The Federal Court recently issued a decision in 1395804 Ontario Ltd. (Blacklock’s Reporter) v. Canada (Attorney General), 2024 FC 829 arising from a summary judgement motion brought by the Attorney General of Canada.

Blacklock’s Reporter, a subscription-based news corporation, alleged that officers at Parks Canada acted contrary to the Copyright Act (the “Act”) by sharing a password to a single subscription to obtain and internally distribute Blacklock’s Reporter’s news articles. The Attorney General of Canada’s motion sought various declarations from the Court, which could also impact on other pending cases between the Crown and Blacklock’s Reporter.

The Court granted a declaration that Parks Canada’s use of the password in the circumstances constituted fair dealing under section 29 of the Act.

The Court considered that Parks Canada purchased the only type of subscription available, which provided the password required to access news articles produced by Blacklock’s Reporter. The Court also took into consideration that the subscription was used solely for monitoring news articles directly related to Parks Canada’s mandate and operations, which constituted fair dealing for the purpose of research.

The Court declined to address the issue of whether a password is a “technological protection measure” as defined in section 41 of the Act, but did grant a declaration that the licit acquisition and valid use of a password does not otherwise constitute circumvention of the technological protection measures of the Act.

For more information, read the decision here.

In Eli Lilly Canada Inc. v. Apotex Inc., (2024 FCA 72), the Federal Court of Appeal (“FCA”) considered the threshold for sufficient disclosure of a patent application in reviewing the decision of the Federal Court that found various claims of Canadian Patent No. 2,226,784 to be invalid.

The appeal centered largely on the definition of a “physiologically acceptable salt of tadalafil” and whether the patent provided sufficient disclosure regarding physiologically acceptable salts of tadalafil.

While the FCA confirmed that a patent specification may be sufficient even if some amount of non-inventive trial and error experimentation is required to re-create the invention, the FCA ultimately upheld the decision of the Federal Court citing evidence that the search for a physiologically acceptable salt of tadalafil requires a lot of experimental work and requires a skilled person to exercise some degree of inventiveness.

A copy of the full decision is available here.

In November 2017, Performance Mechanics Panthera Motorsports Inc. filed a Canadian trademark application for the PANTHERA logo ( ) covering motorcycle and off-road vehicle engines and sporting clothing.  The application was opposed by Jaguar Land Rover Limited on several grounds, including a likelihood of confusion between the applied-for mark and Jaguar’s registered marks for the Leaper logo ( ).

Both parties filed evidence before the Trademarks Opposition Board. Notably, Panthera filed an affidavit introducing evidence of the state of the Trademark Register.

In a decision issued on May 29, 2023, the Trademarks Opposition Board found that there was a likelihood of confusion between Panthera’s logo and Jaguar’s Leaper logo and refused registration of Panthera’s trademark.  In reaching this decision, the Trademarks Opposition Board noted that in considering the circumstances of the case, with respect to the state of the Trademark Register, the affidavit filed by Panthera was insufficient, as it did not provide any information regarding the marketplace use of the trademarks identified in the affidavit.

Panthera appealed the decision to the Federal Court and filed a new affidavit introducing evidence regarding the commercial use of images of felines in the vehicle industry.  The Court accepted the new evidence, considering it as “being important and having sufficient probative value relevant to the case” and that it would have had an impact on the Trademarks Opposition Board’s decision in relation to the likelihood of confusion ground of opposition.

In light of the new evidence filed, in a decision issued on May 27, 2024, the Court found that Panthera’s mark was not likely to cause confusion with Jaguar’s brands and rejected the opposition.  Among other things, the Court noted that the evidence demonstrated that the use of images of felines was widespread in the vehicle industry, and Panthera’s evidence of actual use of these trademarks favoured Panthera’s argument that there was no likelihood of confusion between and .

The College of Patent Agents and Trademark Agents (CPATA), the independent regulator of patent and trademark agents in Canada is responsible for administering examinations that qualify candidates to practice in Canada.  Recently, CPATA had embarked on an initiative to overhaul the examinations.  The examinations were previously divided into several papers directed to different areas of practice and tested both knowledge and skills.

As a result of the initiative, the examinations have been reorganized into separate knowledge examinations and skills examinations. Candidates are required to demonstrate competency on the knowledge examinations in order to be eligible to write the skills examinations.

The first of the knowledge examinations was administered in March 2024.  On May 1, CPATA released the results of these first knowledge examinations.  86% of candidates demonstrated competency on the Trademark Knowledge Examinations. 96% of candidates demonstrated competency on the Patent Knowledge Examinations.

The first skills examinations will be administered for the successful candidates in the fall.

