Intellectual Property Considerations in Mergers and Acquisitions

cb photo_153_51a65a6798d91Paul Sharpe, June 2013

Intellectual Property may be part of a company that is acquired or with which another company merges. The Intellectual Property can take the form of Trademarks, Patents, Designs, Trade Secrets, Copyrights, Plant Breeder’s Rights, Integrated Circuits, etc.

Unfortunately, in merger and acquisition transactions, the Intellectual Property due diligence is often overlooked and the intellectual property is typically “thrown in with the deal”. This can be an unfortunate situation, since the real value of the intellectual property may never be realized. If analyzed, the intellectual property may be a source of income in terms of licensing fees, fees generated from sale of the assets, fees associated with assignments, trade of intellectual property for other intellectual property and monetary consideration. If the due diligence concerning the intellectual property is done prior to closure of the transaction, there is a distinctive vantage that can be realized; assuming the intellectual property is in good standing and there are no encumbrances (see below), the result could be a value-add proposition for the transaction which can also provide the concomitant advantage of expediting the transaction, increasing the transaction price among other attractive benefits.

As a further advantage, there may be an opportunity for a joint venture with another company to better position the purchasing company in a specific industry.


On other side of the coin, the intellectual property may be a detriment. It may be that some of the intellectual property infringes the rights of others or that licensing fees are owed to licensees or that licensees are owed fees that in turn are owed to the target company. Further still, there may be real or imminent litigation involving the intellectual property.


In any event, a due diligence should be conducted concerning the intellectual property. Although the prospect of conducting a due diligence may seem daunting, the procedure is extremely useful and can yield very profitable results for the purchaser. In general overview, there are a few simple procedures which, if observed, can go a long way to benefit the purchaser of the target company.

One should initially determine if the company being acquired properly owns or has the adequate license(s) in place to use to the technology. Second, a review of all agreements into which the target company has entered is required. This will ascertain whether the company’s licenses are of sufficient breath to cover future use and/or modifications of the technology and ownership indications for improvements. The issue of infringement should also be addressed. The company being acquired should fully disclose potential infringement issues to the purchasing entity whether they have been resolved or are pending.

The existence of any royalty obligations of the target company should also be analyzed in the form of licensing fees, lump sum payments, emissions, etc. as well as duration of payment and any conditions related thereto.

Finally, a further important consideration to bear in mind is employee requirements regarding intellectual property issues. It should be confirmed that all contractors/employees have signed agreements vesting the intellectual property to the target company. It is an important aspect and avoids competition issues as well as having to try to track down employees that may have been terminated or moved on after the transaction has been completed.


It should be borne in mind that this is a general overview of the considerations involved in intellectual property assets in the merger and acquisition environment. There are tax consequences to be also considered as well as a series of other nuances that require professional assistance.

Should you require any additional information regarding the protection of intellectual property rights in the case of mergers and acquisitions, you are invited to contact the undersigned.

Paul Sharpe is a Partner and Registered Patent Agent in our Intellectual Property Group and can be reached at 613.567.0762 or This e-mail address is being protected from spambots. You need JavaScript enabled to view it. .


Best Mode in Canada

cb photo 70 4f1989870a18eBest Mode in Canada
Stuart Bristowe, Ph.D. September 1st, 2012

In the United States according to 35 U.S.C. 112 “the specification….shall set forth the best mode contemplated by the inventor of carrying out his invention.”  As is readily apparent from this language, this best mode requirement for U.S. patent applications is relevant to all technologies.

In Canada, according to Section 80(1)(f) of the Patent Rules, the description shall set forth at least one mode contemplated by the inventor for carrying out the invention in terms of examples.  Furthermore, there is a best mode requirement specifically defined in the Patent Act, however it is not as definitive as that of the United States.  In Canada, Section 27 (3) of the Patent Act defines the requirements of the specification for a patent application.  This section outlines the necessary requirements of the specification which include for example, correctly and fully describing the invention, setting out clearly the various steps in a process, method of constructing making or using a machine manufacture or composition of matter.  However, when outlining the requirement of best mode, this section of the Patent Act solely limits the best mode requirement to a machine.  Specifically, Section 27(3)(c) defines that the specification of an invention must “in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle”.

It is important to note that the requirement of disclosing the best mode in a specification has essentially been extended to all technologies and not just limited to a machine type invention, based the outcome of the Federal Court Trial Division decision regarding Thomas & Betts Ltd v. Panduit Corp. (1997).  The Court determined that the inventor has a duty with the fullest of bona fides to describe the best way known to them of carrying out the invention.

When determining what to integrate into a patent application in terms of describing the best mode, it is important to consider the relevant date with respect to testing for the best mode.  In the past, this relevant date had been determined to be the filing date of the patent application or the Paris Convention priority date, if this is deemed relevant to the particular case.  However, in 2000 the Supreme Court of Canada established the relevant date in two separate decisions, namely Free World Trust and Whirlpool.  The SCC firmly established that the relevant date is the date when the public first became aware of the patent application, which is typically 18 months after filing.

It is apparent that this revision to the relevant date for determining the best mode may cause some potential issues when one considers the language of Section 27(3)(c) of the Patent Act, wherein it is defined the requirement relates to the best mode in which the inventor has contemplated the application of the principle of the machine.

As is known, no new subject matter can be added after the filing date of the application.  Rather, all amendments must be fully supported by the application as originally filed.  As such there is a potential incongruence regarding the disclosure requirement of the best mode, particularly if the best mode has been “contemplated” by the inventor after filing of the application but before its publication.

As such, when preparing a patent application for an inventor, it can be advisable to ask the inventor to speculate as to potential improvements to their technology, and to integrate these potential improvements into the application, assuming that these potential improvements have a reasonable probability of success.  In this manner, should it be later established that at the time of publication the best mode includes one or more of these potential improvements, it can be argued that the best mode has been appropriately disclosed in the patent application in question.

For more information please contact Stuart Bristowe

Viagra® Will No Longer Erect Alone

cb photo 111 4ee6a90a2a11aViagra® Will No Longer Erect Alone - Federal Court Wastes No Time in Confirming the Invalidity of the Viagra® Patent While Supreme Court Decides Whether to Reconsider Its Decision

Jonathan Roch, November, 29, 2012

The patent for Viagra®, Pfizer’s sixth best selling medicine, was recently struck down by the Supreme Court of Canada in a unanimous 7-0 decision for failing to meet the statutory disclosure requirements. The patent had been in force since 1998 and had two years remaining of its term.

