The professionals at CPST are thought leaders on intellectual property issues. Check back frequently for the latest updates.
*These publications represent a general discussion of certain legal and related developments and should not be relied upon as legal advice.
Overbreadth: Don’t Let Your Patent Specification Hold Your Claims Back
In Canada, defendants in patent infringement proceedings often plead that the asserted claims are invalid for being overbroad. The doctrine of overbreadth (sometimes referred to as “covetous claiming”) stems from the bargain at the heart of the patent system; it seeks to limit claims to only the invention disclosed to the public in the specification. The doctrine of overbreadth applies where claims are directed to (a) more than is described in a patent, or (b) more than the inventor has invented.
Canadian Border Measures Regarding Intellectual Property Infringements
Like most countries, Canada has a system in place that allows owners of certain intellectual property rights to ask Customs to detain goods at the border that may infringe those rights. This article discusses the details of Canada’s system of border enforcement.
A Concrete Reason to Consider Template Contracts: Patterned Concrete Mississauga Inc v Bomanite Toronto Ltd
A recent decision of the Federal Court of Canada highlights the risks for companies adopting what appear to be "template" or industry standard documents. In such cases, care need to be taken to ensure that you are not infringing copyright.
Fair Minded: Federal Court of Canada Continues to Expand Scope of Fair Dealing
A recent decision of the Federal Court of Canada considered the scope of fair dealing in respect of the use of a copyrighted work in relation to criticism.
What’s the Difference? Patent Claim Differentiation in Canada
In Canadian patent infringement or validity litigation, the patent claims in issue must first be construed in order to ascertain the meaning of words in the claims, as well as the scope of the claims. It is only once this step has been completed that the court can then go on to determine whether the claims are valid and/or have been infringed. Over the years, Canadian courts have developed a number of principles that govern the construction of patents. One of these principles, namely claim differentiation, is discussed in this article.
Fast and Curious: CIPO Announces Steps to Speed up Trademark Examination
In order to address its steadily-worsening backlog, the Canadian Intellectual Property Office has announced some changes to trademark examination procedures that it hopes will speed up the process.
Without Abandonment: A Simplified Way to Add or Amend Claims in Canada after Allowance
With the changes to Canada’s Patent Rules that came into effect on October 30, 2019, an avenue is now available for amending the claims of an application after allowance without the need to abandon and reinstate the application. This avenue simplifies the procedure for having additional claims considered after receiving a notice of allowance, which is routinely desired in view of Canada’s strict double-patenting prohibition.
Handbags and Ochre and Hearts, Oh My!: A Survey of Canadian Trademark Applications for Textures, Holograms, Motions and Colours
In June 2019, the Canadian Intellectual Property Office (“CIPO”) began accepting applications for certain new types of non-traditional marks. We surveyed the applications filed to date for marks indexed as textures, holograms, motions, or colours per se. Our research revealed that the majority of such applications have been improperly (perhaps inadvertently) filed in these categories and/or failed to include the information and details required by CIPO.
Know Your Role: Federal Court Considers its Jurisdiction
The Federal Court of Canada is a creature of statute and only possesses the jurisdiction that has been conferred by statute. However, many claims include subject matter both inside and outside of that jurisdiction. The question of when the Federal Court can and should accepted matters is not always easy. A couple of recent cases highlight that tension.
Watch What You Say! Prosecution History Estoppel in Canada
In Canada, the use of patent prosecution history in litigation proceedings was strictly impermissible until 2018, when the Patent Act was amended. The Act now allows certain submissions made during prosecution to be introduced as evidence for construing granted claims. This practice is now regularly invoked when patent claims are asserted and the accused infringer seeks to limit their scope.
Tasty Trademarks: An Analysis of the Canadian Trademark Applications Covering Taste
A distinctive taste may enable consumers to identify a particular brand. Such tastes can now be the subject of trademark registrations in Canada.
Tips When Using the Madrid Protocol to Register a Trademark in Canada
Filing into Canada through the Madrid Protocol can raise unexpected issues for applicants. In this article, we highlight some of the unique issues related to prosecuting such an application in Canada.
Cannabis Branding - Part 2: Restrictions on Promotion of Cannabis in Canada
Since the legalization of recreational cannabis in Canada in October 2018, there has been a surge of trademark applications filed in connection with cannabis-related goods and services. In the second of our two part series, we take a look at some restrictions on the promotion of cannabis in Canada .
