Dimock Stratton LLP

CBA CLE - Advocacy in Intellectual Property Matters

Thu, 23 May 2013 00:00:00 EDT

Angela Furlanetto will be speaking at the annual Canadian Bar Association's CLE, Advocacy in Intellectual Property Matters: When Time is of the Essence - Getting a Quick Result, taking place in Ottawa before the CBA Judges' Dinner.

More details to follow shortly.

Supreme Court of Canada will not hear appeal on Olanzapine decision

Thu, 16 May 2013 00:00:00 EDT

The Supreme Court of Canada denied Eli Lilly’s application for leave to appeal from the Federal Court of Appeal’s decision in 2012 FCA 232, which upheld the Federal Court’s decision in 2011 FC 1288. The application was denied after the Supreme Court agreed to hear oral arguments, an uncommon step in applications to the Supreme Court.

In denying leave, the Supreme Court declined to weigh-in on the promise of the patent and its role in assessing utility. In the Federal Court’s decision, Justice O’Reilly found Eli Lilly’s patent for olanzapine to be invalid for lack of utility on the basis that the invention did not meet the level of utility explicitly promised in the specification of the patent. The Federal Court of Appeal dismissed Lilly’s appeal of that decision from the bench, providing no substantive reasons.

OBA (YLD) - Your First Intellectual Property Matter: A Practical Guide

Thu, 04 Apr 2013 00:00:00 EDT

Geoff Mowatt will be co-chairing the Ontario Bar Association's (Young Lawyers Division) seminar on Your First Intellectual Property Matter: A Practical Guide.

This course will outline the practical guide for patent, trade-mark and copyright matters in Canada.

The course will touch on the following:

maximizing the value of intellectual property rights
skills for obtaining and enforcing patents
registering, licensing and asserting trademark rights
copyright ownership, transfer and litigation

Ontario Bar Association - Young Lawyers Division

Thu, 04 Apr 2013 00:00:00 EDT

Sangeetha Punniyamoorthy will be speaking at the OBA Young Lawyers Division seminar, "Your First Intellectual Property Matter: A Practical Guide". Sangeetha's session, "Copyright - originating disputes and creating defences", will discuss the following:

Asserting copyright infringement
Defending allegations of copyright infringement
Balancing the value of the right and the cost of enforcement (ethics/professionalism)
Remedies

Federal Court rules on relevant date for assessing sufficiency of patent disclosure

Thu, 21 Mar 2013 00:00:00 EDT

In an application under the Patented Medicines (Notice of Compliance) Regulations, the Federal Court granted the prohibition application brought by Novartis to prevent the Minister of Health from issuing a notice of compliance to Teva for its zoledronic acid IV infusion until the expiry of Canadian Patent No. 1,338,937. The Federal Court dismissed Novartis’ application with respect to Canadian Patent No. 1,338,895, finding Teva’s allegations of invalidity to be justified.

The 937 patent claimed zoledronate, while the relevant claim (i.e. claim 14) of the 895 patent was directed at some 1.2 million compounds, all sharing a selection of molecules on the R1 and R2 positions on a biphosphonic backbone, one of which was zoledronate. Both patents were governed by the “old” Patent Act as it read prior to 1989. Teva had raised allegations that certain claims of both patents were invalid for obviousness, lack of utility, and insufficiency.

With respect to obviousness, the Court held that the inventive concept of the relevant claim of the 895 patent was a family of about 1.2 million novel compounds of specified structure having biological activity as calcium complex formers and inhibiting bone resorption. The Court held that the inventive concept of the relevant claim of the 937 patent was that zoledronate is a useful inhibitor of bone resorption in rats and is suitable for use as a medicament in the treatment of diseases in humans associated with impairment of calcium metabolism. The Court found that it would not have been more or less self-evident that the class of compounds claimed by the 895 patent, or zoledronate as specifically claimed in the 937 patent, ought to work as of the respective dates of invention. There were numerous choices for substitution at the R1 and R2 positions and, at the relevant time, there was no real predictability as to which compounds might work. Accordingly, the allegations of obviousness were found to be not justified.

With respect to utility, the Court found that the inventors of the 895 patent had only tested one compound falling within the scope of the relevant claim prior to filing the priority application, although zoledronate had been made and tested prior to the filing date of the Canadian application. Given the state of the art at the relevant time, the Court found that it was not possible to draw a conclusion as to the suitability of the class of compounds covered by claim 14 of the 895 patent without testing each individual compound. The Court held that, as of the Canadian filing date, the inventors of the 895 patent had not established or soundly predicted the utility of the entire class of 1.2 million compounds claimed therein. As a result, the Court found that Teva’s allegations of lack of utility and insufficiency of the 895 patent were justified.

The inventors of the 937 patent had made and tested zoledronate prior to the filing of the Canadian application and had found it useful for its stated purpose. As the claims of the 937 patent were limited to zoledronate, the Court held that Teva’s lack of utility allegation in respect of the 937 patent was therefore not justified.