Given the context of the appeal to the Supreme Court (a proceeding commenced under the Patented Medicines Notice of Compliance (PMNOC) Regulations), the decision by the Supreme Court to declare the patent invalid surprised Canadian patent practitioners. As a result of this decision, not only Teva but any generic manufacturer that obtains a Notice of Compliance can immediately start selling generic versions of Viagra® to the Canadian market. As reported here by my colleague Dr. Suzanne Hof, Pfizer has petitioned the Supreme Court to reconsider its decision to invalidate the patent, asserting that the Court in the context of the NOC proceedings, lacked the jurisdiction to do so.

Pfizer’s comments with respect to the Supreme Court’s lack of jurisdiction have some merit. Given however that the lower courts in Canada must follow the Supreme Court’s findings with respect to the insufficiency of the Viagra® patent disclosure, the ultimate fate for the Viagra® patent will not change. This was the reasoning as adopted by the Federal Court in Apotex Inc. v. Pfizer Ireland Pharmaceuticals, released only twelve days after the Supreme Court’s decision was rendered, when it held that the only possible result for the Viagra® patent is a finding of invalidity. If Pfizer’s goal in requesting the Supreme Court to reconsider its decision was to extend its monopoly until the issue of validity had been dealt with by the Federal Court, this issue appears to be moot. Pfizer appears to have accepted its fate by slashing the price of its little blue pill from about $49 to about $37 bringing the cost in line with its generic competitors. The Supreme Court may still take this opportunity to shed some light on its decision in the context of the current legislative framework and/or recommend revisions to the current framework.

Supreme Courts Comments – Patent’s Lack of Disclosure
The patent at issue relates to the use of a class of compounds, which includes sildenafil (the active ingredient in Viagra®), to treat erectile dysfunction (“ED”). The main issue before the Supreme Court was whether the patent met the Patent Act’s disclosure requirements which state that the specification “correctly and fully describe the invention”. In overturning the findings of both the Federal Court and the Federal Court of Appeal, the Supreme Court held that, although sildenafil was one of nine especially preferred compounds listed in the patent and that there was testing establishing that one of these compounds was found to work to treat ED, the specification failed to meet the statutory disclosure requirements as it did not specifically identify sildenafil as the tested compound that was found to be effective. Given that the skilled reader would be required to conduct “a minor research project” to determine which of two preferred compounds was the compound that was found effective, the Supreme Court held that the patent failed to state in clear terms what the invention was and that “as a matter of policy and sound interpretation”, Pfizer should “not be allowed to 'game' the system” as they did. As a result, the Court concluded that the patent was invalid for failing to meeting the disclosure requirements.

Context of the Decision by the Supreme Court
The appeal before the Supreme Court was the result of a proceeding under the PMNOC Regulations to prevent the Canadian Minister of Health from issuing a Notice of Compliance (“NOC”) to Teva to produce a generic version of Viagra®.  Proceedings under the PMNOC Regulations are abbreviated proceedings and historically do not result in a general finding of invalidity. In such proceedings, the court(s) mandate is limited to an assessment of whether allegations of invalidity are justified in order to decide if the Minister of Health should be permitted to issue a Notice of Compliance. If a court finds that the allegations of invalidity are justified, as the Supreme Court did in this case, the expected remedy is to deny the patent owner’s prohibition order application thereby allowing the Minister of Health to grant the generic company a Notice of Compliance to produce a generic version of the patented medicine.  The generic company or any other party could elect to invalidate the patent in question by commencing a separate impeachment action or assert the invalidity of the patent in an infringement action.

Pfizer’s Request for Reconsideration or Re-Hearing
The day after its Viagra® patent was invalidated, Pfizer filed a motion to the Supreme Court seeking to amend the judgment pursuant to Rule 81 of the Supreme Court Rules (“the Rules”), or alternatively for a re-hearing on the issue of remedy pursuant to Rule 76 of the Rules. Both Rules 76 and 81 have been applied in very limited circumstances.

Pursuant to Rule 81 (the so-called “slip rule”), a party may motion the court to correct minor technical slips or errors in the judgment or pronouncement. In a Rule 81 motion, the judge may elect to dismiss the motion, amend the judgment or direct that a motion for a re-hearing be made to the Court in accordance with Rule 76. This author believes that it is highly unlikely that an important decision such as the invalidity of a patent would be treated as a minor slip or error.

Rule 76 motions are also of very narrow scope. They have been limited to exceptional cases involving “a failure of justice or an error regarding the nature of the issues”. These motions are done in writing unless the Court otherwise orders and the Supreme Court has full discretion as to the conduct of the hearing. Given that the context was a proceeding in which the ultimate validity of the patent was not in issue, this author believes that the Court may grant a Rule 76 re-hearing, to at a minimum further explain or clarify its decision in the context of the current legislative framework and/or suggest revisions to the current framework.

Supreme Court’s Findings Binding on Lower Courts
The determination by the Supreme Court in its reasons that the Viagra® patent fails to meet the statutory requirement of sufficient disclosure is a legal determination that would be binding on any lower court in Canada asked to deal with the validity of the Viagra® patent.

This legal reality was recognized by the Federal Court in Apotex Inc. v. Pfizer Ireland Pharmaceuticals, an impeachment proceeding by Apotex against the same Viagra® patent. Justice Zinn explains in his reasons, made twelve days after the Supreme Court’s decision, that the Supreme Court’s determinations with respect to the sufficiency of the disclosure of the Viagra® patent turned on three questions of law: (1) the determination of the invention or inventive concept of the patent, (2) the construction of the patent, and (3) whether the patent, properly construed, permitted the person of skill in the art “to make the same successful use of the invention as the inventor could at the time of his application” and that the Supreme Court’s finding that Pfizer, in failing to disclose which of the many compounds named in the patent was effective in treating erectile dysfunction, had not properly or sufficiently disclosed its invention, is a finding that the Federal Court must respect and follow. Given that Apotex action was seeking a declaration of the invalidity of the Viagra® patent for insufficient disclosure, Justice Zinn held that there can be no genuine issue for trial as no result is possible other than a finding that the Viagra® patent is invalid.

For more information please contact Jonathan Roch


Scott Miller, Nov 29, 2012

The Quebec language watchdog, the Office Québécois de la langue française (OQFL) is demanding that all retailers modify their brand names to include French signage. The OQFL’s demands are not a result of any change in the law but are being driven by politics.

