Humanized Antibodies: CIPO Picks Up the Pace
By Claire Palmer and Jessica Sudbury, September 15th, 2016
Keeping pace with science and technology that evolves at lightning speed is a challenge for any government institution. The Canadian Intellectual Property Office (CIPO) has a lot of catching up to do, but is not out of the race just yet. Arcane patent office examination practices grounded in habit can never justifiably replace a proper fact-driven determination of patentability. Commissioner’s Decision 1398 (CD 1398, issued on May 5, 2016) reminds us that CIPO is not completely asleep behind the wheel and shows that the applicant who fights to the bitter end can win it all.
At issue in CD 1398 were a set of dependent claims (5, 10, 15 and 20) in patent application 2,451,493 (published on January 3, 2003) over a genus of humanized murine monoclonal antibodies directed against a human glypican-3 epitope. The epitope sequence was adequately disclosed; however the application did not disclose the corresponding complementarity determining regions (CDRs) for the humanized embodiments, nor any evidence that such humanized embodiments were actually made from the process described. In the Final Action issued by the Examiner on February 4, 2014, these dependent claims were found to be incompliant with section 84 of the Patent Rules for lack of support in the description, and that the specification was in violation of subsection 27(3) of the Patent Act for lack of adequate enablement.
The Examiner largely grounded rejection of these claims based on a previous decision issued by the Commissioner concerning humanized antibodies (CD 1296, Re: Sloan-Kettering Institute for Cancer Research), finding that it created a bright-line rule requiring disclosure of CDR amino acid sequences to fulfill support requirements in the absence of evidence pointing to an actual carrying-out of the invention in the application. This, despite the fact that adequate support for generic monoclonal antibodies has generally been found upon disclosure of a fully characterized antigen capable of binding the antibody claimed (e.g., see the CD 1302 Immunex decision and MOPOP directive 17.08.01b).
Since the CD 1296 Sloan-Kettering decision was issued in 2009, similar reasoning has been repeatedly applied to justify rejections of similarly-supported claims over humanized antibodies by CIPO examiners in disregard of submitted evidence. The Patent Appeal Board noticed this problem when it recommended an upholding of the dependent claims for the humanized genus of anti-glypican-3 antibodies to the Commissioner in CD 1398.
The Board identified several problems with the Examiner’s line of reasoning in the 2014 Final Action. First, it commented that no specific guidance concerning humanized antibodies existed at the time in Canadian jurisprudence (paragraph 23). Secondly, the Board noted that “the enablement requirement of paragraph 27(3)(b) of the Patent Act entails fact-specific determinations that take into account the common general knowledge (CGK) and the ordinary skills possessed by the person of ordinary skill in the art (POSITA) at the publication date of the patent application,” and that the relevant CGK had significantly evolved over the 11 years since (paragraph 35). Nonetheless, the evidence put before the Board was convincing to establish that antibody humanization techniques were “routine” in 2003 (paragraph 42). Thus, the relevant POSITA would have been adequately enabled to carry out the invention as described at the publication date (paragraph 44). Finally, the Board reasoned that the CD 1296 Sloan-Kettering decision “cannot impose a rigid rule” applicable to variable factual situations and that it had limited applicability to the present case (paragraph 39). Accordingly, the Board did not find that disclosure of the CDRs for humanized antibodies was a requirement to comply with the Patent Act.
While the institutional checks and balances on display in the CD 1398 decision may bring comfort to some, the decision may also serve as a reminder to others that baseless CIPO examination practices can present a serious obstacle to inventors seeking otherwise justified ownership rights over rapidly-developing technology. Pushing through these barriers with a well-supported patent application can clearly be worth the trouble and expense, however. Examiners should always bear in mind that the relevant CGK “undergoes continuous evolution and growth” (CD 1398, paragraph 36) and that only the CGK that was available to the relevant POSITA at the publication date can be considered in light of Patent Act requirements. An evidence-driven analysis of application claims in in light of the CGK at time of filing would catch a situation where the relevant POSITA had become practiced enough in brand-new technologies to not require inventiveness in carrying out an invention as described. Considerations, such as the current relevant CGK or previous Commissioner decisions analyzing similar patent applications, have no justifiable bearing on an examiner’s assessment of a patent application.
Thankfully, it appears that CIPO retains self-awareness and recognizes when it is stuck in a rut spinning its wheels. While consistency in examination practices may lead to increased certainty over time to the benefit of the public, our innovation institutions cannot carry out mandates without leaving room for flexibility and growth in internal procedures. Further, unlike courts, tribunals in Canada are not bound by stare decisis. Therefore, CIPO is not held to apply any body of rules except those found within case law, the Patent Act or the Patent Rules. Previous Commissioner’s Decisions are not determinative, and the public is entitled to decisions issued by CIPO that are assessed according to the relevant factual matrix in disregard of existing examination practices. Hopefully, the CD 1398 decision reflects a new lasting habit embarked on by CIPO to continually oversee and make internal adjustments to ensure it stands a fighting chance of keeping pace with our swift innovators.
For more information please contact:
 See: http://www.ic.gc.ca/opic-cipo/cpd/eng/patent/2451493/summary.html?query=2451493&;start=1&num=50&type=basic_search
Voltage Pictures Strikes Again: The Privacy Battle Between ISPs and Copyright Holders
By Scott Miller and Lauren Blaiwais, August 18th, 2016
The standards for when an Internet Service Provider (ISP) is required to deliver the names and addresses of individuals suspected of unauthorized downloading of copyright material to copyright holders was set down in the 2014 Federal Court of Canada decision of Voltage Pictures LLC v John Doe and Jane Doe  (in this case, the copyright materials were movies). In Voltage, the Court was conscious of both the need to safeguard an individual’s right to privacy, as well as the need to protect the rights of copyright holders (see here).