For more information, please see CPATA’s article here.

An application for leave to appeal the decision in Pharmascience Inc v. Janssen Inc. (2024 FCA 23) was recently filed by Pharmascience in the Supreme Court of Canada (SCC).

In the Federal Court of Appeal (FCA) decision, the FCA upheld the Federal Court’s finding that the claims of the relevant patent owned by Janssen reciting a dosing regimen did not comprise unpatentable methods of medical treatment and were valid. The FCA noted, in part, that “whether… a dosing regimen relates to a method of medical treatment cannot be based exclusively on whether its dosing and schedule is fixed or not” and “[t]he proper inquiry remains whether use of the invention… requires the exercise of skill and judgment” (at para 37). The Court also stated that it would be difficult to provide more detailed guidance on this issue since allegations that claims are invalid due to claiming methods of medical treatment will generally turn on the particulars of the case and the evidence on record (at para 37).

If leave to appeal is granted by the SCC, this would give the SCC an opportunity to consider and potentially clarify the framework for assessing the patentability of methods of medical treatment.

Read the FCA’s decision here. View the Supreme Court of Canada case information for this leave to appeal here.

The Federal Court of Appeal (“FCA”) recently considered the issue of what constitutes “use” of a patented invention for the purposes of proving infringement of a patent under section 42 of the Patent Act (the “Act”).

Steelhead LNG (Aslng) LTD. (“Steelhead”), appealed a summary trial judgment of the Federal Court wherein the Federal Court dismissed Steelhead’s patent infringement action against Arc Resources (“Arc”).

At the summary trial, Steelhead argued that Arc used Steelhead’s invention and infringed Steelhead’s patent by disclosing to prospective business partners and stakeholders, as a proof of concept, drawings, specifications and cost estimates of a design which, if ever built, would allegedly infringe the patent. Notably, such design was never built. The motion judge reviewed the relevant case law and concluded that the case law indicates that infringement under section 42 of the Act requires physical use of the invention. Consequently, the motion judge dismissed Steelhead’s claims.

At the appeal, Steelhead advanced the argument that the meaning of “use” under section 42 of the Act grants a patentee the exclusive right, privilege and liberty of using the goal, purpose or advantage of an invention for commercial benefit. However, the FCA was not persuaded by Steelhead’s argument. The appeal was dismissed accordingly.

A copy of the full decision is available here.

The Federal Court recently released a decision in Alam v. Drew Bieber (2024 FC 499) arising from a motion for default judgment. The plaintiff, a self-represented litigant, had alleged that Justin Bieber infringed the plaintiff’s “copyright in the song and in the lyrics” with Bieber’s song “Stay”.

The defendant did not file a statement of defence, and in fact, the only documents filed by the defendant were those responding to the plaintiff’s motion for default judgment. Nevertheless, the court dismissed the case and issued costs of $850 against the plaintiff.

The court described how the plaintiff failed to follow the Federal Courts Rules in numerous ways, including failing to disclose a proper cause of action in the pleadings, failing to properly effect service, failing to properly bring documents before the court, failing to properly swear affidavits, and failing to file evidence on the merits of the claim. All together, these failings were fatal to the plaintiff’s case and resulted in costs awarded against him.

Self-represented litigants should take this case as a warning that bringing an action in Federal Court is a complex task, which can easily fail due to technicalities. Self-represented litigants should carefully review the Federal Courts Rules to minimize the chances of their cases being dismissed on technical grounds, or consider whether they may be able to bring an action in provincial small claims courts, which may be significantly easier to navigate for self-represented litigants.

The CIPO recently released a practice notice stating that the 2^nd, 3^rd, and 4^th anniversary small entity maintenance fees for the years 2021 to 2024 were incorrectly published on the CIPO’s website. The fee was listed as $50 and failed to account for adjustments for inflation per the Service Fees Act. 

Despite the erroneous information, for payments made between 1 January 2021 and 28 March 2024, any $50 payment made for a 2^nd, 3^rd, or 4^th anniversary small entity maintenance fee will be considered fully paid as the fee deficiencies have been waived by the Commissioner.

As a transitional measure, for payments made between 29 March 2024 and 28 July 2024, applicants and patentees that pay $50 for a 2^nd, 3^rd, or 4^th anniversary small entity maintenance fee will be considered to have paid that fee in full. However, from 29 July 2024 and onwards, applicants and patentees must pay the full amount of $56.21.

Accompanying the fee waivers, amendments to the Patent Rules were made giving the Commissioner the discretion to waive underpaid portions of fees when the Commissioner provided erroneous information regarding such fees.