Several of North America’s biggest brands including Walmart, Best Buy, Costco, and the Gap are fighting back.  The retailers have launched a lawsuit in the Quebec Superior Court challenging the policy change of the OQFL. The retailers are refusing to change their signage despite the threats of fines and potential revocations of government ‘francization certificates’. The francization certificates are provided to companies who are in compliance with the language laws and may be entitled to government grants.

In September 2012, a minority Parti Québécois government was elected in Quebec. Premiere Pauline Marois has promised greater enforcement of existing French language laws and possibly the introduction of more ambitious French language laws. The likelihood of new language laws being passed with a minority government is doubtful but politics will drive the Quebec Superior Court to interpret the existing language laws of Quebec in the coming months.

For the past 35 years, the Charter of the French Language (French Charter), section 58 has read, “public signs and posters and commercial advertising must be in French”. However, the retailers have relied upon 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”.

The Trade-Marks Act ‘recognizes’ both common law (unregistered) and registered trademarks.  The Supreme Court of Canada1 and the Quebec Court of Appeal2   have acknowledged this interpretation. Nonetheless, the Quebec Government has threatened fines for the use of English unregistered trademarks in Quebec.  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.   

Under the guise of trying to force French signage, the OQFL is now trying to enforce section 63 of the French Charter which reads, "The name of an enterprise must be in French".

A trade name is the name used to identify a business whereas a trademark is used to distinguish wares or services. Use of a trademark in association with services requires advertisement and availability. A sign in front of a building or on a website is advertisement and the offer and/or online or direct sale is availability.

It is expected the retailers will argue that by changing its policy after so many years, the OQFL is trying to change the law and its interpretation. The French Charter distinguished between trade names (section 63) and trademarks (section 58). The exception for English use was intended for signage. The OQFL is attempting to undermine the intention of its own French Charter.  As well, the OQFL is expecting that brand names such as Costco or Walmart which cannot be translated be amended to include French text (ie. Le Magasin Costco).  This further supports the proposition that the Quebec language watchdog is driven by politics and not the law. As well, trademark legislative powers fall within Federal jurisdiction. This means that strong arguments should be made that the OQFL is attempting to dilute trademarks by requiring the addition of a French component which is outside its jurisdiction.    

It will also be interesting to see if the new interpretation by the OQFL will withstand a challenge of the Canadian Charter of Rights and Freedoms and in particular (s.2(b)), the right to “freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication”.  Assuming a breach of section 2(b) of the Canadian Charter of Rights and Freedoms, the Court will still have to determine if the breach can be demonstrably justified in a free and democratic society (s.1). It is arguable that since section 63 of the French Charter does not preclude other languages from being part of the name, the OQFL will withstand a section 2(b) Canadian Charter of Rights and Freedoms challenge and demonstrated that it is justified in Quebec, to expect a name to include a French component.   

Irrespective of the above, to succeed, the Quebec language watchdog will need to establish that the signage on the outside of a building is used in a trade name sense.  Admittedly, in certain cases, signage on the outside of a business may be used in a trade name sense. However, that same sign will typically also be used in a trademark sense and in most cases, the signage will be used exclusively as a trademark.  So long as the word/logo/design is functioning as a recognized trademark, the trademark should take the benefit of section 25(4) of the French Charter Regulations. Moreover, there is nothing in the French Charter which requires that for the exception to apply that that trademark must be exclusively a trademark.

The 35 year old French Charter should not be interpreted anew to cause English recognized trademarks to have to include a French component when used in signage. Trademark legislation falls with the powers of the Federal government. It is for that reason that the exceptions and intention of the French Charter permit use of recognized English trademarks on both packaging and signage.  If French words are required to be added to trademarks when used in signage then what is next? Will the Quebec language police require recognized English trademarks on packaging to also include a French component? The big brand retailers are attempting to have certainty applied to the law and end the political uncertainty.  

For more information please contact Scott Miller

1 Veuve ClicquotPonsardin v. Boutiques Cliquot Ltee [2006] 1 SCR 824
2 Centre Sportif St-Eustache v. Procureur General Du Quebec (2009) QCCS 3007

Press Release - MBM is to Celebrate Global Entrepreneurship Week with a Canadian Mentorship Challenge Event

Press Release - MBM is to Celebrate Global Entrepreneurship Week with a Canadian Mentorship Challenge Event

November 7, 2012

MBM Intellectual Property Law is to Celebrate Global Entrepreneurship Week with a Canadian Mentorship Challenge Event

Ottawa, ON (Nov 7, 2012) – MBM Intellectual Property Law is partnering with Startup Canada, CATAAlliance, and the Canadian Youth Business Foundation to host a local event for the Canadian Mentorship Challenge, a national initiative to mentor 10,000 enterprising Canadians over the course of Global Entrepreneurship Week, November 12 - 18, 2012.

The local event will take place on Wed, Nov 14th at 10am and will be
a great opportunity for local entrepreneurs to gain valuable tips from our experts on the world of IP and how it might impact them. “The world of IP can be a complicated one if you don’t know what to do and the success of your business could depend on the decisions you make now. Don't be left in the dark when it comes to protecting your bright idea. We can help by shedding some light on it.” Please join us for a fun interactive session on protecting an idea. A small session dedicated to helping young entrepreneurs.


“We wanted to participate in the Canadian Mentorship Challenge because this was a great way for us to support local entrepreneurs. We are inspired by the ingenuity, creativity and talent of our clients and see breakthroughs in technology and sciences every day. If there is an opportunity to help young talented entrepreneurs to help make their dreams come true we can help make that happen.” said Randy Marusyk, Partner of MBM. “We hope our event will help young entrepreneurs feel more at ease when it comes to protecting an idea.”

Mentorship was a key topic of conversation during Startup Canada’s six-month National Tour this summer.

“We heard from entrepreneurs of all ages, startup stages and business sectors – mentorship is an essential ingredient for building a more collaborative and sustainable entrepreneurial culture in Canada,” said Victoria Lennox, Co-Founder of Startup Canada. “The transfer of knowledge and ideas is inspiring for everyone involved and contributes to the success of future startups.”

For more information on the Canadian Mentorship Challenge and other mentor events happening across the country, visit You can also stay connected to the Challenge by following #mentorscan or @Startup_Canada on Twitter.


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For more information:

Diana Davies-Harju

Marketing Manager, MBM Intellectual Property Law


This e-mail address is being protected from spambots. You need JavaScript enabled to view it.