In July 2016, Voltage Pictures proposed a “reverse” class action alleging copyright infringement and claiming declaratory and injunctive relief against a Respondent whose identity is unknown. This is a unique approach to suing alleged file sharers en masse, a practice resembling that of ‘Copyright Trolls’ (a rights holder that enforces copyright it owns to profit from quick settlements and litigation). It is an opportunistic practice, which Courts generally frown upon.
Voltage, in requesting that the matter be certified as a “reverse” class action, moved to compel Rogers Communications Inc. to disclose “any and all contact and personal information of a Rogers customer associated with an Internet protocol address at the various times and dates” in order to determine who the representative defendant would be. Voltage requested that it not be required to pay any fees and disbursements to Rogers for its compliance with the disclosure order.
Rogers, however, requested reasonable compensation for disclosing the information. Voltage argued that the “notice and notice” provisions of the Copyright Act bar Rogers from receiving any compensation and claimed that, even if Rogers were entitled to compensation, it should only be 50 cents per alleged infringer.
Sections 41.25 and 41.26 of the Copyright Act create the “notice and notice” regime, which is a mechanism by which copyright owners may send a notice of claimed infringement through an ISP to an alleged infringer. Under these provisions, Rogers (the ISP) would be required to forward Voltage’s (the copyright owner) notice of alleged infringement to the Internet protocol address and “retain records to allow the [alleged infringer’s] identity to be determined for a specified time depending on whether the copyright owner has or has not commenced proceedings relating to the claimed infringement.”
Rogers was compelled by the Court to disclose only the name and address of the alleged infringer and Voltage was ordered to pay Rogers $100 per hour, plus HST, for its time spent assembling the information for Voltage. The fee was mandated to be paid in full prior to the disclosure of the contact information. Rogers was also awarded its costs on the motion.
In order to protect the rights of copyright holders while preserving individuals’ privacy rights, the Court instituted certain safeguards. The information released by Rogers can only be used by Voltage in connection with the specific claims in the proceeding, and it must remain confidential and never be disclosed to any other parties or the general public, by making or issuing a statement to the media, until the identity of the alleged infringer becomes part of the public record.
Modern technology has opened up many different means of communication, but it cannot eradicate the personal property rights of individuals. Privacy concerns are important; however, they “must yield to public concerns for the protection of intellectual property rights in situations where infringement threatens to erode those rights.” 
For more information please contact:
Canada Just Became a More Attractive Jurisdiction to Litigate (2)
By Scott Miller, June 29th, 2015
On June 24, 2015, the Chief Justice of the Federal Court issued a practice notice outlining new procedures to streamline the time and cost of complex litigation, as outlined below:
- There will be a “short notice” wait list for earlier trial dates for those who wish to participate;
- Documentary discovery will be reduced and proportionate to the complexity of the action. A party will only be permitted up to 1 day of oral discovery per week of trial, or portion thereof, to a maximum of 4 days of oral discovery;
- No questions during discovery will be allowed to be taken under advisement. Questions can only be objected to with significant cost sanctions for unreasonable objections. Moreover, refusal motions will be permitted only until discoveries are completed and will be restricted to 1 hour per day of discovery;
- Technology primers may be provided before trial to expedite hearings; and
- All demonstrative evidence must be exchanged at least 60 days before trial;
Canada’s streamlined Federal Court procedural rules may be used as a tool to encourage both Canadian and global settlements. Likewise, if litigation is necessary, Canada’s Federal Court approach provides a speedy and cost effective forum to determine intellectual property rights.
For more information about this topic please contact:
Scott Miller, Partner, Head of the Litigation Department
Important milestone in the Canadian IP law - we finally have privilege!
By Randy Marusyk, July 12th, 2016
On June 24, 2016, an important milestone was achieved in the Canadian IP law due to the enforcement of section 16.1 of the Patent Act and section 51.13 of the Trademarks Act. Going forward, confidential communications between Canadian patent/trademark agents and their clients are protected under the statutory privilege in the same way as the communication between lawyers and clients is privileged. An agent cannot be required to disclose or give testimony on the communication in a civil, criminal or administrative action or proceeding.
The communication between patent/trademark agents and their clients will be privileged if the following requirements are met:
- The communication is between clients (or the client’s behalf) and their registered patent agents, trademark agents, or the registered agents’ behalf.
- The purpose of the communication is seeking or giving advice with respect to any matter relating to the protection of an invention or a trademark (including geographical indication or mark referred to as part of paragraph 9 of the Trademark Act).
- The communication is intended to be confidential.
The client can expressly or implicitly waive the privilege between the agent and himself or herself, and the provisions protects the communications whether agents are lawyers or not. It is also worth noting that the privilege provisions also apply to the communications between clients and their agents who are registered as patent or trademark agents that are privileged under the law of another country and the three requirements above are met.
For more information about privilege provisions in Canada please contact:
Randy Marusyk, Co-managing Partner
Leonardo Da Vinci Is Still Alive!
