada’s proposed amendments to the Copyright Act – Bill C-61
Jul 03, 2008
Louis Vuitton awarded record-setting damages against counterfeiters
Jun 30, 2008
Amendments to linkage Regulations now in force
Jun 13, 2008
Helping the environment through patent pledging
The green movement has become a powerful force. This interest in our planet is now being extended to the sharing of patented technology.
May 21, 2008
Parody and the law: when is it OK to poke fun?
May 21, 2008
On the lookout for patent trolls
The patent troll phenomenon endangers Canadian companies that do business in the United States.
May 21, 2008
Federal Court of Appeal clarifies sufficiency requirement for selection patents
Apr 08, 2008
Past resolutions bring forth new year changes, part 2
This article provides a summary of the changes to Canadian and European patent rules proposed in the past year.
Mar 19, 2008
Canada's proposed amendments to the Copyright Act
Balancing the need to meet Canada’s obligations under international treaties with satisfying the Canadian public has proven to be a tricky proposition.
Mar 19, 2008
Triple protection for the shape of useful articles
Protection for your innovations can be found using many different types of intellectual property legislation, including within the Trade-marks Act, the Copyright Act and the Industrial Design Act.
Mar 19, 2008
Keeping a (trade) secret in the oilpatch: mitigating risks with patent protection
Discovering the protection offered by a patent can be as promising as striking oil.
Mar 19, 2008
Federal Court comments on "proper disclosure" requirement
Mar 04, 2008
Canadian Industrial Designs Database now offers complete collection online
Feb 28, 2008
Olympic safeguards now in force
Feb 28, 2008
Update on copyright in Canada
Feb 28, 2008
Deemed abandonment provisions pose traps for the unwary
Statutory provisions were construed strictly against the applicants in two recent court decisions.
Feb 28, 2008
Federal Court of Canada confirms its stance on counterfeiters
Jan 31, 2008
Past resolutions bring forth new year changes, part 1
This article provides a summary of the changes to U.S. patent rules proposed in the past year.
Jan 16, 2008
Going global with your brand, part 2: the importance of trade-mark registration
Jan 16, 2008
Detecting patent infringement
Is major detective work necessary to detect infringement of your patents in the marketplace? For enhanced strategic value, seek patents for inventions that can be easily spotted in competitors' products or services.
Jan 16, 2008
Your domain name: are you in control?
The Internet is a minefield that could potentially damage your brands at every turn. Learning to defuse these issues is essential to maintain the integrity of your brands, online and in the real world.
Jan 16, 2008
Canadian courts get tough -- recent trilogy of precedent-setting cases against counterfeiters
Dec 07, 2007
Apotex's challenge to data protection to proceed
Dec 05, 2007
Federal Court of Canada awards precedent-setting damages in recent counterfeiting action
Nov 22, 2007
Combating counterfeiting crime in Canada
Canada has not been immune to the explosion in IP crime over the last decade. Practical steps available to address the problem require awareness, diligence and perseverance.
Nov 21, 2007
A “colourful” approach to non-traditional trade-marks
Trade-marks that fall outside the usual categories of words or design are getting increased attention, from companies and from the Trade-marks Office.
Nov 21, 2007
What is a Freedom to Operate analysis?
A clear understanding of the existing patent rights of others is essential to prevent costly infringement actions down the road.
Nov 21, 2007
Licensing basics, part 3
The third article in our series on IP licensing discusses escape clauses.
Nov 21, 2007
Patentability: is patent protection an option?
Nov 21, 2007
Patent Appeal Board clarifies professional skills exclusion
A recent business method appeal has provided further guidance as to the scope of the professional skills exclusion from statutory subject matter.
Nov 06, 2007
Signal claims blocked in Canada
The Canadian Intellectual Property Office has stated its position, but the matter has yet to be tested in a Canadian Court.
Nov 06, 2007
Canada publishes new rules and procedures for opposition proceedings
Nov 06, 2007
Going global with your brand, part 1: lost in translation
Without the proper care, your brand may be misinterpreted with embarrassing and potentially damaging results.
Sep 19, 2007
Tapping into the IP mosaic in your product
Maximise the security of your key products with different forms of IP protection.
Sep 19, 2007
The costly repercussions of patent infringement
Those found guilty of infringing a patent often find that the damages reach far beyond the bottom line.
