IP Connections

First-to-file comes to America: What innovative Canadian companies should know

On March 16, 2013, the U.S. patent system changes from a first-to-invent system to a first-to-file system. Innovative Canadian companies seeking U.S. patents should be aware of the implications of this fundamental change.

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Intellectual property and misleading advertising in Canada

The legal questions behind misleading advertising raise unique issues in many areas of law, including intellectual property. To comply with the Canadian regime governing advertising and marketing laws, businesses must evaluate their marketing and advertising strategies from a perspective that goes beyond the provisions of the Competition Act and include considerations under various intellectual property statutes.

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U.S. Patent Office delays may put your patience to the test

Patent pendency in the United States has increased steadily since 2000, in large part because of the increasing complexity and volume of patent applications. Increases in the number of examiners and the rate of allowance have not been sufficient to offset the higher demands caused by these factors. Applicants seeking U.S. patent protection should not be surprised by delays in patent pendency. If these delays are unacceptable, applicants may consider various programs offered by the USPTO to expedite examination of applications.

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The changing face of computer software trademark registrations

When computers first entered the marketplace, the terms "computer hardware" and "computer software" were considered to be sufficiently specific to define the products associated with a mark. While "computer hardware" is still considered to be an acceptable description, computer software has evolved considerably and there are now so many types and functions provided by software that more details are required when seeking a registration for a mark.

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Used or not used, that is the question — why is it important to get it right?

This article focusses on the fundamental differences between "use" and "proposed use" as bases for filing an application to register a trademark in Canada and will emphasize the importance of determining the correct basis to use when seeking to protect your trademark rights.

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RECENT DEVELOPMENTS IN BRIEF

Combating Counterfeit Products Act introduced in Canada
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New examination guidelines released in Canada for computer-related subject matter
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San Miguel's trademark for beer is a horse of a different colour
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Bloor Street Boxing & Fitness attempts to exercise its IP rights against Bloor Fitness 24/7
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LAWYERS WITHOUT BORDERS mark expunged on account of poor record-keeping
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RANKINGS AND RECOGNITIONS

Smart & Biggar/ Fetherstonhaugh repeats Top Tier ranking in Managing Intellectual Property's World IP Survey
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François Guay and Steven B. Garland named IP Litigators of the Year in the category of Trademarks by Benchmark Canada
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Smart & Biggar/ Fetherstonhaugh repeats gold band status in World Trademark Review 1000
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Three Smart & Biggar partners featured in the 2012 Lexpert® Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada
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To offer your feedback on this newsletter or any of its articles, please contact the editors:

Keltie Sim Luft

Brigide Mattar

Peter A. Elyjiw

DISCLAIMER

The preceding is intended as a timely update on Canadian intellectual property law. To request a copy of any decision, paper or legislative document, or for more detailed information or to make suggestions, kindly contact an author of the relevant article or Keltie Sim Luft. The contents of this newsletter are informational only and do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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