By Scott Miller, February 9th, 2016
Federal Court File Nos. T-1104-15 and T-2125-15
Scott Miller and the litigation team at MBM Intellectual Property Law have successfully joined its Italian wine making client, Dallevigne S.p.A. (Dallevigne), to an appeal of a decision of the Canadian Trademark Office expunging the trademark DA VINCI (TMA303667) for non-use pursuant to s.45 of the Trademarks Act. The party who originally requested the s.45 confirmed it will not participate in the appeal of the trademark office decision to the Federal Court. However, the maintenance of the s.45 decision is relevant to Dallevigne because it had filed a trademark application, CANTINE LEONARDO DA VINCI & Design No. 1561950 (CANTINE) which was refused by the Trademark Opposition Board (TMOB) solely because, at the time of the TMOB decision, the DA VINCI mark was still on the register. Dallevigne has appealed the TMOB decision refusing the registration of the CANTINE trademark.
The Federal Court correctly found that Dallevigne (1) will be directly affected by the s.45 appeal decision and (2) will suffer prejudice if it was not allowed to be joined to the s.45 appeal because Constellation Brands Quebec Inc., the owner of the DA VINCI registration is continuing to assert the impugned trademark against the CANTINE trademark, without the opportunity for Dallevigne, or any other party, to challenge the registration being asserted against Dallevigne.
The Federal Court also correctly stayed the appeal of the CANTINE trademark pending the outcome of the s.45 appeal recognizing that proving irreparable harm is not a pre-condition to the granting of a stay where the Federal Court is effectually enjoining itself as opposed to exercising power over an administrative body. In such situations, a stay will be granted if the Court believes a party will not be unfairly prejudiced and it’s in the interest of justice to treat the request for a stay analogous to a scheduling or an adjournment request.
In all, it is possible to have a party joined in one proceeding and at the same time stay another proceeding when fairness, common sense and the interest of justice are considered.
For more information about this topic please contact:
Scott Miller, Partner, Head of the Litigation Department
Trademarks in Canada and the Madrid Protocol
By Randy Marusyk, April 30th, 2015
The Madrid Protocol is a trademark treaty that has established a system for the international registration of trademarks, having 92 member countries including the United States and the European Union. It makes it possible to file national trademark applications in one language, and also to simultaneously renew and record assignments or address changes for registrations in multiple jurisdictions. This filing procedure may potentially provide significant cost savings for an applicant who would like to file a global trademark.
Canada has begun implementation of the Madrid Protocol when Bill C-31, the Economic Action Plan 2014, No. 1, which recently received Royal Assent. Although this legislation has been passed, the Trade-mark Regulations will need to be revised and proclaimed into force before the Madrid Protocol becomes law in Canada; it is expected this will happen in late 2015 or early 2016. Other practical implementations such as staff training, IT system updates, and clarification of the Canadian Intellectual Property Office’s (CIPO) role as an ‘Office of Origin’ may affect this timing.
There have been some concerns expressed as to the implementation of the Madrid Protocol in Canada. Practically, it will further burden an over-burdened system which may result in an increase of the prosecution timeline for domestic applications, in order to meet the strict time limits imposed by the protocol. The Courts may also need to adjust to higher volumes of litigation while looking for legal guidance in other jurisdictions. There are also concerns about the overly broad legislative amendments including the removal of trademark ‘use’ requirements at the time of registration. Such a change in the Canadian legislation may result in trademark squatting, that is, the registering of trademarks solely for the purpose of selling them.
For more information about this topic please contact:
Randy Marusyk, Partner
Federal Court of Appeal Confirms Use of Pop Culture to Demonstrate Fame of a Mark
TEQUILA CUERVO, S.A DE C.V. v. EMPRESSA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A., 2015 FCA 15
By Jonathan Roch, January 23rd, 2015
On January 21, 2015, the Federal Court of Appeal affirmed the Federal Court's decision of October 4, 2013 which refused Tequila Cuervo’s application for the mark LAZARO COHIBA in association with rum.
The Federal Court refused the trademark application for LAZARO COHIBA in association with the proposed use of rum on the basis that it was confusing with the registered COHIBA marks used in association with cigars and tobacco.
MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by relying upon references in widely distributed films (Hotel Rwanda, Bad Boys II and Into the Blue), television shows (Sex in the City and The Simpsons), music (including Jay-Z, Lil Wayne, P. Diddy and Busta Rhymes) and magazines (Cigar Aficionado).
Expert evidence was adduced to explain that the COHIBA references described above were more than the average product placement. Rather, the COHIBA references were a means of borrowing the credibility of the brand as a symbol of status, wealth, power, intrigue, luxury and mystery and of reflecting those qualities upon the characters of the pop culture references. Expert evidence also established that smokers are more likely consumers of alcohol products and that in the minds of smokers these products are linked. Finally, additional evidence further demonstrated an overlap in the alcohol and tobacco/cigar trades (LCBO and SAQ agency stores).
Federal Court of Appeal
In its appeal, Tequila Cuervo asserted, amongst other arguments, that the Federal Court’s determination that the COHIBA marks are iconic and/or famous ignored the Supreme Court principles for dealing with famous marks, adopted a new test to determine fame, and fundamentally changed the test for assessing a likelihood of confusion for famous marks. Moreover, they pleaded that the lower court erroneously treated the fame of the COHIBA marks as an overarching factor in the evaluation of the likelihood of confusion. The Court ruled that no errors had been committed and dismissed the appeal with costs.
This decision is significant as it is a positive acknowledgment by the Federal Court of Appeal that the notoriety of a brand may be established by references to the brand in popular culture. This case is an example of how trademark practitioners should not be afraid to creatively use the evidence at their disposal to advance their clients’ causes.
Jonathan Roch, Partner
Scott Miller, Partner
Protecting the Extraction Industry Through Protection of Intellectual Property
By Randy Marusyk, October 8th, 2014
Canada’s abounds with underground riches—the mining, quarrying, oil and gas sectors contributed $124.6 billion to Canada’s economy in 2012, but it faces big competition on the world stage. Staying relevant in the global market will be a key to Canada’s continued economic success. Canada can only stay relevant by continuing to innovate—we must establish ourselves as leaders in cutting edge mining innovation and technology.
