The Federal Court of Canada has dismissed a patent infringement action by Takeda Canada Inc. against Apotex Inc. relating to the drug DEXILANT®, finding that the claims of Takeda’s Canadian Patent No. 2,570,916 (the “916 Patent”) are not infringed and are invalid.

In reaching this decision, the Court held that Takeda failed to either demonstrate or soundly predict the results claimed in the specification at the filing date. While the claims of the 916 patent were directed to an oral dosage of a compound, the study disclosed in the specification related only to an IV dosage of that compound. Although Takeda did conduct a study validating the results, the study was not included in the patent application (or otherwise put into the public domain at the time of publishing). The Court held that this second study would have been required for a person skilled in the art to soundly predict the utility claimed, and therefore found the claims of the 916 Patent to be invalid for lacking adequate disclosure of a prediction of utility.

For related reasons, the Court further held that the disclosure provided in the 916 Patent was insufficient to enable a person skilled in the art to implement the claimed invention as a person skilled in the art would need to undertake further research to achieve the claimed invention based on the disclosure and general common knowledge at the time of filing.

The full decision may be found here.

In continuing its efforts to streamline access to various services, the Canadian Intellectual Property Office (CIPO) announced that it will launch a new online portal for patent services, MyCIPO Patents.

At the initial release in spring, MyCIPO Patents will allow users to:

• file Patent Cooperation Treaty (PCT) national entry requests (NER);
• pay maintenance fees on a single or multiple applications or patents;
• save draft applications and submissions that have not yet been submitted;
• view history of submissions;
• share access among members of the same office; and
• receive an application number immediately upon successful submission of a NER.

When fully launched, MyCIPO Patents will allow users to:

• file new regular applications and divisional applications;
• initiate a submission on a single or multiple application(s) or patent(s); and
• access information and correspondence related to unpublished applications by authorized users (at first, this feature will only be available for applications where all agents of an office are appointed using MyCIPO Patents).

More information regarding the new online portal can be found on the CIPO’s website.

On 1 January 2024, the CIPO updated certain of its service standards with respect to trademark applications and registrations. Notably, these service standards are significantly longer than the previous service standards and more accurately reflect the amount of time it is currently taking for trademark applications to be examined by the CIPO.

In particular, the service standard for the CIPO sending a first action (approval or first report) for an online-filed trademark application has been updated to 18 months for applications using pre-approved descriptions of goods/services and 28 months for applications not using pre-approved descriptions. For reference, as of 31 January 2024, according to the CIPO, the filing date of trademark applications currently being distributed for examination is 19 May 2022 for applications using pre-approved descriptions and 6 June 2019 for applications not using pre-approved descriptions.

The updated service standards can be found here.

Canadian Intellectual Property Office (CIPO) has published a Manual of Patent Appeal Board Procedures for Rejected Patent Applications (the “Manual”).

The Manual intends to provide guidance on the procedures followed by the Patent Appeal Board (PAB) during the course of reviewing rejected patent applications. The topics covered by the Manual include acknowledgement letters, preliminary reviews, written submissions, oral hearings, final dispositions, etc.

For access to the Manual, click here

Following the enactment of Bill 96 in Quebec in June 2022, there has been uncertainty surrounding many of the provisions relating to the new French language requirements for the use of trademarks on products and signage.

Quebec has now released draft regulations addressing some of the concerns with Bill 96. Likely the most significant change is that the regulations define registered trademarks in the case of products (but not for signage) to include pending trademarks. Bill 96 provides an exception by which registered trademarks can appear on products in a language other than French (except where there is a registered French version). Expansion of the definition of registered trademarks to include pending trademarks will make it easier for product manufacturers to fall under this exception.

Other important clarifications for products include that “product” comprises the product’s container, wrapping and accompanying documents, and that French translations of generic/descriptive terms within a trademark must have equal prominence as the non-French generic/descriptive terms.

