Federal Court Finds CIPO Examination Practice Out of Line with Supreme Court Precedents

 

The Federal Court in a recent decision found a wide-reaching examination practice respecting purposive construction that was introduced by The Canadian Intellectual Property Office (CIPO) 7 years ago, to be against principles of purposive construction set forth by the Supreme Court and damaging to the prosecution of patents in several technology areas.

CIPO issued practice notice PN2013-02 entitled “Examination Practice Respecting Purposive Construction” on March 8, 2013 that instructed Examiners to frame their purposive construction of the claims through a problem and solution lens. In particular, it was CIPO’s position in this practice notice that “identification of the problem and the solution provided by the invention informs the purposive construction of the claims” and that only those elements that solved the identified problem were essential.

A second practice notice (PN2013-03) entitled Examination Practice Respecting Computer-Implemented Inventions was also issued that detailed using the problem and solution framed “purposive construction” for the examination of applications directed to computer implemented methods.

Two subsequent practice notices (PN2015-01 and PN2015-02) were also issued that detailed using the problem and solution framed “purposive construction” for the examination of applications directed to medical uses and medical diagnostic methods.

These CIPO practices significantly and negatively impacted prosecution in many areas of technology including computer implement methods, personalized medicine, diagnostics and biotechnology. In fact, to date, there have been 31 Patent Appeal Board decisions that referenced practice notice PN2013-02, ten of which included statutory subject matter objections. Of these ten, seven were refused outright.

There were also 84 Patent Appeal Board decisions that referenced practice notice PN2013-03 and 8 Patent Appeal Board decisions that reference practice notice PN2015-01.

The Federal Court in the recent Choueifaty v. Canada (Attorney General) decision (2020 FC 837) turned their eyes to CIPO’s practice of using the problem and the solution approach to inform purposive construction of the claims. This decision specifically reviewed Patent Appeal Board decision 1478 that specifically referenced PN 2013-03. Although Choueifaty v. Canada does not specifically reference the practice notices, the Court referenced the Manual of Patent of Practice 13.05.02 which incorporated the content of practice notice PN2013-02. The Court found:

[31] It is evident on a reading of the MOPOP that the Commissioner, notwithstanding stating that the patent claims are to be construed in a purposive manner, does not intend or direct patent examiners to follow the teachings of Free World Trust and Whirlpool. …

[37] The Appellant submits, and I agree, that using the problem-solution approach to claims construction is akin to using the “substance of the invention” approach discredited by the Supreme Court of Canada in Free World Trust at para 46. …

[40] For these reasons, I find that the Commissioner erred in determining the essential elements of the claimed invention by using the problem-solution approach, rather than the approach Whirlpool directs be used. (Emphasis added)

MBM welcomes this decision from the Federal Court that affirms our longstanding position that CIPO’s problem and solution framed “purposive construction” was inconsistent with the principles set forth by the Supreme Court of Canada.

For more information please contact:
Claire Palmer, Senior Patent Agent
T: 613.801.0450
E: cpalmer@mbm.com

Kay Palmer, Senior Patent Agent
T: 613.801.0452
E: kpalmer@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Supreme Court of Canada dismisses Apotex’s application for leave to appeal in non-infringing alternatives defence saga

 

For a non-infringing alternatives defence to be successful, each component of the test for the defence must be established.

In Apotex Inc. and Apotex Pharmachem Inc. v. ADIR and Servier Canada Inc. (F.C.) (Civil) (By Leave) the Supreme Court of Canada (“SCC”) dismissed an application for leave to appeal brought by Apotex Inc. and Apotex Pharmachem Inc. (collectively, “Apotex”).

At the trial level, Apotex had raised as a defence the availability of non-infringing perindopril from sources outside of Canada, but the Federal Court had determined that Apotex had failed to establish one component of the defence. As a result, Apotex was not eligible for a reduction in the amount of profits it was required to disgorge. This decision was upheld by the Federal Court of Appeal.

Following the same line of reasoning, the SCC dismissed the application with costs.

For more information please contact:

Osman Ismaili, Patent Associate
T: 613.801.1054
E: oismaili@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Common Patent Misconceptions - Myth #4 - Disclosures

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #4: Even if I publicly disclose my invention, I can still get a patent application filed by the 12-month mark from the disclosure, without any repercussions.