The international agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is a critical tool in the protection of Canada’s innovation—it’s intellectual property. Through the TRIPS agreement, Canadian inventors can file their patents worldwide, and receive extended periods of protection, dating back to their Canadian filing date. Filing for a patent early gives the innovator protection not only in Canada, but in all of the 160 countries that are party to the TRIPS agreement.
Canada’s Patent Act is the legal instrument that rewards the first person to file for a patent. Innovators may sometimes feel like an idea ‘just isn’t ready yet’, but that should not prevent inventors from filing for a patent. The Patent Act’s three requirements for patentable technology are as follows: 1. the technology must be new; 2. the technology must be useful; 3. the technology cannot be an obvious permutation of an existing technology. Inventions do not have to be sold or even marketed to qualify for patents. Early filing is key to protecting Canada’s innovation.
Of equal importance to seeking early patent protection for mining technology is whether one has freedom to operate a given technology in Canada and abroad. The existence of patents owned by others can block a party from operating until they obtain a license under the patent. Worldwide patent databases are powerful tools that can tell a company if they have freedom to operate in any particular technological area.
Databases provide much more than a list of patent titles and owners. With these databases, intellectual property lawyers can explore, monitor and map the patent space for any given field. Visual maps, such as the one shown below, can display the areas within a sector that are crowded, or becoming crowded with patents. Knowing where patents are encroaching can help an innovator keep the space around hers or his technology covered by their own patents. Databases can also tell innovators and corporations whether their operating space is already patented, and whether they may require licenses from third parties. Finally, these patent mapping tools can help innovators identify the competitors’ presence in any given technological area.
Patent Density Map Showing Major Patents owned by Technology Resources Pty.
For more information about the benefit to your company on early filing and use of patent databases, contact Randy Marusyk, Managing Partner at MBM Intellectual Property Law at:
Exercise Caution When Choosing a Trademark – MBM Successfully Expunges The Athletic Club & Design Trademark and Prohibits its Use in Canada.
For Immediate Release, July 11, 2014
On July 9, 2014, Mr. Justice Russell of the Federal Court released his decision in Ottawa Athletic Club Inc. v. The Athletic Club Group Inc. (2014 FC 672).
In a proceeding commenced by Notice of Application (a matter where there is no viva voce evidence but rather affidavits and cross-examination occurring outside the Court), Mr. Justice Russell expunged The Athletic Club & Design trademark – registered February 22, 2005 which claimed use from 1997 – and granted a permanent prohibition (injunction) to prevent the use of the trademark and its common law equivalent.
The decision is 150 pages and provides a detailed synopsis of the law and evidence necessary for a determination of:
- when a composite trademark ( a trademark incorporating words and a design) will be found to be clearly descriptive of the character of the wares/services in association with which it is used;
- whether a trademark is distinctive;
- when any trademark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind of any wares/services;
- when a trademark is the name in any language of any wares/services in connection with which it is used;
- the effect of a disclaimer on questions relating to clearly descriptive, distinctiveness, and bona fide commercial usage;
- whether the 5 year limitation period to assert the ground of a confusing trademark in an expungement proceeding should be waived through imputed knowledge through an adverse interest that the person who adopted the registered trademark did so with knowledge of the previously used trademark; and
- when an affiant must disclose documents in connection with a cross-examination.
In obtaining the judgement MBM relied upon a variety of evidentiary sources including hundreds of newspaper articles, legislation and judicial decision citing the term ‘Athletic Club’, confirmation of third party use of the term ‘Athletic Club’, internet searches, corporate searches, trademark searches, cross examination, etc…
The decision will likely be a leading resource for trademark practitioners and those wanting to understand evidentiary requirements and the law in Canada relating to the subjects described above.
If you would like to learn more about the decision please do not hesitate to contact the lead lawyer on the case, Scott Miller or any other member of the MBM litigation team who assisted including Jonathan Roch or Jahangir Valiani.
Disparaging & Racist vs. Political Correctness – You Choose. And the Washington Redskins Thought the Battle on the Football Field Was Tough!
By Scott Miller, June 18, 2014
The National Football League team, the Washington Redskins lost a fight of Super Bowl proportions today before the U.S. Patent and Trademark Office. The team’s host of registered trademarks dating back to the 60’s were cancelled on the ground that they were disparaging on the date they were registered and as such, should never have been registered.
The ruling does not prevent the team from using the trademarks but means the team loses the benefits of a registered trademark including the ability to sue for trademark infringement. Not surprisingly, the team’s lawyers have already indicated that the decision will be appealed.
In Canada, the Washington Redskins trademark has been registered since 1980. Under the Canadian Trade-marks Act, a trademark which is “scandalous, obscene or immoral” at the date of registration may be held invalid. So the obvious question remains, would a disparaging trademark in the US be considered “scandalous, obscene or Immoral” in Canada? If challenged in Canada, would we be less, equally or more offended than our neighbours to the south?
Unlike in the US, if a mark in Canada is held “scandalous, obscene or immoral” it cannot be used in the country. The Trade-marks Act specifically indicates that such offensive marks cannot be ‘adopted’ which would thus prevent their use. This raises an interesting question if the U.S. Patent and Trademark Office decision is overturned on appeal but the same fight is engaged in Canada with the Canadian court’s ruling against the team. Would the NFL not televise games or sell merchandise in Canada? Perhaps those opposed to the Washington Redskins should think about using Canada to advance their fight.