Irenia Roussel or Moaz Mohammed

Mentorship Directors, Canadian Mentorship Challenge

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About the Canada Mentorship Challenge

The Canadian Mentorship Challenge is a nation-wide challenge during Global Entrepreneurship Week 2012 (November 13-18, 2012) to encourage organizations and groups across Canada to organize mentorship events in their communities in an effort to collectively mentor more than 10,000 enterprising Canadians over the course of the week.

MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms – This time before the Court of Appeal for Ontario

cb photo 104 4f8ef04a0746dMBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms – This time before the Court of Appeal for Ontario
Scott Miller, September 10, 2012

Scott Miller and Jonathan Roch of MBM Intellectual Property Law LLP (MBM) successfully obtained a judgement of the Court of Appeal for Ontario which confirms that if a contract is clearly written in unambiguous language, the contract will be upheld. This is so, regardless of whether the contract prohibits the use of descriptive words which may or may not be registrable as trademarks or which may be used by third parties not party to the contract.
Before the Ontario Superior Court of Justice, MBM representing Skipper Online Services (SOS) Inc. d.b.a., successfully brought an application (No. 11-52596) to enforce an agreement which restricted 2030564 Ontario Inc. d.b.a. Boatsmart Canada from displaying, amongst other words, EXAMEN DE BATEAU "or any reversals, misspellings, translations or plurals thereof as or in a name or trade-mark, or in any other manner...". filed evidence demonstrating that Boatsmart Canada's use of the terms 'BOAT EXAM' and 'BOATING EXAM' can be translated into 'EXAMEN DE BATEAU'. Relying on the clear language of the agreement, the Ontario Superior Court prohibited Boatsmart from using the terms ‘BOAT EXAM’ and ‘BOATING EXAM’. Both parties offer online testing for pleasure craft operating cards.

On Appeal (C55415), Boatsmart argued it would be a commercial absurdity to disallow Boatsmart the right to use the descriptive words BOAT EXAM and BOATING EXAM. This argument was soundly rejected by Court.  The Chief Justice Warren Winkler, Associate Chief Justice Douglas Cunningham S.C.J. (ad hoc) and Justice Harry LaForme unanimously found that it is irrelevant if third parties can use alleged descriptive words which Boatsmart agreed not to use by the agreement.  

The Court of Appeal decision demonstrates the importance of using clear language in agreements to ensure a bargain will be upheld by the Courts. Moreover, although trite, the BOATEREXAM.COM decision reminds us that it is important to make certain that before a party enters into an agreement that the party understands the meaning of each provision of the agreement.  For example, the principle of Boatsmart alleged he thought the translation of EXAMEN DE BATEAU did not include BOAT EXAM and BOATING EXAM but his alleged understanding did not prevent the Court from stopping the company’s use of the words.
For more information, please contact Scott Miller at 613 567 0762 or This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

New MBM IP Industry Event Calendar

New MBM IP Industry Event Calendar

September, 2012

MBM is pleased to announce an exciting new feature that has been added to our website called Industry Events.

This feature shows the latest list of IP Industry related events. As it grows it is our hope that you will find this to be your reliable source on all IP related Industry events.

If you know of an event and would like to have it added to the calendar please contact This e-mail address is being protected from spambots. You need JavaScript enabled to view it. .

MBM's New Office Announcement

New Office Announcement
September 2012

MBM is growing again!  We are delighted to announce that MBM has expanded its Canadian offices with a new office opening in downtown Calgary, Alberta. A hop, skip and a jump from the beautiful Canadian Rockies.   

MBM is a dynamic and progressive law firm that practices exclusively in the area of intellectual property. Our newest location allows us to better serve our growing markets and support local business communities.   

It would be a pleasure to serve you at any of our locations with the same quality and service you have come to expect from us.

In order to celebrate properly we will be holding a party at our Calgary office in the near future.  Please stay tuned for more details.

For more information please contact This e-mail address is being protected from spambots. You need JavaScript enabled to view it.  

We look forward to hearing from you!

MBM's newest office location - Calgary, AB

1000, 888 – 3rd St. SW
Bankers Hall, West Tower
Calgary, AB T2P 5C5

Telephone: 403.444.5988
Fax: 403.444.6699

Data Requirements and Sound Prediction

cb photo 91 4f19cd1eeada2Data Requirements and Sound Prediction
Suzanne Hof, November 29, 2012

This article provides a brief summary of the state of the law in Canada regarding utility, in particular, how Section 2 of the Canadian Patent Act is being used by the Canadian Patent Office during prosecution of biotechnology and pharmaceutical patents to refuse claims based on an alleged lack of a factual basis (i.e., data) to support a sound prediction of utility.

Section 2 of the Act requires that an invention be “new and useful”.  

Where utility has been demonstrated at the filing date of the patent application, evidence of utility need not be included in the patent disclosure.  This is consistent with the Supreme Court of Canada decision in Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504, which set out that the disclosure of a patent is not required to provide data demonstrating exactly how well the invention works, i.e., the utility of the invention, and that all that is required is that the specification provides enough information so that a person skilled in the art may work the invention as promised in the patent.  

Where utility has not been demonstrated, the utility may be based on sound prediction.  Whether a prediction of utility is sound is determined according to the following three criteria established by the Supreme Court of Canada in Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77:

1.    there must be a factual basis for the prediction;
2.    the inventor must have at the date of the patent application an articulable and "sound" line of reasoning from which the desired result can be inferred from the factual basis; and
3.    there must be proper disclosure

The doctrine of sound prediction is particularly significant, and is frequently invoked, for biotechnology and pharmaceutical inventions where, for example, in vitro or animal studies provide the basis for predicting the usefulness of a therapeutic in treating a disorder in a human subject, or in respect of a genus patent where a large number of compounds are claimed, but not all have been made and tested.  

For those seeking to protect such subject matter, the Federal Court of Appeal, in Eli Lilly Canada Inc. v. Apotex Inc., 2009 FCA 97 (aff’g 2008 FC 142), may have established an obligation in cases of sound prediction to disclose in the patent specification the underlying facts and the line of reasoning that support the prediction.  This is in direct contradiction of the principles set out in the Consolboard decision.  This decision has effectively created two different disclosure requirements according to whether the utility is demonstrated (no data required) or based on a sound prediction (data required).  