Sep 19, 2007
Licensing basics: part 2
This second article of our continuing series on IP licensing discusses various forms of compensation.
Sep 19, 2007
New practice at the Trade-marks Office -- no disclaimer required
Aug 23, 2007
Supreme Court of Canada chews on the issue of using copyright to prevent grey marketing
Aug 20, 2007
Court of Appeal applies “relevance” requirement for patent listing under preamended Regulations
Aug 09, 2007
Are you missing the boat to China?
Jul 18, 2007
The patent landscape goes green
Finding creative ways to protect your environmentally-friendly IP in a rapidly expanding marketplace is becoming increasingly important.
Jul 18, 2007
Don’t forget industrial design registration as a tool for intellectual property protection
Industrial designs can complement patents and trade-marks to give you the most thorough protection possible for your invention.
Jul 18, 2007
Licensing basics: part 1
This is the first part in a series of short articles by Alistair Simpson addressing important issues in licensing intellectual property.
Jul 18, 2007
Canada partially implements amendments to PCT Regulations
Jul 04, 2007
Video recording law introduced in Canada to combat piracy
Warner Bros. Studios recently announced its intention to cancel preview screenings of its films in Canada in an attempt to combat piracy. In response, the Government of Canada has introduced a Bill to amend Canada’s Criminal Code.
Jul 04, 2007
Canadian IP regulations amended
On June 2, 2007, amendments to the Patent Rules came into force. These amendments affect small entity fees, title documents and sequence listings. Minor amendments were also made to regulations under other IP statutes.
Jul 04, 2007
Canada to fortify protection for Olympic marks
Pending legislation for Olympic marks will supplement existing protection.
Jul 04, 2007
DOUBLE DOUBLE: when two may not be enough
If you walk into any coffee shop in Canada and ask for a double double, you will automatically receive a coffee with two creams and two sugars. Can this term be registered as a trade-mark?
Jun 04, 2007
Panning for patent gold: differentiating the obvious from the innovative
Many engineers and scientists dismiss their solutions as obvious, when in fact their advancements may well constitute new and non-obvious patentable inventions.
Jun 04, 2007
Patent portfolio management: know what you have
“Be Proactive” is habit #1 from Steve Covey’s The 7 Habits of Highly Effective People. When it comes to building and maintaining a valuable patent portfolio, proactivity is an absolute necessity.
Jun 04, 2007
Choosing a winning trade-mark is key to creating a strong brand
Many considerations go into choosing a brand name (or trade-mark) when a new product or service is prepared for launch.
Jun 04, 2007
The quest for VC funding: improve your odds with effective IP management
In the post dot-com era, IP is becoming an increasingly important consideration for investors and venture capitalists (VCs). This is especially true when VCs are contemplating investments in small technology companies.
Jun 04, 2007
Amendments to the Canadian Patent Rules Take Effect on June 2, 2007
Jun 01, 2007
Federal Court Finds "Relevance" Required for Listing Under Old Linkage Regulations
May 07, 2007
Federal Court Upholds Minister’s Interpretation of Apotex Supreme Court Decision
Apr 02, 2007
Supreme Court of Canada -- Foreign Injunctions May be Enforceable in Canada
Feb 28, 2007
Official Marks -- Court of Appeal Confirms “Public Authorities” Must be Subject to Control by a Canadian Government
Feb 28, 2007
Unregistered Trade-marks Exempt from Charter of the French Language
Feb 28, 2007
Inequitable Conduct Comes to Canada?