In all, the appeal(s) in the US will likely dictate the fate of the Washington Redskin trademarks in Canada. However, there is a lesson in this not just for sports franchisees but for all trademark owners – choose your trademark’s carefully because your decisions might come back to haunt you years later.
For more information please contact:
Media Advisory: Crude Solutions Launches Patent Lawsuit Against MEG Energy
FOR IMMEDIATE RELEASE
April 30, 2014 – Crude Solutions Launches Patent Lawsuit Against MEG Energy
Crude Solutions Ltd. (CSL), a research and development firm for the oil and gas industry, has sued
MEG Energy Corp., accusing MEG of infringing CSL’s patent rights.
Crude Solutions Ltd. (CSL), an Edmonton based research and development firm
for the oil and gas industry focusing on steam-assisted gravity drainage (SAGD) extraction
techniques, has sued MEG Energy Corp. (MEG), accusing MEG of infringing CSL’s Canadian
Patent No. 2,800,746 with MEG’s RISER project and eMSAGP process.
The patent infringement lawsuit, filed on Tuesday, April 29, 2014, in the Federal Court of Canada,
states that CSL is the owner of patented technology relating to exploiting pressure gradients in
SAGD oil recovery operations. The lawsuit goes on to allege that MEG had explicit notice of the
proprietary nature of the technology within days of the patent being issued and had constructive
notice as of the publication of the patent in November 2012 and that MEG continues to make use of
its infringing processes in wanton and outrageous disregard of CSL’s rights. MEG’s alleged
infringing eMSAGP process has been and is being implemented in all phases of its Christina Lake
operations and MEG has indicated its intention to implement this process in all of its recovery
For further information please contact MBM’s litigation team, led by Scott Miller and Paul Sharpe,
who are representing CSL in this patent infringement action.
Scott Miller, Partner
Paul Sharpe, Partner
PMPRB’S INTERPRETATION OF “PATENTEE” OVERLY BROAD
By Claire & Kay Palmer, May28, 2014
Two recent Federal Court decisions considered the definition of a “patentee” in the context of the mandate of the Patented Medicines Prices Review Board (PMPRB).
Section 2 of the Patent Act states that a “patentee” means the person for the time being entitled to the benefit of a patent.
With respect to Patented Medicines, the English version of Section 79(1) of the Patent Act states that a “patentee”, in respect of an invention pertaining to a medicine, means the person for the time being entitled to the benefit of the patent for that invention and includes, where any other person is entitled to exercise any rights in relation to that patent other than under a licence continued by subsection 11(1) of the Patent Act Amendment Act, 1992, that other person in respect of those rights.
In both decisions, Mr. Justice O’Reilly determined that the PMPRB’s conclusion that two manufacturers of generic pharmaceuticals fell within the definition of “patentee” was unreasonable and thus the applications for judicial review of the PMPRB’s decisions were allowed.
Sandoz Canada Inc v. Canada (Attorney General), 2014 FC 501
The generic manufacture Sandoz Canada Inc is a wholly-owned subsidiary of Novartis Canada Inc, which in turn is a subsidiary of Novartis AG. Novartis AG is the owner of a number of relevant patents. Novartis AG provides authorization for Sandoz to enter the market for specific drugs when Novartis AG loses it’s the market exclusivity – i.e. once other generics have entered the market.
The PMBRB found that Sandoz, by virtue of its position as a subsidiary of Novartis, was a “patentee” and therefore its prices within the jurisdiction of the PMPRB. Mr. Justice O’Reilly noted that “Sandoz generally operates in a market where no one holds a monopoly, and no one can take undue advantage of a monopoly position by charging excessive prices.” Mr. Justice O’Reilly further stated that “Sandoz simply does not enjoy the special patent rights that inure to the benefit of the patent holder. Accordingly, Mr. Justice O’Reilly found that the PMPRB’s conclusion that Sandoz is a “patentee” was unreasonable and therefore the PMPRB “does not have jurisdiction to review prices at which Sandoz, a company holding no patents and no monopolies, sells medicines. “
Ratiopharm Inc. v. Canada (Attorney General), 2014 FC 502
The definition of “patentee” was also examined in the Federal Court (FC) decision Ratiopharm Inc. (now Teva Canada Limited) and Attorney General of Canada (2014FC502). Ratiopharm which sells generic drugs in Canada sold a generic equivalent of Ventolin HFA to pharmacies after having purchased it under contract from the patent holder, GlaxoSmithKline Inc. (GSK). Under the contract with Ratiopharm, GSK retained all patent rights to its products. The PMBRB found that Ratiopharm, by virtue of its contract with GSK was a “patentee” and therefore its prices within the jurisdiction of the Board. Mr. Justice O’Reilly disagreed with the PMBRB and found that the PMPRB’s conclusion that Ratiopharm is a “patentee” was unreasonable. Mr. Justice O’Reilly further noted that the PMPRB “does not have jurisdiction to review prices at which Ratiopharm, a company holding no patents and no monopolies, sells medicines” and thus, allowed the application for judicial review of the PMPRB’s decisions.
Mr. Justice O’Reilly noted in both decisions that the French version of Section 79(1) “ties the definition of “patentee” more closely to the rights of the patent holder. It is a narrower definition than in the English version, which includes any person entitled to exercise any rights relating to a patent.”
This highlights the critical importance of reviewing both the English and French versions of the legislation when interpreting the statues.