It is this case upon which the Patent Office has been relying to reject claims directed to subject matter that relies upon soundly predicted (as opposed to demonstrated) utility.  As a result, where utility is based on a sound prediction, a patent specification drafted in accordance with the data requirements for other jurisdictions (e.g., U.S. or Europe) may not be sufficient in the eyes of the Patent Office for patentability under the new data requirements established by the Courts.  

For those who have encountered these or similar objections during prosecution of their patent applications, we would be happy to discuss strategies for overcoming such road blocks.

For more information please contact Suzanne Hof.


Scott Miller, July, 30th, 2012

Repligen Corporation v. Canada (2012 FC 931) is the second time the Federal Court has told the Commissioner of Patents that it is necessary to consider how a patent applicant will be effected by its decision before the Commissioner exercises its discretion under s.8 of the Patent Act.

The Repligen decision is important for two reasons: (1) It clarifies what a clerical error is under s.8 of the Patent Act and (2) provides direction as to the discretion of the Commissioner of Patents.

In Repligen, the patent holder, through an annuity company made annuity payments but these payments were applied to a different patent.  The annuity company submitted sufficient funds and the correct patent owners name but two characters in the patent number were inverted. The Patent Office declared that the Repligen patent had lapsed irrevocably.

In the Federal Court’s original 2010 judicial review of this matter, the Commissioner of Patents was ordered to reconsider the exercise of its discretion under s. 8 of the Patent Act. Justice Lemieux had found that the Commissioner failed to properly exercise her discretion by only considering two factors: the delay in seeking correction of a reversal of two digits in the patent number and any possible third party prejudice. The Commissioner’s decision was set aside and reconsideration of the correction request by a different Patent Office official was ordered.  

In sending back the decision to the Patent Office at the time, the Federal Court had offered direction as to what the relevant factors to be considered, in addition to the two previously considered, ought to be:

• the impact on Repligen, the Applicant;
• the fact that Repligen's payment was received by the Commissioner and appropriated to another patent;
• the fact that Repligen's payments were made on the due date;
• the remedial scope of section 8 that would have the effect that the '486 patent never lapsed for non-payment;
• the purpose and object of the maintenance fee provision in the Act;
• the possible prejudice to third party rights ought to be based on actual evidence, not the likelihood that third parties would be affected;
• the necessity to weight and balance all relevant factors before exercising her discretion.

The July 27, 2012 decision by Justice Near set aside a second refusal by the Commissioner to exercise her discretion. The Court determined that the Commissioner had erred in the weighting and balancing of relevant factors, as noted above. In particular, it was determined that too much emphasis was put on the due diligence required of the Applicant and that considering s.8 as an extraordinary remedy put an undue burden on the requesting party. When considering the correction of this clerical error, the Court emphasizes that the proper considerations ought to have accorded significant weight to the possible impact on the Applicant, a balancing of this impact with the possible prejudice to the affected third party patent holder, and in particular a realization that both the Applicant and the affected third party made efforts to comply with maintenance fee provisions and that such payments were made in furtherance of the purpose of the legislation: to defray the costs of the Patent office and avoid deadwood patents.  

The Federal Court has sent the Commissioner’s decision back to be reconsidered by a different decision-maker within the Patent Office.

For more information please contact Scott Miller

Supreme Court releases rulings for string of Copyright Law Cases

cb photo 114 4f5f58b0dce09Supreme Court releases rulings for string of Copyright Law Cases
Kamaldeep Singh Sembi, July 12, 2012

The Supreme Court of Canada issued rulings on five separate cases dealing with Copyright Law. This fresh jurisprudence should serve to give a refined understanding of one of the more contentious provisions on the Copyright Act, namely s.29 (fair dealing).

The Alberta v. Access Copyright case drew large public interest as it had implications to drastically change the current licensing business model between copyright collectives and educational institutions. In this case a teacher photocopied copyrighted material for a student for “research or private study”. The Copyright Board of Canada ruled that although the purpose was for private study, the actions did not amount to fair dealing with respect to s.29 of the Copyright Act for failing to be “fair” according to the legal test which analyzes six separate factors. The Majority of the Supreme Court came to the alternative outcome ruling copying of copyrighted work for the classroom constitutes fair dealing and no royalty should attach. Consequently, Access Copyright (the copyright collective in this case) stands to lose millions of dollars from royalties it would have collected from schools across the nation.  

The SOCAN v. Bell, ESAC v. SOCAN, and Rogers v. SOCAN cases provided discussion and clarification with regards to specific digital services provided and whether royalties should attach. In SOCAN v. Bell, the court ruled that streaming previews of songs constitute fair dealing as it is reasonably necessary to help consumer research what to purchase, and therefore royalties should not attach. Moreover in ESAC v. SOCAN, the court ruled that downloading a game which contains copyrighted musical works does not constitute “communication” to the public and therefore royalties should not attach. In the Rogers v. SOCAN case, the court differentiated the acts of streaming and downloading music. Only the former is subject to royalties collected by copyright collectives.

Finally a reference case of Re: Sound dealt with the issue of whether a “soundtrack” being part of a motion picture constitutes a “sound recording”, and therefore becomes subject to pre-defined tariffs. The Supreme Court ruled a “soundtrack” is a “sound recording” in all situations except when it accompanies a motion picture, as expressly set out in s.2 of the Copyright Act.

Throughout these cases the Supreme Court has added more clarification to the required tests for fair dealing which should help both copyright holders and users understand the legislation with greater accuracy.

If you have any further inquiries please contact Scott Miller or Randy Marusyk.

Methods of Medical Treatment in Canada

cb photo 109 4ee6a7de96c0dMethods of Medical Treatment in Canada
Kay Palmer, June 2012

Claims directed to methods of medical treatment are considered to be directed to non-statutory subject matter and therefore are non-patentable in Canada.  While such claims are not patentable in Canada, meaningful protection for inventions relating to methods of medical treatment can be achieved in Canada.  In particular, claims to medical uses (i.e.  claims directed to “Use of X to treat disease Y” and “Use of X in the manufacture of a medicament to treat disease Y) are patentable in Canada.  In addition, composition for use claims (i.e. claims to “X for use in treatment of Y.)  are also patentable in Canada.  Accordingly, Applicants by simply re-drafting their method of medical treatment claims into medical use claims or composition for use claims may be able to obtain meaningful protection for their inventions relating to methods of medical treatment in Canada.  
When facing objections to non-statutory subject matter during prosecution of their applications which contain method of medical treatment claims or voluntarily re-drafting method of medical treatment claims into medical use claims a number of factors should be considered by the Applicant.  