Feb 28, 2007
Counterfeiters Pay a Heavy Price
Feb 28, 2007
Minister of Health Interprets Apotex Supreme Court Decision
Feb 05, 2007
Supreme Court Finds Apo-Omeprazole NOC Valid
Nov 06, 2006
Supreme Court of Canada Rules on the Interplay of Copyright in a Newspaper and in the Underlying Articles
Oct 30, 2006
Amendments to Linkage Regulations and Data Protection Approved
Oct 10, 2006
Amendments to Regulations Under Ontario Formulary Legislation Approved
Oct 02, 2006
Test for Infringement of Use Patents Under Linkage Regulations Tightened
Jul 04, 2006
Jurisdiction of the Patented Medicines Prices Review Board
Jun 27, 2006
Strategic Considerations for Patenting Pharmaceuticals in Canada
Jun 27, 2006
Supreme Court Displays Its Sweet Tooth
Jun 27, 2006
New Canadian Patent Office Policy Concerning Patentability of Fertilized Eggs, Stem Cells, Organs and Tissues
Jun 22, 2006
Proposed Amendments to Linkage Regulations and Data Protection Published
Jun 19, 2006
Barbie and Veuve Clicquot -- Supreme Court of Canada Clarifies Protection for Famous Trade-marks in Canada
Jun 02, 2006
Lisinopril Patent Valid and Infringed by Apotex
May 15, 2006
Ontario Government Tables Bill to Amend Formulary Legislation
Apr 18, 2006
Canada’s Trade-mark Licensing Regime
Mar 27, 2006
The Importance of Naming Predecessors in Title in Canadian Trade-mark Applications
Mar 27, 2006
Internal Use of Trade-mark Does Not Constitute “Use” or Passing Off
Mar 27, 2006
Preventing Importation of Grey Market Goods into Canada: By Copyright or Trade-mark?
Mar 27, 2006
Single Infringer's Use of Confusing Mark Caused It to Lose Distinctiveness
Mar 27, 2006
Canadian Domain Name Disputes
Mar 27, 2006
Obtaining Official Marks — Must be a "Public Authority in Canada"
Mar 27, 2006
Lego Loses Trade-mark Battle in Canada
Mar 27, 2006
Famous (and Not Quite Famous) Trade-marks in Canada
Mar 27, 2006
Top 10 Differences Between Canadian and U.S. Trade-mark Application Procedures
Mar 27, 2006
Manitoba Court of Appeal Reverses Formulary Listing Decision
Mar 06, 2006
Prior Allegation of Non-infringement Precludes Generic from Making Allegation of Invalidity
Mar 06, 2006
Small Entity Fee Payment Legislation Comes Into Force
Feb 01, 2006
Federal Court Finds PMPRB Does Not Have Jurisdiction Over Patent Applications
Dec 05, 2005
INTA 2005 Volunteer Service Award Presented to Michael D. Manson
Nov 18, 2005
LEGO Loses Trade-mark Battle in Canada
Nov 18, 2005
Mixed Results for Ramipril Use Patents
Nov 07, 2005
Patents - Markush Claiming in Canada
Nov 02, 2005
Supreme Court of Canada Grants Leave to Appeal from Decision Quashing Apo-Omeprazole NOC
Oct 20, 2005
Patent for Controlled-Release Tablet Found Ineligible for Listing on Patent Register
Sep 06, 2005
Manitoba Court Declares Formulary Listing for Apo-Omeprazole Ultra Vires
Jul 05, 2005
Copyright Reform
Jun 27, 2005
Supreme Court Barbie
Jun 27, 2005
Possible Modernization of Canadian Trade-marks Act
Jun 27, 2005
Canadian Trade-mark Examination Practice Burned in Effigi -- A Fundamental Change After 50 Years
Jun 27, 2005
Reverse Confusion Actionable in Canada
Jun 27, 2005
Jean Chrétien Pledge to Africa Act Now in Force
Jun 07, 2005
Supreme Court of Canada Finds Biolyse Not Caught by Linkage Regulations
May 20, 2005
Small Entity Fee Payment Legislation Passes
May 06, 2005
Federal Court Rejects Allegation of Invalidity of PLAVIX Patent
Apr 04, 2005
Order of Prohibition Issues Preventing Generic Marketing of Aventis' ALTACE
Apr 04, 2005
Generic Estopped from Alleging Invalidity and Non-Infringement Under Linkage Regulations
Mar 07, 2005
Supreme Court of Canada to Consider Issue of Famous Marks
Feb 28, 2005
Court of Appeal Finds Copyright Not Applicable to Collective Works
Feb 28, 2005
Written Descriptions in Applications to Register a Design in Canada
Feb 28, 2005
Trade-mark Owners Required to Trim Down -- No "Carb" Marks Permitted
Feb 28, 2005
Missed or Incorrect Payments for Patent Fees -- Continued
Feb 28, 2005
Government of Canada Proposes Sweeping Amendments to Linkage Regulations and to Data Protection Provisions
Dec 22, 2004
The Rights of Co-inventors: Vive la difference Québécoise
Nov 08, 2004
Draft Guidance Documents for Health Canada Review of Look-alike Sound-alike Names Published for Comment
Nov 01, 2004
Protection for Colour Trade-Marks in Canada
Oct 29, 2004
Supreme Court to Take Second Look at Patented Medicines (Notice of Compliance) Regulations
Oct 29, 2004
Proposed Regulations Pursuant to Bill C-9 Published for Comment
Oct 29, 2004
LEGO Supreme Court Case Gets More Complicated
Oct 29, 2004
Balancing Act
Canada shares its patented pharmaceuticals with the world while balancing the needs of public health and private rights. A close inspection of the Jean Chrétien Pledge to Africa Act.