To assess Teva’s insufficiency allegations, the Court considered the appropriate date for assessing the sufficiency of an “old Act” patent. The application for the 937 patent, as originally filed, contained genus claims as well as claims to specific compounds including, but not limited to, zoledronate. At the time of filing, the application for the 937 patent did not teach that zoledronate, one of the many compounds then claimed, was the useful and inventive compound that had been tested by the inventors. However, the application was later amended during prosecution and the resulting two claims were specifically directed to zoledronate.

The Court held that the appropriate date for consideration of sufficiency of a Canadian patent is the date of publication, which for an “old Act” patent is the date of issuance. The Court held that, if sufficiency was assessed at the date of filing, the 937 patent failed to properly disclose the invention for the same reasons discussed in Teva Canada Ltd v Pfizer Canada Inc., 2012 SCC 60. However, the removal of the extraneous claims prior to issuance distinguished the 937 patent from the circumstances in Teva. As a result, the Court found that Teva’s allegation of insufficiency of the 937 patent was not justified.

Novartis Pharmaceuticals Canada Inc. v. Teva Canada Limited, 2013 FC 283 (PDF)

New Anti-Counterfeiting Bill introduced in Canada

Mon, 11 Mar 2013 00:00:00 EDT

On Friday, March 1st, 2013, the Federal government introduced Bill C-56, the Combating Counterfeit Products Act. If passed, Bill C-56 would make significant changes to both the Copyright Act and Trade-marks Act by setting out a new anti-counterfeiting regime in both statutes.

This regime would empower the Canada Border Services Agency to detain shipments of suspected infringing goods and also act on requests by rights-holders to detain suspected infringing goods. Detainment would be limited to five or ten days (depending on whether the goods were perishable or not), but could be extended if the rights holder provided proof of pending litigation regarding those detained goods. The regime would include an exception for individual travellers returning to Canada with goods intended for personal use. New criminal offences would also be added to both statutes, including offences for commercial possession and trafficking of counterfeit goods.

Importantly, Bill C-56 would also make significant amendments to the Trade-marks Act. The changes would include a new definition of “distinctive” and replacing the term “mark” with either “sign or combination of signs” or “trade-mark”. Similarly, references to “wares” would be replaced with the term “goods”. Sections relating to “distinguishing guise” would be repealed, but there would be new provisions limiting registrability of trade-marks that have utilitarian function. Further, trade-marks would formally include three-dimensional shapes of goods, modes of packaging, colours, sounds, scents, tastes, textures and any other prescribed sign, but applications for such trade-marks would require evidence of distinctiveness as of the filing date.

Together, these amendments would create an expansive approach to trade-mark law in Canada. That expansive approach combined with the proposed discretionary powers of CBSA customs officers would be a significant change to intellectual property rights protection in Canada.

CIPO releases examination guidelines for computer-implemented inventions

Fri, 08 Mar 2013 00:00:00 EDT

The Canadian Intellectual Property Office today released its long-overdue guidelines on examination of computer-implemented inventions and purposive claim construction, necessitated by the 2011 decision of the Federal Court of Appeal in Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 328 concerning Amazon's so-called "business method" one-click online shopping patent application.

Examination Practice Respecting Purposive Construction - PN2013-02

Examination Practice Respecting Computer-Implemented Inventions - PN2013-03

IPIC - Patent Agent Tutorials

Mon, 04 Mar 2013 00:00:00 EDT

Michael Crinson will be speaking at the Patent Agent Tutorials. He will be participating in the infringement and validity session.

Court rules trademarks based on foreign registration require foreign use at filing

Thu, 28 Feb 2013 00:00:00 EDT

The Federal Court of Canada has weighed in on an important issue relating to applications based on foreign use and registration. Justice Manson held in the recent decision in Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127 that there must be proper qualifying use of a trademark in the foreign jurisdiction in order to file a trademark application claiming use and registration abroad.

Canadian trademark applications require at least one valid basis for registration. The common bases are: 1) use in Canada; 2) proposed use in Canada; and 3) use and registration abroad. The use and registration abroad basis, pursuant to s.16(2) of the Trade-marks Act, has the advantage of allowing foreign applicants to register their marks in Canada before use in Canada has actually commenced. However this basis requires use abroad. Some Canadian practitioners have, at least prior to this decision, filed on the basis of “use and registration abroad” without requiring use abroad at the time of filing. The Federal Court has held that such applications are now invalid.

In Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127, the application of the trademark at issue had been filed on the basis of use and eventual registration in the U.S. despite the fact that there was no use in the U.S. as of the Canadian filing date. The Federal Court upheld the rejection of the application by the Opposition Board on the basis that there was no use in the U.S. at the time of the application. Justice Manson held: There is no doubt a proper reading of that section requires that, at the time of filing the application, if an applicant relies on registration or application and use abroad pursuant to that section, there must have been use of the trade-mark at the time of the application to rely on this section as a valid basis to obtain registration in Canada.