•    Use claims which recite active steps will be objected to methods of medical treatment.  Accordingly, care must be taken when re-drafting such claims to not include active steps.  For example, language such as “is administered” should be replaced with language such as “for administration”.
•    In order to be considered a method of medical treatment in Canada, the method treats or prevents a pathological condition. Conditions, such as ageing or pregnancy, are not considered pathological and therefore methods of treating or preventing such conditions are not considered methods of medical treatment. 
•    Even if the primary or the intended purpose of the method is not to treat disease but the method results in a therapeutic benefit, the method is considered a method of medical treatment.
•     Cosmetic methods and methods of diagnosis are not considered methods of medical treatment so long as there is no therapeutic effect.  Accordingly, should an Examiner object to claims to cosmetic methods or methods of diagnosis as methods of medical treatment  because these methods include a secondary therapeutic effect, it may be possible to address such objections by amending the claims to exclude methods of medical treatment.  For example, a claim to a diagnostic method which has a secondary therapeutic effect may be amended to include the phrase “diagnostically effective amount” to exclude therapeutic methods.
•     Methods of surgery are not patentable in Canada even if there is no therapeutic effect.  For example, a diagnostic method which includes the step of removing a tissue sample may be objected to as including a surgical step.  Such objections can often be overcome by simply deleting this step.
•     A number of Canadian court decisions have found that medical use claims which include specific dosage regimes (i.e.  claims that include instructions to the medical professional  how to use the medicine by specifying a particular dosing schedule or range) were directed to methods of medical treatment and therefore unpatentable.  In particular, in Axcan Pharma Inc. v. Pharmascience Inc., 2006 FC 527 it was found that a claim directed to a pharmaceutical composition for treatment of biliary cirrhosis which specifies a particular dose (i.e.  13 to 15 mg/kg/day) is directed to a method of medical treatment and is therefore unpatentable.  In Janssen Inc. v. Mylan Pharmaceuticals ULC 2010, FC 1123), use claims which included a dose titration (e.g.  wherein the use of the first dosage from about two weeks to ten weeks results in a lower final dosage) were also found to be directed to methods of medical treatment.
•     Use claims which specify a dosage form are not considered methods of medical treatment.  In particular, the courts (in Merck & Co. v. Pharmascience 2010 FC 510 and Merck & Co. v. Apotex Inc., 2005 FC 755) have found medical use claims construed to specify a specific unit dosage taken on a fixed dosing schedule (e.g. 1mg tablet daily) are directed to a vendible product and not directed to methods of medical treatment.  Accordingly, non-statutory subject matter objections to use claims which include a specific dosage regime may be overcome by amending the claims to recite a specific unit dosage if there is sufficient support in the application for such an amendment.

In conclusion, meaningful protection to inventions relating to methods of medical treatment is possible in Canada if care is taken when drafting the application and claims.  Furthermore, this area of Canadian patent practice is still evolving and as such the expertise of a Canadian patent agent prior to entering the Canadian patent regime is strongly recommended for Applicants with inventions relating to methods of medical treatment.

When must a party comply with a provision in a contract which is silent as to its time of performance

cb photo 111 4ee6a90a2a11aWhen must a party comply with a provision in a contract which is silent as to its time of performance
Jonathan Roch, April, 2, 2012

Before the Ontario Superior Court of Justice, Jonathan Roch of MBM Intellectual Property Law LLP, representing Skipper Online Services (SOS) Inc. d.b.a., successfully defended an application (No. 11-52746) by 2030564 Ontario d.b.a. Boatsmart Canada for damages relating to an alleged breach of a settlement agreement for failing to immediately stop accepting Boatsmart's vouchers as payment following the execution of the agreement.
The agreement was executed by the afternoon of August 10, 2011.  The steps to remove their ability to accept Boatsmart vouchers as required by the settlement agreement were commenced immediately but due to technical issue, which could have disabled the computer system over the weekend, the online deployment of the changes was only implemented on Monday, August 15, 2011.
The settlement agreement set out time frames for a number of different actions however it was silent on this particular issue.  Madame Justice Parfett confirmed the well known principle that where no time for performance is fixed in an agreement, a reasonable time will be implied.  As such, she acknowledged that the 5 days taken by to implement the changes were reasonable.
Parties entering agreements should keep in mind that their subjective intentions with respect to the reasonable period of time to perform certain obligations may be substantially different.  If a party wishes that performance of an obligation be done within a specific timeframe (e.g. the day the agreement is executed), these terms should be conveyed to the other side and explicitly detailed in their agreement.


cb photo 116 4ee6ace8e7836LION NOW  ROARS LOUDER IN CANADA
Marina Stipanac, March 29, 2012

It has been a long-standing position of the Canadian Intellectual Property Office that sounds cannot function as trademarks.  While many countries in the world recognize and routinely register sound marks, as well other types of non-traditional trademarks, the Canadian Intellectual Property Office's position has been that sound marks cannot be represented in a manner prescribed by the Section 30(h) of The Trade-marks Act, which requires a graphical representation of a mark.
Back in 1992, MGM applied for a sound mark for their lion's roar that had been played at the beginning of their movies in movie theatres since 1928 and later on television.  After 18 years of the on-going debate, the Canadian Intellectual Property Office finally refused the application in 2010. MGM appealed the Registrar's decision and recently won the appeal at the Federal Court level.  MGM's application was finally advertised in the Trade-marks Journal on March 28, 2012.
As a result of this decision, the Canadian Intellectual Property Office published yesterday (March 28, 2012) a Practice Notice, confirming that the Canadian Intellectual Property Office will now start accepting applications for sound trademarks.  Sound mark applications will need to:

1.    state that the application is for the registration of a sound mark;
2.    contain a drawing that graphically represents the sound;
3.    contain a description of the sound; and
4.    contain an electronic recording of the sound.

Owners of sound marks, both domestic and foreign, are now encouraged to obtain the trademark protection in Canada for their trademarks following this change in the Canadian Intellectual Property Office practice.
Please contact Marina via This e-mail address is being protected from spambots. You need JavaScript enabled to view it. or call us at 613.567.0762 with any questions or for further information regarding this ground-breaking change in The Canadian Intellectual Property Office practice.

MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms

cb photo 104 4ee6a4ed697b9MBM Successfully Upholds Agreement to Restrict Use of Descriptive Terms
Scott Miller, March 23, 2012

Before the Ontario Superior Court of Justice, Scott Miller of MBM Intellectual Property Law LLP, representing Skipper Online Services (SOS) Inc. d.b.a., successfully brought an application (No. 11-52596) to enforce an agreement which restricted 2030564 Ontario Inc. d.b.a. Boatsmart Canada from displaying, amongst other words, EXAMEN DE BATEAU "or any reversals, misspellings, translations or plurals thereof as or in a name or trade-mark, or in any other manner...". filed evidence of two interpreters demonstrating that Boatsmart Canada's use of the terms 'BOAT EXAM' and 'BOATING EXAM' can be translated into 'EXAMEN DE BATEAU'. Madame Justice Parfett acknowledged that the terms regardless of their descriptive nature will be restricted from use where an agreement uses plain language such as 'refrain from using' in a 'name', 'trade-mark' or 'in any other manner'.

The Court's willingness to uphold an agreement to restrict Boatsmart Canada from using the terms 'BOAT EXAM' and 'BOATING EXAM' should offer fair warning to all those who enter contracts. It is extremely important to ensure that before a party agrees not to use a translated word that they understand what that word means in the other language, regardless of the descriptive nature of the words. Both parties offer online testing for pleasure craft operating cards.


Claire Palmer, June 2012

There are currently three options available in Canada by which an Applicant can expedite issuance of a patent.  These options are (i) the Patent Prosecution Highway (PPH) Program between the Canadian Intellectual Property Office (CIPO) and various foreign patent offices; (ii) requesting expedited examination under Section 28(1)(a) of the Patent Rules and (iii) requesting expedited examination for green technologies. Each of these options is described below in more detail.

Patent Prosecution Highway (PPH)
The PPH allows for an Applicant to, in effect, leverage the prosecution that has occurred in a cooperating patent office to expedite examination of the corresponding Canadian patent application.  In particular, the PPH program allows a Canadian patent application that meets certain criteria to be advanced out of turn for examination if there at least one corresponding application in a foreign patent office that Canada has a PPH program with that has one or more claims that were found to be allowable.

The Canadian Intellectual Property Office currently has PPH agreements with:

•    Danish Patent and Trademark Office (pilot ending September 30, 2013)
•    German Patent and Trade Mark Office (pilot ending September 30, 2012)
•    Japan Patent Office (pilot ending September 30, 2013)
•    Korean Intellectual Property Office (pilot ending September 30, 2013)
•    National Board of Patents and Registration of Finland (pilot ending September 30, 2012)
•    Spanish Patent and Trademark Office (pilot ending September 30, 2012)
•    United States Patent and Trademark Office (indeterminate)
•    United Kingdom Intellectual Property Office (pilot ending January 30, 2014)

In order to take advantage of the PPH program:

A)    The Canadian patent application and the foreign patent application(s) forming the basis of the PPH request must be corresponding patent applications. More than one foreign patent application may form the basis of the PPH request (see

B)    One or more claims of the corresponding foreign application(s) have been deemed allowable.

C)    All claims on file in the Canadian application, as originally filed or as amended, for accelerated examination under the PPH program sufficiently correspond (i.e. be of the same or similar scope) to one or more of the claims indicated as allowable by the foreign patent office.

D)    The Canadian application is open to public inspection.

E)    A request for examination of the Canadian application has been made, but examination of the application has not yet begun (i.e.  a first Office Action has not yet issued).
It is our experience that filing of a PPH request significantly expedites allowance of the Canadian application.  Accordingly, if the allowed claim scope of the foreign application(s) forming the basis of the PPH request is sufficient to meet the Applicant’s business needs in Canada the filing of a PPH request is an attractive option for both expediting allowance and reducing overall patent prosecution costs.  If however the foreign application(s) only represent a portion of the desired subject matter filing of a PPH request is likely not the best option.  This is particularly relevant in view of differences in unity of invention or restriction requirement practices between the CIPO and foreign office especially when Canadian “double patenting” standards are taken into account.  
This issue is of particular concern where the foreign patent application(s) forming the basis of the PPH request are U.S. applications. It is our experience that the USPTO restrict subject matter that the CIPO regard as being linked by a single inventive concept.   

With reference to the Figure above, if the allowed application in Figure A forms the basis of a PPH request in Canada, it would be necessary to pursue the subject matter of the pending U.S. divisional application in a separate Canadian application if the Applicant wished to maintain this subject matter in Canada.  There is however a significant risk that any Canadian divisional application would be rejected for “double patenting” unless it can be established that the divisional application is directed to patentably distinct subject matter. As the Canadian standards of unity generally correspond to the PCT standards, a review of the International Examiner’s assessment of unity of invention may provide some indication of what the assessment of unity will be in Canada.  Nevertheless, if the subject matter of the pending divisional U.S. application is critical the best option would likely be to pursue the subject matter of both the allowed U.S. application and the pending divisional U.S. application in a single Canadian application and forego the PPH.

With reference to Figure B, both the allowed U.S. application and allowed divisional U.S. application could form the basis of a PPH request for a single Canadian application.  In such a situation the claims of the Canadian application could be amended to include the claims of both allowed U.S. applications. If the Examiner finds a lack of unity between the claims originating from the allowed US application and the allowed divisional US application, an office action will issue otherwise the subject matter of both U.S. applications will proceed in a single Canadian application.    

There are other instances where jumping ahead of the examination queue under the PPH program may not be in the Applicant’s best interest including were the jurisprudence or laws in the foreign jurisdiction are more restrictive or counter to those in Canada.  This may be particularly relevant when one considers what constitutes patentable subject matter and support requirements in Canada versus the other PPH jurisdictions.  

Accordingly, there may be significant value to a Canadian application if one can afford the time to prosecute the application based on broader claims that may have been previously cancelled or withdrawn during foreign prosecution. These claim strategy options are not available for a patent application being examined under the PPH program.

Expedited Examination under Section 28(1)(a) of the Patent Rules

A second route by which an Applicant may expedite examination of a Canadian Patent Application is to file a request under Section 28(1)(a) of the Patent Rules. Under Section 28(1)(a) of the Patent Rules, the Commissioner shall advance out of its routine order the examination of the application on the request of (a) any person, on payment of the fee if failure to advance the application is likely to prejudice that person’s rights.

An application is not eligible for expedite examination if, after April 30, 2011, an extension of time is requested or the application is deemed to be abandoned under Subsection 73(1) of the Patent Act. (See  Accordingly, if a request for an extension of time is filed or the application is deemed to be abandoned under Subsection 73(1) it will be return to ordinary examination.