Oct 18, 2004
Federal Court Dismisses AstraZeneca's Applications to Quash Apotex NOC for Omeprazole
Oct 05, 2004
Regulating Beauty
To which products do Canada's Cosmetic Regulations and related provisions in the Food and Drug Act apply?
Aug 19, 2004
Update on Actions for Damages Under Patented Medicines (Notice of Compliance) Regulations
Jul 05, 2004
Changes to Requirements for Filing Sequence Listings in Canadian National Phase Applications
Jul 05, 2004
Missed Payments for Patent Fees -- Door Closes Tighter
Jul 05, 2004
Canadian Parliament Approves Legislation to Permit Exports of Patented Pharmaceuticals to Developing Countries
Jun 30, 2004
Supreme Court of Canada Dismisses Appeal in Monsanto v. Schmeiser
May 21, 2004
Will Canada become the Vanuatu of the North?
May 18, 2004
Competition Bureau Closes Inquiry into Alleged Practice of “Evergreening”
Apr 05, 2004
Court of Appeal Confirms that an SNDS will Support a Patent Listing Except in Limited Circumstances
Apr 03, 2004
Canada - The Sound of Descriptive Marks
Mar 15, 2004
Not Copyright Infringement to Copy Music from the Internet For Personal Use
Mar 12, 2004
Sound Marks Can Function as Trade-marks in Europe
Mar 10, 2004
Patent Fees Updated
Mar 10, 2004
Life Form Patents - The Schmeiser Case – An Update
Mar 10, 2004
Supreme Court Keeps the Law Library Open
Mar 04, 2004
Patent Litigation – Markman-type claim construction hearings overturned in Canada
Feb 03, 2004
Federal Court Dismisses Application to Preserve Patent which Lapsed for Failure to Pay Timely Maintenance Fees
Jan 14, 2004
Internet Pharmacy Developments
Dec 01, 2003
Canada Introduces Legislation to Amend Patent Act to Permit Exports of Patented Medicines to Developing Countries
Dec 01, 2003
Proposal by Health Canada on Review of Look-alike Sound-alike Names
Dec 01, 2003
Controlling Sales by Canadian Internet Pharmacies to US Consumers
Nov 03, 2003
No More “Canadian Champagne”?
Oct 30, 2003
Interlocutory injunctions — The British Columbia Approach
Oct 30, 2003
Government Intends to Resolve Small Entity Patent Fees Issue
Oct 30, 2003
Canada May Facilitate Access of Third World Countries to AIDS Drugs
Oct 30, 2003
Recent Decisions under the Patented Medicines (Notice of Compliance) Regulations on Obviousness
Oct 06, 2003
Approval of Drug Names by Health Canada
In reviewing a drug submission, in addition to the safety and efficacy of the drug, the Therapeutics Product Directorate (“TPD”) of Health Canada also considers the acceptability of the drug name.
Aug 29, 2003
Court of Appeal Further Addresses Patent Listing Issues
In two recent decisions, the Federal Court of Appeal has further clarified the thresholds for listing patents on the Patent Register maintained by the Minister of Health pursuant to the Patented Medicines (Notice of Compliance) Regulations (“Regulations”). In both cases, the Court of Appeal found the patents to be ineligible for listing.
Aug 01, 2003
A Review of Decisions Addressing Allegations of Invalidity based on Anticipation under the Patented Medicines (Notice of Compliance) Regulations
A series of recent summary proceedings under the NOC Regulations have generated a flurry of decisions in the Federal Court applying the doctrine of anticipation. This article reviews five such cases.
Jul 04, 2003
Supreme Court Grants Leave in Schmeiser Case
The Supreme Court of Canada will hear an appeal taken by Percy Schmeiser from the decision of the Federal Court of Appeal in Monsanto Canada Inc. v. Schmeiser, concerning infringement of plant biotechnology patents.