For more information please contact:
LANGUAGE POLITICS AND FRENCH SIGN WARS IN QUEBEC-REVISITED
QUEBEC COURT CONFIRMS FRENCH LANGUAGE WATCHDOG CANNOT BITE ENGLISH TRADEMARKS
By Scott Miller, April 10, 2014
On April 9, 2014, the Superior Court in Quebec in Best Buy Stores Ltd. et al v. Quebec (Attorney General) (2014) QCCS 1427, confirmed that the Quebec language watchdog, the Office Québécois de la langue française (OQFL) attempt to cause retailers to modify their brand names to include French signage was contrary to the existing language laws of Quebec.
This case is a huge victory for all businesses that wish to maintain brand recognition by using English trademarks in Quebec (ie. Best Buy, The Gap, Costco, Toys R Us, Wal-mart) and not be forced to translate them into French.
Section 58 of the Charter of the French Language (French Charter), reads, "public signs and posters and commercial advertising must be in French". However, there are exceptions in the French Charter Regulations (sections 7(4) and 25(4)) which permit English only packaging and signage for "a recognized trade mark within the meaning of the Trade Marks Act, unless a French version has been registered".
Justice Michel Yergeau refused the OQFL argument that retailers should use French signage because section 63 of the French Charter reads, "The name of an enterprise must be in French". The Court was not persuaded by political arguments and recognized that for the last 37 years the French Charter has kept a balance of encouraging French language rights with the need to encourage multinational companies to carry on business in Quebec. Simply put, the use of the signage in issue was recognized as trademarks and not as business (trade) names.
This case may be appealed but the political tide is changing in Quebec. The minority Parti Québécois government elected in September 2012 was defeated in a landslide election on April 7, 2014 with a new majority Liberal Government being put in place. The likelihood of the French language being used to divide the people of Quebec over the next 4 years is doubtful.
The Federal Trade-Marks Act 'recognizes' both common law (unregistered) and registered trademarks. Nonetheless, it still remains an open question whether the OQFL will recognize unregistered trademarks or argue such marks are actually trade names not subject to the English use exception. As a precautionary measure, it may still be advisable to file for English trademarks to avoid the OQFL. If threatened about the legitimacy of whether an English word is a recognized trademark, it is answerable by noting that the English word is the subject of a pending trademark application.
Further detail of the case can be reviewed by clicking here.
For more information please contact Scott Miller or Jahangir Valiani.
Scott Miller, Partner
Canada’s Trademark Law Soon to be Changed – Including Harmonization with International Treaties
By Scott Miller, March 31st, 2014
On March 28, 2014, the Federal Government of Canada tabled a new Bill, C-31, which has long been anticipated by Trademark practitioners in Canada. It is expected that the trademark provisions of the Bill will ultimately become law in Canada. A summary of Bill C-31:
- The type of registrable trademarks has been widened to include sound, scent, taste and texture which may require evidence of distinctiveness at the date of filing.
- The renewal fee for registered trademarks will be shortened from 15 to 10 years.
- The ability to seek expungement of trademarks on the basis of non-use during the last 3 years can now be instituted by the Trademark Office and not just by an interested third party.
- Canada will implement International Treaties:
- Madrid Protocol - This treaty paves the way for greater flexibility to file in multiple jurisdictions.
- Singapore Treaty – Divisional applications will be allowed for (1) those goods/services which are contentious and holding up a potential registration or (2) applications on the basis of proposed use where particular goods/services have yet to be used.
- Nice Agreement - This agreement ensures that its signatories follow a harmonized system of classification of goods/services.
For more information, please contact:
Illegal Downloaders Beware – You Can Run but You Can’t Hide Behind Your ISP: Balancing Privacy Rights against the Rights of Copyright Holders
By Scott Miller, February 24th, 2014
The Federal Court of Canada in Voltage Pictures LLC v. John Doe and Jane Doe (2014 FC 161) has set the ground rules for when an Internet Service Provider (ISP) will be required to hand over to copyright holders the names and addresses of individuals suspected of unauthorized downloading of copyright material such as movies and music.
The court ordered the Ontario based ISP TekSavvy to disclose approximately 2000 customer names and addresses to the U.S. production company Voltage Pictures for the alleged unauthorized downloads of such movies as “The Hurt Locker” and “Dallas Buyers Club”.
In Canada, the Copyright Act provides for statutory damages for non-commercial infringement in the range between $100 and $5000. This range was likely implemented to discourage file sharing lawsuits against individuals. However, it is easy to imagine how with the names and addresses of individuals a simple letter to a suspected downloader of, for example, pornography might be embarrassed into paying a settlement without the copyright holder having to file a lawsuit.
To that end the court was extremely sensitive to both the potential rise of the so called ‘Copyright Trolls’ - plaintiffs who file multitude of lawsuits solely to extort quick settlements and the need to safeguard an individual’s right to privacy.
In order to overcome these issues but also balance the right of the copyright holder, the Federal Court instituted the following safeguards before requiring the ISP to deliver the subscriber names and addresses, including:
- The moving party must demonstrate a bona fide case (a real intend to sue and there is no other improper purpose)
- Disclosure will be only names and address and not phone numbers or email addresses
- The information disclosed shall be used exclusively for the purpose of the lawsuit and will not be disclosed to the public/media
- The letter to the ISP subscribers will include the court order and a statement that ‘no Court has yet found any recipient of the letter liable for infringement’
- The case will be specially managed and a Case Management Judge will approve the demand letter before it is provided to the individuals
- The copyright holder shall pay the legal costs of the ISP before the information is provided
The safeguards and limit on damages might still result in some copyright holders bringing lawsuits to deter the public at large from infringing copyright but the economics suggest this will not open the floodgates to litigation before the Federal Court. Likewise, the safeguards do balance the fear against Copyright Trolls and the potential loss of privacy rights.