Expedited Examination of Green Technologies

There is also the option of requesting expedited examination for Green technologies. Please note that there is no fee associated with this but a declaration that states the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources is required. Also applications which use this option are specifically listed on the Canadian Patent Office website. Currently, 52 applications are listed as taking advantage of this program.

What is SOPA? And what happened?

Kamaldeep Sembi, February 2011

Much has been made regarding the recent flurry of media coverage over the Stop Online Piracy Act (SOPA). This article briefly summarizes the key aspects of the United States bill itself, implications for Canadians, and what lies ahead.

What is SOPA?  And what happened?

The Stop Online Piracy Act (SOPA) is aimed to increase the scope of current law enforcement mechanisms in the United States to combat copyright infringement and counterfeit goods. Proponents of the bill championed the initiative stating that new tools will provide effective protection for intellectual property rights, while conversely critics argued the legislation is overbroad, extending to suppress fundamental rights such as freedom of expression and causing unnecessary censorship of the internet.

Within the bill several key provisions were seen as contentious with one example being section 102 which states that service providers shall technically prevent all its subscribers from accessing foreign infringing websites. This type of provision is aimed at curtailing large scale piracy havens such as “” whose operations fall outside United States jurisdiction. It is, however, the technical measures imposed by law for service providers to block access to foreign websites for all its subscribers that leave many questioning how far the law may extend. The technical blocking of full websites by their Domain Name System (DNS) is argued by some to change the technical nature of internet operations and in effect censor certain websites from subscribers.

Examples like the one mentioned above were used as a lightning rod to mobilize content users and content distributors. The movement gained an enormous amount of traction; even the White House took a position stating that although they are in favour of increasing protection surrounding copyrighted content, they will not support legislation that reduces freedom of expression.

Furthermore, industry heavyweights such as Google, Facebook, Yahoo!, and Twitter entrenched their position of opposing the bill. On January 18th many commonly accessed websites including “blacked-out” their websites in protest to bring awareness to the issue.

Finally on January 20th Lamar S. Smith, the congressman who introduced the bill, pulled the legislation off the table, citing that a revisiting of the issue was required in order to properly address the underlying problems.

Canadian Implications of SOPA

As Canadians, one would likely not be worried about foreign legislation as the relative impact would be minimal. SOPA, however could have had far reaching implications beyond the borders of the United States. The two main focal points of discussion are the extra-jurisdictional reach afforded, and heavily used content services being altered.

To the first point, the bill affords “in rem” jurisdiction with respect to any website that does not fall within the jurisdiction of the United States. In effect, any foreign website would be treated as a domestic one for purposes of enforcing tougher copyright enforcement provisions. Furthermore, if the aggrieved party wishes to challenge allegations, the jurisdiction is designated to United States courts.

While the first point is more of a legal argument for most, the second point targets the masses. Websites such as YouTube, Google, and Facebook (which are used heavily by Canadians), could have their basic operations reconfigured due to SOPA. Namely, a “chilling effect” of available services and content could ensue, whereby users would be reluctant to post potentially legitimate content and website moderators would take down potentially legitimate content in fear of legal repercussions.

Therefore, while not purely exclusive to Canadians, the global effect with “in rem” jurisdiction and potential revised functionality of major content providers could have large implications for the general population.

What Lies Ahead

While SOPA is currently dead, the underlying issues are not. Another bill is likely to succeed SOPA implementing a new strategy to combat copyright infringement and counterfeit goods.

The consensus amongst all is that greater protection measures should be employed to defend content creators. The disagreement lies in the implementation. A telling quote is that of respected Apple co-founder Steve Wozniak who is quoted in the Vancouver Sun on January 24th as follows:

“I have friends in the music industry and in the movie industry who are being hurt by piracy. They need to be protected. I am an inventor with patents and I understand the need for protection. I do have strong feelings that what SOPA is trying to do is proper and needed. I just don’t trust the people who would enforce this bill. It gives them far too much power. It looks like the electronic version of the Patriot Act, which I am also against. Our own civil liberties and constitutional rights would be trampled again.”

This sentiment seems to be echoed by the majority of the parties involved in that the ideal of superior intellectual property protection should not be achieved by restricting internet neutrality and fundamental rights.

Remarks made by SOPA’s chief sponsor Lamar S. Smith cited the need for a new approach and further consultations with industry leaders. Many would see this as a positive note, as the chief sponsor has communicated that a clear and novel analysis of the issues is essential to the process going forward.

New brand coming soon

The New Year is almost upon us and we are busy preparing for some new and exciting changes at MBM that will be taking place very soon!

We live in a world driven by technology that changes daily and so we understand the need to stay current and keep up with these demands.    Our business needs and your needs have grown over the years and we are pleased to announce that in the New Year many of our software systems will be going through an upgrade process which in turn means even better service to you.  There will be no interruption in our service to you as our primary goal is to continue to provide the highest quality service to all our clients.

We are also thrilled to announce that in addition to many of these upgrades and improvements the MBM brand will be changing too!  Our same experienced team is still here but we will soon have a new look that will better reflect who we are and the positive changes we are making.  We look forward to sharing our new look over the coming weeks.  We won’t keep you in suspense for too long so please stay tuned.

Newsflash: Health Canada Brings Clarification

cb photo_98_4ee6a0b78e351Health Canada Brings Clarifications to the Data Protection Guidance Document
Catherine Lemay, December 2011

Health Canada recently announced that section 2.1 of its Guidance Document re: Data Protection has been amended to clarify that the prior approval of a medicinal ingredient in a drug for veterinary use will not preclude the granting of data protection for a drug for human use containing the identical medicinal ingredient or a variation thereof and vice versa.  Health Canada has not provided much rationale for its position other than its consistency with the policy intent underlying the 2006 amendments to the data protection provisions and the 1999 Federal Court of Appeal decision in Bayer Inc. v. Canada (Attorney General), 84 C.P.R. (3d) 129, aff’d 87 C.P.R. (3d) 293 which was rendered under the old data protection regime. 

For more information regarding data protection and other exclusivities in Canada, please do not hesitate to This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

cb photo 109 5616cbbea0f92


Patent Agent

Kay drafts and prosecutes patents in the fields of biochemical, pharmaceutical and molecular biology.
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About MBM

 The process of invention is complete only with the IP protection provided in law. That's where MBM comes in. We match our clients' creative thinking with the creative protection needed to achieve their goals.Read More About MBM

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