Click here to read the full draft regulations, click here to read Bill 96, and click here to read our previous discussion of Bill 96.

Microsoft and OpenAI have been sued for copyright infringement in several recently filed lawsuits in the USA.

In late December 2023, The New York Times sued Microsoft and OpenAI for copyright infringement in relation to alleged use of the newspaper’s articles to train artificial intelligence models. The complaint states that “Through Microsoft’s Bing Chat (recently rebranded as “Copilot”) and OpenAI’s ChatGPT, Defendants seek to free-ride on The Times’s massive investment in its journalism by using it to build substitutive products without permission or payment”. The Complaint goes on further to state that the New York Times wishes to hold Microsoft and Open AI liable for “the billions of dollars in statutory and actual damages that they owe for the unlawful copying and use of The Times’s uniquely valuable works”.

Shortly after the Times’s lawsuit, two non-fiction book authors also sued Microsoft and OpenAI for copyright infringement in a proposed class action. Nicholas Basbanes and Nicholas Gage alleged in their class action complaint that the Defendants created their large language model by “engag[ing] in a massive and deliberate theft of copyrighted works created by writers like Mr. Basbanes and Mr. Gage”. Statutory damages of $150,000 per infringed work is sought in the class action complaint.

The lawsuits are a reminder of the prickly legal and ethical dilemmas facing AI tools like ChatGPT that are created using large training sets of data. While both of the aforementioned lawsuits were filed in American Courts, Canadian content creators should be aware of potential forthcoming judicial decisions and/or legislative amendments addressing these issues in Canada.

More information is available at the following two links, here and here.

The British Columbia Supreme Court has issued an interlocutory injunction restraining adidas Canada from using TERREX as the name of one of its retail stores in Vancouver.  Amer Sports Canada Inc, which does business under the name Arc’teryx Equipment, owns a Canadian trademark registration for ARC’TERYX in association with retail store services and operates a retail store on the same block where the adidas Canada location using TERREX was opened approximately one year ago.

The interlocutory injunction is the most recent step in litigation initiated by Arc’teryx in which Arc’teryx alleges trademark infringement, passing off, and depreciation of goodwill in respect of its ARC’TERYX trademark, as well as wrongful suggestions of association between its business and that of adidas Canada contrary to the Competition Act.

The parent company for adidas Canada, adidas AG, owns numerous Canadian trademark registrations, including for TERREX, but notably not in association with retail services. adidas does have a pending application to register TERREX in association with retail store services, and the injunction will expire on issuance of that registration, should it occur before the matter goes to trial.

Further information is summarized here and the full BC Supreme Court decision may be found here.

In an effort to encourage development of semiconductor technologies, the USPTO has announced a new program under the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 to expedite examination of eligible patents.

Applications may be eligible for the program if the invention has one or more technical concepts falling inside CPC classes H10 or H01L (which together cover all semiconductor devices).

An application that is selected will be reviewed by examiners before most other applications rather than in the order they are received, until a first Office Action issues. Further, the fee usually associated with requesting expedited examination is waived for applications under the program.

Interested inventors should hurry, as this is a limited pilot program. Inventors are limited to 4 applications under the program, and it will only remain open until the earlier of December 2, 2024 or 1000 applications being granted under the program (or the USPTO closing the program for other reasons).

More information here.

The United States Patent and Trademark Office (USPTO) recently issued a final rule establishing a separate design patent practitioner bar, allowing practitioners who are admitted to this bar to practice in design patent proceedings only. The rule is effective 2 January 2024. There is currently (i.e. before the rule takes effect) a single patent bar for practitioners in patent matters including utility, plant, and design patent matters before the USPTO. The USPTO notes that creation of the design patent practitioner bar does not affect the ability of practitioners already registered to practice in any patent matters before the USPTO to continue to practice in any patent matters, including in design patent matters.

For more information, see the USPTO’s announcement in the Federal Register here.