Jun 26, 2003
Patent Litigation -- Markman Comes to Canada
The practice of moving claim construction into a separate hearing may have been introduced to Canadian patent litigation.
Jun 26, 2003
Update on Actions for Recovery of Losses Under Notice of Compliance Regulations
May 30, 2003
Supreme Court of Canada Determines that the Harvard Mouse is Not Patentable
May 15, 2003
Federal Court Further Clarifies Thresholds for Patent Listing
Three recent Court decisions serve to provide guidance to pharmaceutical patentees with respect to threshold requirements regarding the eligibility of patents for listing on the Patent Register under the NOC Regulations.
May 05, 2003
Supreme Court Rejects Leave Applications Related to Claims For Use of the Medicine Under the Patented Medicines (Notice of Compliance) Regulations
The Supreme Court of Canada's refusal to grant leave to appeal from two Federal Court of Appeal decisions has left the issue of infringement based on patient use open to further arguments.
Apr 01, 2003
Federal Court of Appeal Interprets "small entity" Status for Canadian Patents and Applications
Discussion of the recent 'Dutch Industries' decision, issued by the Federal Court of Appeal on March 7. At issue was the effect of an applicant's improper payment of reduced government fees, as a "small entity".
Mar 13, 2003
Court of Appeal Raises the Bar for Registrability of Trade-marks for Pharmaceutical Appearance
Recent Federal Court of Appeal decisions will have a negative impact on the ability of pharmaceutical companies to obtain trade-mark protection for the appearance of their products.
Mar 01, 2003
International Patent Applications -- Sequence Listing Requirements on Entry into the National Phase in Canada
Discussion of the impact of Sequence Listing Requirements on Canadian patent application procedures.
Feb 21, 2003
"Product-Specific Patent List" Does Not Require That Commercial Formulation Embody Patented Invention
The Federal Court of Appeal has determined that a patent can be listed on the patent register, even if the patentee's commercial formulation does not make use of the patented invention.
Feb 01, 2003
Supreme Court of Canada Finds Higher Life Forms Unpatentable
Discussion and analysis of the Supreme Court of Canada's recent 'Harvard Mouse' decision.
Jan 01, 2003
Supreme Court of Canada Reaffirms the Doctrine of Sound Prediction in Canadian Patent Law
Comment and analysis regarding the December 5, 2002 Supreme Court of Canada decision in Apotex Inc. v. Wellcome Foundation Ltd., which focused on the doctrine of sound prediction in the patent application process.
Dec 06, 2002
Supreme Court of Canada Disallows Patenting of Higher Life Forms
Comment and analysis regarding the December 5, 2002 Supreme Court of Canada decision denying patent protection to higher life forms.
Dec 06, 2002
Health Canada Seeks Representations On Patent Eligibility Under the NOC Regulations
Therapeutic Products Directorate requests representations on an issue relating to the eligibility of patents for listing on the Patent Register under the Notice of Compliance Regulations.
Dec 01, 2002
FCA Delays Registration of AstraZeneca's Trade-marks for the Appearance of its Plendil (Felodipine) 5 and 10 mg Tablets
A recent Federal Court of Appeal decision represents another setback in the attempts of the brand-name industry to obtain trade-mark registration for the arbitrary features of appearance of prescription pharmaceuticals.
Nov 01, 2002
Failure by Generic to Disclose Product Samples Results in Prohibition Order
The decision of the Federal Court, Trial Division decision in AB Hassle v. Apotex Inc. has reinforced the importance of product samples as evidence in infringement suits.
Oct 28, 2002
Life Form Patents -- The Schmeiser Case
Comment and analysis regarding the September 4, 2002 Federal Court of Appeal decision in Percy Schmeiser and Schmeiser Enterprises Ltd. v. Monsanto Canada Inc. and Monsanto Company, concerning infringement of plant biotechnology patents.
Oct 28, 2002
Ontario Court of Appeal Finds Trade-mark Registration a Complete Defence in Passing Off Action
The Court's recent decision in Molson Canada v. Oland Breweries Limited has recognized an important reason to register trade-marks in Canada.
Oct 28, 2002
Trade-marks: Functional Trade Dress Not Protectable
Discussion of the Federal Court of Canada, Trial Division's, recent ruling on a passing off case based on the trade dress of the basic LEGO block.