This case highlights the importance of ensuring use in the foreign jurisdiction when relying upon the use and registration abroad basis in a Canadian trademark application. In addition, practitioners should also include one or more additional bases for filing in case one of the basis is held to be invalid. In the meantime, we expect that this decision will be appealed to the Federal Court of Appeal.

Benchmark Canada recognizes Dimock Stratton

Tue, 26 Feb 2013 00:00:00 EDT

Benchmark Canada once again lists Dimock Stratton as a recommended litigation firm.

Boutique Dimock Stratton has carved itself a niche in the Toronto market in that it is not only one of the few IP-specific shops to put as much of a premium on litigation as it does non-contentious work, but it is also one of the only noted IP litigation firms to attain this stature through work other than pharmaceutical. Dimock and company do it all, they just get some really cool, fascinating stuff.

The directory mentions four of the firm’s partners, Ron Dimock, Bruce Stratton, Angela Furlanetto and Michael Crinson, with Angela and Mike flagged as Future Stars.

Ron Dimock was described as “an all-purpose IP practitioner and cheered by peers and clients alike for his keen acumen with a mind-boggling array of patent issues. One client stated, Ron Dimock is one of the most skilled lawyers I've ever met, anywhere. In negotiations he exudes a kind of quiet and persuasive competence that earns him a lot of respect from his adversaries.”

Benchmark Canada also noted that “peers point to Bruce Stratton for his representation of Easton Canada Sports in the appeal of a patent on hockey skates. In January 2011, the Federal Court of Appeal upheld the trial decision.”

Angela Furlanetto and Mike Crinson are referenced as emerging talent: “They may not have the high-profile brand the name partners do yet, but they are definitely starting to man the oars on some notable work.”

Dimock Stratton congratulates the winners of the 5th annual Fox IP Moot

Tue, 26 Feb 2013 00:00:00 EDT

Dimock Stratton LLP congratulates all participants and the award winners of the fifth annual Harold G. Fox Moot, which was held on February 22-23, 2013:

Harold G. Fox Cup for the best mooting team: Robert Trenker and David Bowden, Osgoode Hall Law School
Donald F. Sim Award for the best oral advocate: Kevin Siu, University of Toronto
Gordon F. Henderson Award for the best factum writers: Ryan Keller and Ryan Heighton, Osgoode Hall Law School
Kevin Siu of University of Toronto was the recipient of the 3rd Annual Dimock Stratton LLP Award, which was given for Mooting Excellence. Kevin and a team-mate will be invited to represent their law school in the 2014 Oxford International IP Moot in Oxford, England.

The Harold G. Fox Moot was co-founded by the University of Windsor and Dimock Stratton LLP, title sponsor. Named in honour of one of Canada's leading intellectual property scholars, the moot promotes education in the intellectual property field. The moot drew participants from law schools across Canada, and was held at the Federal Court in Toronto. Respected jurists from the Supreme Court of Canada, Federal Court of Appeal, Ontario Court of Appeal, Quebec Court of Appeal, Federal Court, Ontario Superior Court, and the United States Court of Appeals for the Federal Circuit, as well as lawyers from the IP bar, graciously volunteered their time as panelists.

Dimock Stratton would also like to thank the sponsors as well as the volunteers and organizers of the moot for their hard work in making the fifth year a resounding success.

Harold G. Fox IP Moot

Fri, 22 Feb 2013 00:00:00 EDT

Dimock Stratton is pleased to present the fifth annual Harold G. Fox Moot on intellectual property law which will be held at the Federal Court in downtown Toronto. There will be 5 law schools participating, including teams from, Osgoode Hall Law School, Queen's University, University of Toronto, University of Western Ontario, and Windsor University. The event will also feature judges from the Supreme Court of Canada, Federal Court of Appeal, Federal Court, Ontario Superior Court, Ontario Court of Appeal, and on the final panel, the United States Court of Appeals for the Federal Circuit.

This event provides participants the opportunity to interact with jurists of these various courts and with experienced practitioners of intellectual property law.

For more information on the event please visit here.

Ron Dimock - Intellectual Property Litigator of the Year - Patents

Wed, 06 Feb 2013 00:00:00 EDT

Ron Dimock received the Intellectual Property Litigator of the Year – Patents Award at the Benchmark Litigation awards banquet on Tuesday February 5th at the Park Hyatt Hotel in Toronto.

The first stage of research in developing the awards shortlists was the most recent edition of Benchmark Canada. This involved months of interviews with litigation partners based across seven provinces and many practice areas on their work as well as review of their peers with questionnaires submitted by firms as well as references from in-house corporate legal counsel. All of this was followed by telephone interviews with lawyers and clients.

17th Annual Intellectual Property Law: The Year in Review

Thu, 10 Jan 2013 00:00:00 EDT

Ron Dimock will be speaking at the 17th Annual Intellectual Property Law: The Year in Review. The half day seminar will take place at Osgoode Hall Donald Lamont Learning Centre put on by The Law Society of Upper Canada.