For more information, please visit CTV National News website to watch Scott Miller’s commentary given during the CTV news coverage of the case.
MBM Intellectual Property Law Has Moved!
When is an Engineer not Engineering in a Trade-mark?
Scott Miller, February 18th, 2014
In Kelly Properties, LLC v. Canadian Council of Professional Engineers, 2013 FCA 287, the MBM litigation team successfully overturned the Federal Court decision of Canadian Council of Professional Engineers v. Kelly Properties, LLC, 2012 FC 1344 which found the trademark KELLY ENGINEERING RESOURCES unregistrable in association with personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.
The recent Federal Court of Appeal decision is important for two reasons:
- A trade-mark application based on a foreign registration may register regardless of whether a date of first use claimed in a Canadian trade-mark application is correct; and
- Just as a trade-mark which is descriptive is registrable if it is not clearly descriptive - A trade-mark which is potentially misdescriptive is registrable if it is not deceptively misdescriptive.
FOREIGN USE BASIS OF REGISTRATION ALIVE AND STRONG IN CANADA:
The Federal Court of Appeal solidified that where a trade-mark application is based on use in Canada and foreign use and registration, the two are pleaded in the alternative. That is, only one of the basis of the application must be met for the application to be considered for registration. Therefore, if the application is found to be unsupported on one ground, it may still be registered on the basis of the alternate ground for registration.
DECEPTIVELY MISDESCRIPTIVE NOT TO BE DETERMINED BY GUIDELINES
Each of the Provinces and Territories in Canada include legislation that more or less defines the Practice of Engineering to incorporate the professional application of applied science. The engineering legislation also includes a prohibition of the use of the word engineer/engineering in a trademark if the use may lead the public to believe the trademark owner is engaged in the Practice of Engineering.
Kelly Services sought to register the trademark KELLY ENGINEERING RESOURCES in connection with personnel employment services. The Canadian Council of Professional Engineers opposed registration on the basis that only licensed engineers should be able to use the term “engineering” in a trade-mark. The evidence before the Trade-marks Opposition Board (2010 TMOB 224) demonstrated that Kelly Services is a personnel employment company and its KELLY ENGINEERING RESOURCES division employs and places both engineers and non-engineers with technical training (e.g. draftsmen). However, the Trade-marks Officer determined that personnel employment services would not be the type of technical services that one would expect engineers to provide. As such, the Board found the trade-mark neither clearly descriptive nor deceptively misdescriptive.
The Federal Court agreed with the Trade-marks Officer’s decision that KELLY ENGINEERING RESOURCES was not clearly descriptive of personnel employment services, but found the mark deceptively misdescriptive relying heavily on a non-statutory guideline from the Association of Professional Engineers which provided criteria for when human resource or staffing agencies are allegedly engaged in the Practice of Engineering. The guideline was not before the Trade-marks Officer and the Federal Court concluded that the guideline would have materially affected the decision of the Officer. Thus the Federal Court came to its own conclusion without giving deference to the Trade-marks Opposition Board decision.
The Federal Court of Appeal found the guidelines of the Alberta Association that regulates the profession of engineering to be just that, guidelines and not law. The Court accepted MBM’s argument that the guidelines were merely the opinions of the Alberta Engineering Association and its interpretation was irrelevant for the purpose of trade-mark law. Since all statutes to regulate the term “engineer” were before the Trade-marks Opposition Board, the Court found that the trial judge made a palpable and overriding error in admitting evidence that opined on the scope and the interpretation of those statutes.
The Federal Court of Appeal found that the decision of the Trade-marks Opposition Board was reasonable and confirmed that the trade-mark KELLY ENGINEERING RESOURCES is registrable in association with personnel employment services. The Trade-marks Opposition Board correctly considered the mark as a whole, and recognized the family of KELLY marks used in personnel employment services.
The bottom line is even if one presumed that the mark KELLY ENGINEERING RESOURCES was misdescriptive of personnel employment services (which was not the case), it was clearly not deceptively so.
For more information, please contact:
Scott Miller, Partner
New Powers to Combat Counterfeit Products in Canada Likely Around the Corner
New Powers to Combat Counterfeit Products in Canada Likely Around the Corner
Scott Miller, October 30th, 2013
On October 28, 2013 the Government of Canada introduced bill C-8 (Combating Counterfeit Products Act) which, if passed, will significantly improve the fight against counterfeit products in Canada. The bill also includes substantial changes to the Canadian Trade-marks Act. This bill was introduced in the previous session of Parliament but did not proceed when Parliament was prorogued. The bill has been fast tracked and it is expected that it will become law in some form.
Proposed Changes to Stop Counterfeiting:
Currently, in order to stop the importation of counterfeit goods into Canada, a right-holder must proactively obtain a Court order directing that the alleged infringing materials be detected and detained. The process is costly and requires the right-holder have specific information regarding the importation of the alleged infringing materials.
Under the bill both the Trade-marks Act and Copyright Act will be changed to include provisions where the Canada Boarder Services Agency (CBSA) will have increased power to combat counterfeit goods from entering Canada at markedly less cost to the right-holder. A right-holder can file for a standing 2 year ‘Request for Assistance’ with the CBSA which would enable the CBSA to provide the right-holder with samples of suspect products. The right-holder could then use this information to pursue new remedies under the Trade-marks Act or Copyright Act including both indictable and summary convictions with fines upward of $1,000,000 dollars and/or imprisonment of five years.
Proposed Changes to Trade-mark Law:
The proposed definition of a trade-mark is being considerably broadened to include the following: a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape (currently known as a distinguishing guise), a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.