This myth is only partly true with an important caveat. Yes, Canada, the US, and a few other countries offer a special type of grace period for inventors who have made a public disclosure of their invention. The inventors have until 12 months from the date of their public disclosure to file for patent protection within each of those countries. “Within each of those countries” is very important to remember, which means that if an invention is publicly disclosed anywhere in the world and protection is intended to be sought, for example, in both Canada and the US, then both a Canadian national filing and a US national filing must take place before the 12-month period expires.

Public disclosure is where you have disclosed your invention to anyone who is not bound by a non-disclosure or confidentiality agreement to keep your invention a secret. Does this mean that there is still a risk in publicly disclosing an invention before officially filing your patent? Yes, there is a risk that you might not get your patent in some major jurisdictions that do not offer the one-year grace period from the date of public disclosure.

In fact, while only a handful of jurisdictions allow for this one-year grace period, most other jurisdictions around the world do not, and require “absolute novelty” (which essentially means there must not be any sort of public disclosure before the filing date of the application). “Absolute novelty” requiring countries include Europe and Asia, two massive markets which a company certainly may not want to miss out on, depending on the type of invention and their market expansion goals.

It is also very important to note that the grace period works a little differently in Canada compared to the US, because of US provisional patent applications. In the US, if an invention was publicly disclosed on January 1, 2019, then a US national filing must occur by January 1, 2020 (1 year after). This first US filing could be a provisional application, which is essentially a temporary, informal application. Subsequently, one more year after that, by January 1, 2021, the US provisional application needs to be converted to a regular, full US application.

Meanwhile, in Canada, there is no equivalent to a US provisional application and as a result, only full applications can be filed in Canada and must be filed within the 12-months period from the date of disclosure. This means that, if an invention was disclosed (anywhere in the world) on January 1, 2019, and if a US provisional patent application was filed on December 31, 2019, a full Canadian application must still be filed by January 1, 2020 (only 1 year after disclosure). In Canada, a formal Canadian application is the only national application that can be filed once a public disclosure has been made.

You may be thinking that the US system essentially allows applicants to file a US formal application almost two years after a public disclosure, and the Canadian system provides only one year for a Canadian application – and you are absolutely correct. It is important to remember this significant difference between US and Canadian patent law.

While a US provisional application could still be used as a priority document for a later Canadian filing, the Canadian application must be filed within 12 months from the date of public disclosure.

If you have an idea that you feel may be patentable and you are considering disclosing it in any way, please feel free to reach out to MBM for a free consultation.

For more information please contact:

Osman Ismaili, Patent Associate
T: 613.801.1054
E: oismaili@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Grey Market Goods – Coty and Costco Battle it Out in Québec

The Québec Court refuses to force Costco to disclose where it obtained genuine goods but offers a practical solution to track down the source of the goods.

Grey marketing typically consists of a retailer purchasing genuine branded products abroad for less than offered to them from a local distributor. Grey marketing is generally problematic for international brand owners, who may end up competing against their own products thereby losing control of how the brand is represented to customers.

On June 22, 2020, the Québec Superior Court, in Coty Inc. c. Costco Wholesale Canada Ltd.[1], issued a decision regarding Coty’s request for a Norwich Order asking the Court to compel Costco to disclose the identity of the supplier who sold it genuine Coty cosmetic products.

Norwich Orders are an extraordinary pre-trial discovery measure that allows the holder of a right to compel an innocent third party to disclose the identity of wrongdoers in order to commence legal proceedings against them.

Coty argued that Costco had obtained Coty products from distributors who had breached their exclusive distribution agreements and as such, Costco ought to reveal the identity of these distributors. However, Costco answered that the doctrine of exhaustion should prevail in that the intellectual property rights (trademark/copyright) embodied in a tangible object are “exhausted” after it undergoes its first sale. The Court agreed with Costco and further noted that Costco’s expectation of privacy should be upheld and there was no evidence that Costco had purchased illegal goods.

The Court refused to issue the Norwich Order. Intriguingly, the Court offered a solution to discover the identity of the alleged foreign distributor(s) who were purported to be in violation of selling outside their territorial limits by implementing a tracking system to determine the origin of the products sold by Costco instead of seeking to compel the disclosure of this information.

In conclusion, this decision further exemplifies the degree to which Norwich Orders are extraordinary measures that should only be granted when there is sufficient evidence to substantiate allegations of wrongdoing.

 

For more information please contact:
Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613.801.1099
E: smiller@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation

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[1] 2020 QCCS 1898.