Cannabis Branding - Part 1: What Cannabis Companies Need to Know about Securing Trademarks in Canada
Since the legalization of recreational cannabis in Canada in October 2018, there has been a surge of trademark applications filed in connection with cannabis-related goods and services. In the first of our two part series, we take a look at some of the opportunities and challenges in protecting trademarks in the cannabis space.
With Distinction: Addressing Distinctiveness Objections during Canadian Trademark Prosecution
Objections alleging that a trademark is not inherently distinctive have become one of the most controversial aspects of the changes to Canada’s trademark law. In this article, we review what this objection means and how to consider addressing it.
Canada’s Forever Register: Newfoundland Trademark Registrations
Canadians are at least passingly familiar with the fact that Newfoundland and Labrador has its own time zone. What is less commonly known is that Newfoundland and Labrador also has its own register of trademarks – the only province to do so. Given historical quirks, those registrations may last forever.
Standard of Review For Appeals From The Trademarks Opposition Board in Canada
In December 2019, the Supreme Court of Canada released a decision which revised the standard of review for appeals from various administrative boards, including from the Trademarks Opposition Board.
Brew Branding: Nine Intellectual Property Issues that Craft Breweries Should Consider
As the beer market becomes more crowded, one of the most important business considerations, aside from brewing a delicious product, is branding. We have therefore compiled a list of the top nine intellectual property issues that craft breweries should consider.
Canada’s Official Marks – A Public Nuisance?
Canada’s Trademarks Act, in addition to providing protection for the various categories of trademarks that are recognized around the world (such as word marks, designs, shapes of goods, etc.) also provides protection for the “official marks” of public authorities. As discussed below, official marks can create a number of problems for trademark owners who are looking to protect their marks in Canada. This article provides a summary of the official mark system and discusses some of the options available to a trademark owner who is confronted with an official mark.
Second Kick at the Can: Post-Grant Proceedings Involving Canadian Patents
Once a Canadian patent has issued, it can be the subject of various types of proceedings. This article will provide an overview of both proceedings that are adjudicated by the Patent Office (such as reissue and re-examination) and proceedings that are determined by the courts (such as declaratory actions in respect of infringement and validity).
Out of the Ordinary: Requirements for Describing Goods and Services in Canadian Trademark Applications
One issue trademark applicant's in Canada often face is a requirement to specify the goods and services in "ordinary commercial terms". The requirement of specificity under Canadian trademark law is arguably the highest threshold of any country. Learn more about how to overcome such objections.
You can’t do that! Federal Court quashes the “problem-solution” basis for rejecting claims
In a recent decision, the Federal Court of Canada declared that the policy adopted by the Canadian Intellectual Property Office (“CIPO”) for determining subject matter eligibility of claims to computer-implemented inventions is improper. The CIPO’s policy served as a basis for rejecting many patent applications in Canada, so the decision is welcome news to applicants.
Trademark Licensing in Canada: Everything You Need to Know You Can Learn From The Hells Angels
One phrase most lawyers (and people in general) have likely never uttered is “you should be more like the Hells Angels”. However, an exception may be available when it relates to trademark licensing.
Moving on Up: Increased Costs Awards in Canadian Patent Litigation
In recent years, Canada’s Federal Court has shown a clear trend towards awarding increased costs to the successful party in patent litigation.
Trademark Enforcement Tips and Traps: Navigating Canada’s Trademark System One Year After the Major Changes
On June 17, 2019, the most significant changes to Canada’s trademark system in over 60 years took effect. At the one-year anniversary of the changes, we are assessing the impact that they have had on Canadian trademark practice. We will provide some practical tips and also identify some traps in dealing with the altered trademark landscape, in this case as it relates to enforcement.
Trademark Prosecution Tips and Traps: Navigating Canada’s Trademark System One Year After the Major Changes
On June 17, 2019, the most significant changes to Canada’s trademark system in over 60 years took effect. At the one-year anniversary of the changes, we are assessing the impact that they have had on Canadian trademark practice. We will provide some practical tips and also identify some traps in dealing with the altered trademark landscape, in this case, as it relates to prosecution and maintenance.
The Scent of a Crayon: Unique Complications with Scent and Other Non-Traditional Trademarks in Canada
A distinctive scent may even enable consumers to identify a particular brand. Such scents can now be the subject of trademark registrations in Canada.
Follow the Rules! Recent Changes to Canada’s Patent Procedures
On October 30, 2019, Canada’s Patent Rules were amended to implement changes that were made to the Patent Act. A number of these amendments require applicants to modify their approach to filing and prosecuting patent applications in Canada. Some of the more important changes are summarized here along with recommended strategies to avoid potential pitfalls.