Under the proposed bill, trade-marks for three-dimensional shapes, a mode of packaging goods, sound, scent, taste, and texture will require evidence of distinctiveness at the date of filing.
Under current Canadian trade-mark law, registration of a proposed use trade-mark application may occur after allowance where a declaration of use is filed for the wares/services actually used. For those wares/services not used, the application dies in association with those unused wares/services. Under the bill, an applicant can file a divisional application for those goods/services not used at the time of filing the declaration of use and claim priority to the original application.
For more information, please contact:
Scott Miller, Partner
Another Win for MBM
Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars)
EMPRESSA CUBANA DEL TABACO dba CUBATABACO et al. v. TEQUILA CUERVO, S.A DE C.V. (2013) FC 1010
Scott Miller and Jonathan Roch, October 8, 2013
Tequila Cuervo filed a Canadian trade-mark application for the trademark LAZARO COHIBA, disclaiming the word LAZARO. The application was based on proposed use for “alcoholic beverages, namely rum”. The application was opposed by Cubatabaco on grounds including that LAZARO COHIBA was not registrable based on the likelihood of confusion with the COHIBA registered trademarks for cigars and tobacco. On September 30, 2008, the Trademark Opposition Board concluded that “in view of the differences between the wares and trades of the parties and the fact that the opponents have not established an extensive reputation for their marks “ that the LAZARO COHIBA trademark was registrable.
Following the Trademark Opposition Board decision MBM was appointed as counsel to Cubatabaco. An appeal of the Board’s decision was filed by application to the Federal Court. The Federal Court overturned the Board’s decision and refused the registration of the LAZARO COHIBA trademark application.
Fame (Extensive Reputation) Demonstrating Without a Survey
MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by filing new evidence to establish that COHIBA has been referenced in films, television, music and other media, such as print magazines distributed in the United States and Canada. The fame of the COHIBA trademarks was established not by an expensive survey but by creatively revealing that pop media has used COHIBA cigars to demonstrate social status and wealth. The decision is equally important because it recognizes that for some iconic brands, personal ownership or use of the product is not essential to the awareness of the trademark. Click here to view a copy of the decision.
There are multiple ways for trademark professionals to establish confusion. While in some incidents expensive surveys may be necessary that will not always be the case.
Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
By Suzanne Hof - November 16 2012
Pfizer Canada Inc. (Pfizer) has asked the Supreme Court of Canada to reconsider its decision to invalidate their Canadian Patent No. 2,163,446, the patent that provided Pfizer with a monopoly for its multi-million dollar erectile dysfunction drug, Viagra.
Pfizer has taken the position that the Court “accidentally granted a remedy in this appeal that exceeds its jurisdiction.” The proceedings in question were initiated as an application under the Patented Medicines (Notice of Compliance) Regulations, the outcome of which is typically not to determine invalidity or infringement, but rather to determine whether a notice of compliance should or should not be granted.
In the present case, the present proceedings were initiated as an application for an order prohibiting Teva Canada Limited from obtaining a notice of compliance for its generic version of Viagra. Pfizer has therefore taken the position that the Supreme Court was acting outside its jurisdiction in its finding of invalidity.
In particular, Pfizer has applied for an order to amend the Supreme Court’s recent judgment “by replacing the words ‘and Patent 2,153,446 is declared void’ with the words ‘the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing notice of compliance to the appellant is hereby set aside’.” In the alternative, Pfizer has applied for a re-hearing on the issue of remedy.
We will, of course, be following these proceedings and posting updates.
The read the previous article on this please visit: If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada
If you have any questions please contact Suzanne Hof
If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada
By Suzanne Hof - November 2012
Today, in a unanimous decision, the Supreme Court of Canada sided with Teva Canada Limited in its bid to invalidate Pfizer Canada Inc.’s Canadian Patent No. 2,163,446 (the ‘446 patent), thereby clearing the way for generic companies to manufacture and sell a generic version of the multi-million dollar erectile dysfunction (ED) drug, Viagra.
This decision hinged on the finding that the ‘446 patent did not satisfy the disclosure requirements under Section 27(3) of the Patent Act. In this regard, the Supreme Court overturned the findings of both the Federal Court and the Federal Court of Appeal that the ‘446 patent did, in fact, provide sufficient disclosure.
The question of sufficiency was raised around whether the specification would have enabled the public “to make the same successful use of the invention as the inventor could at the time of his application” because it does not indicate that sildenafil (the active compound in Viagra) is the effective compound. Although the ‘446 patent does state that “one of the especially preferred compounds induces penile erection in impotent males,” there is no indication which of the several specific compounds identified throughout the description of the patent is this “especially preferred” compound, i.e., sildenafil. Nor does the specification state that the remaining compounds identified in the ‘446 patent were found not to be effective in treating ED.
Furthermore, although claims 6 and 7 are each directed to specific single compounds, there is no indication in the specification that claim 7 relates to sildenafil. By omitting any clear statement that the sildenafil is the active compound, the Supreme Court found that:
There was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound, further testing would have been required to determine which of those two compounds was actually effective in treating ED.
According to fundamental principles underlying the patent system, adequate disclosure of the invention in the specification is a precondition for the granting of a monopoly to an invention. It is this “bargain”, or quid pro quo, that the Court references (“[i]f there is no quid – proper disclosure – then there can be no quo – exclusive monopoly rights”) in its finding that the patent be deemed invalid.
If you have any questions please contact Suzanne Hof
Please read the UPDATE on this in our on Nov 16, 2012 NEWSFLASH - Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
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