Oct 28, 2002
Presumption of Infringement Under Notice of Compliance Regulations is Rebutted in the Absence of Any Evidence
The Federal Court, Trial Division has found that the presumption of infringement of process dependent product claims under the NOC Regulations can be displaced by a Notice of Allegation and detailed statement that supports non-infringement.
Oct 01, 2002
AstraZeneca Initiates Action for Infringement of Copyright in LOSEC Product Monographs
This action, if it proceeds, will likely be the first in Canada by a pharmaceutical manufacturer asserting copyright infringement of a product monograph.
Sep 01, 2002
Infringement by Patients is Relevant Under Patented Medicines (Notice of Compliance) Regulations
A recent Federal Court of Appeal decision confirms that infringement by patients is relevant to whether or not a generic's allegation of non-infringement of a claim for the use of a medicine under the NOC Regulations is justified.
Aug 01, 2002
Allegation of Invalidity for Paroxetine Formulation Patent Justified
A recent Federal Court of Appeal decision under the NOC Regulations has upheld a Trial Division decision ruling that an allegation of invalidity was justified on the basis of anticipation.
Jul 01, 2002
Canadian Domain Name Dispute Resolution Policy Now In Force
With the recent implementation of the Domain Name Dispute Resolution Policy for dot-ca domain names, owners of Canadian trade-marks now have available to them a mechanism for disputing the registration of confusingly similar dot-ca domain names that is as quick and inexpensive as the mechanism under ICANN's Uniform Dispute Resolution Policy (UDRP) for disputing the registration of dot-com domain names.
Jun 28, 2002
Canadian Skirmish in the Copyright War Leads to a Split Decision
The Supreme Court of Canada's recent decision in Théberge v. Galerie d'Art du Petit Champlain inc. may have introduced a new test for copyright infringement in Canada.
Jun 28, 2002
Federal Court of Canada Grants Order Permitting Seizure of Defendant's Goods Before Trial in Copyright Action
The Federal Court (Trial Division)'s use of a recent addition to the Copyright Act in Diamant Toys Ltd. v. Jouets Bo-Jeux Toys Inc. in ordering allegedly infringing goods to be seized prior to trial may signal a significant advance in copyright owners' ongoing war against infringement of their works in Canadian court proceedings.
Jun 28, 2002
Changes to National Phase Entry Under Chapter I in Canada
Recent amendments to the Canadian Patent Rules, which came into effect on April 1, 2002, affect the due date for National Phase entry under Chapter I of the PCT.
Jun 28, 2002
Patenting Higher Life Forms -- Canadian Biotechnology Advisory Committee Releases Report
Discussion of the potential impact on Canadian patent practice of the governmental committee's recommendations.
Jun 25, 2002
Reference on Patent Listing Quashed -- Appeals Pending
Report on a recent Federal Court, Trial Division decision quashing a reference initiated by the Minister of Health regarding the eligibility of a patent for listing on the patent register.
Jun 01, 2002
Intervener Status Granted in Reference Under NOC Regulations
The Court's answer to the Minister of Health's question is expected to have a significant impact on the eligibility of patents for registration on the patent register, and the scope of protection accorded to pharmaceutical patentees by the NOC Regulations.
May 01, 2002
Can Clinical Trials Constitute 'Use' of a Trade-mark?
When seeking to register a pharmaceutical trade-mark, a question that occasionally arises is whether use of the trade-mark in clinical trials satisfies the definition of "use" in the Canadian Trade-marks Act.
Apr 08, 2002
Minister Seeks Court's Assistance in Interpreting Notice of Compliance Regulations
The decision on this issue will have significant implications for the ability of innovator companies to use the NOC Regulations to assist in preventing patent infringement.
Mar 01, 2002
Filing Business Method Patent Applications in Canada
Discussion of the advisability of filing patent applications in Canada for business methods, notwithstanding the current position taken by the Canadian Patent Office that business methods are not patentable.
Feb 28, 2002
A Comparison of the Canadian and U.S. Patent Systems
While the patent laws of Canada bear many similarities to those in the United States, there are also important differences, such that the outcome of a fact scenario in Canada can be very different from the outcome of the same fact scenario in the U.S. This discussion highlights some of the more important of these differences.
Feb 28, 2002
International Patent Application Deadlines Extended
A recent rule change under the PCT will facilitate the extension of the Chapter I national phase entry deadline.
Feb 28, 2002
Who's on First?
A recent Federal Court of Canada decision, has clarified the important issue of what level of prior use is required to invalidate a confusing trade-mark registration.
Feb 28, 2002
The Importance of the Timely Filing of Accurate Patent Lists
Pharmaceutical patentees must ensure that patent lists comply with the strict requirements of the NOC Regulations in order to avail themselves of the corresponding benefits.
Jan 01, 2002
NOC Regulations Limited to Infringement by Generics
In a recently released decision, the Federal Court-Trial Division has ruled that the NOC Regulations only apply to infringement by a generic drug manufacturer.
Dec 01, 2001
Court of Appeal Addresses Registrability of Trade-marks for Pharmaceutical Appearance
Nov 01, 2001
The Descriptive Trade-mark
Oct 28, 2001
Draft Canadian Domain Name Dispute Resolution Policy Released
The Canadian Internet Registration Authority (CIRA), which administers Canada's .ca top-level domain, has released for public comment a draft of its domain name dispute resolution policy that it expects to implement by the end of 2001.
Oct 28, 2001
Trans-Border Web Site Advertising and Canada's Trade-marks Act
The Ontario Court of Appeal's recent decision in Pro-C Limited v. Computer City, Inc., the Ontario Court of Appeal has rendered an important judgment that should be of particular interest to non-Canadian companies advertising goods on the Internet.
Oct 28, 2001
The .name Game
The recent launch of the .NAME top-level domain will be of interest to trade-mark owners that have rights to personal names including those of fictional characters.
Oct 28, 2001
Registrability of Trade-marks for Appearance of Pharmaceuticals: Where are we now?
Canadian law concerning the distinctiveness of the appearance of pharmaceuticals remains unsettled as demonstrated by two recent decisions by the Trade-marks Opposition Board.
Oct 01, 2001
Apotex Launches First Actions for Recovery of Losses Under Patented Medicines (Notice of Compliance) Regulations
Generic manufacturer Apotex Inc has become the first to launch an action for recovery of damages or profits under section 8 of the NOC Regulations.
Sep 01, 2001
Patent Act Amendments Imminent
Changes will amend the Canadian Patent Act to give effect to two recent World Trade Organization decisions, the first concerning the so-called "stockpiling" exception to infringement under the Act, and the second concerning the term of patents based on applications filed in Canada before October 1, 1989.
Jun 28, 2001
Patenting Business Methods in Canada
Discussion of the possible means of protecting business methods in Canada, particularly for those methods relating to e-commerce initiatives.
Jun 28, 2001
Unauthorized Planting Constitutes Patent Infringement
Discussion of the recent Canadian Federal Court (Trial Division)'s decision in Monsanto Canada Inc. and Monsanto Company v. Percy Schmeiser and Schmeiser Enterprises Ltd.
Jun 28, 2001
B.C. Electronic Transactions Act Now in Force
Pursuant to the new Act, electronic signatures and electronic documents have the same legal weight as paper signatures and documents in British Columbia.
Jun 28, 2001
Article 37(1)(c) of the Trade-mark Act and Unitel
May 18, 2001
Patent Term Extension Bill Tabled in the Canadian Senate
The bill will bring the patent term provisions of the Canadian Patent Act into compliance with Canada's obligations under TRIPs.
Feb 28, 2001
Recent Decisions From the World Trade Organization
Discussion of the impact of two recent WTO decisions in regard to disputes concerning allegations that Canada had not complied with its obligations under the TRIPs Agreement.
Jun 28, 2000
Federal Court Of Appeal Upholds Validity Of NOC Regulations
Federal Court of Appeal upholds the decision rejecting an argument that the NOC Regulations went beyond what was authorized by the Patent Act.
Jun 28, 2000
Canadian Competition Bureau Releases Intellectual Property Enforcement Guidelines Part II
New guidelines also extend to IP protection provided by way of the common law and the Quebec Civil Code, including trade secrets and unregistered trade-marks.
Jun 28, 2000
Update on .ca Domain Name Reform
Under the new system, which is expected to be in place by the fall of 2000, .ca domain names will be issued on a first-come, first-served basis.
Feb 28, 2000
