The federal government is currently seeking public opinions on the possibility of instituting a “patent box regime”. A patent box regime provides a preferential tax rate to income derived from certain types of intellectual property in order to incentivize research and development. Patent box regimes are already in place in 13 European Union member states, among other countries.

According to the Consultation Paper, Canadian entities currently pay more money to foreign entities to use foreign intellectual property than foreign entities pay into Canada to use Canadian intellectual property. As of 2021 Canada had a net loss of more than US$5 billion for the use of intellectual property. Comparatively, the G7 average in 2021 was a net income of approximately US$20 billion. The proposed “patent box regime” is intended to encourage IP development in Canada and thereby eliminate this net loss in intellectual property licencing.

The consultation is open until April 15, 2024. Further information on the consultation may be found here.

In Taillefer v. Canada (Attorney General), 2024 FC 259, the applicant unsuccessfully sought judicial review of a decision of the Commissioner of Patents denying a request to reinstate Canadian Patent 2,690,767 that was deemed abandoned for failure to pay the tenth anniversary maintenance fee.

In this case, the Canadian patent agent sent several email reminders to the applicant regarding the tenth anniversary maintenance fee. However, the applicant did not respond to any of the agent’s emails. As the agent did not receive instructions, the agent did not pay the maintenance fee.

After informing the applicant of the deemed abandonment of the patent, the applicant found the agent’s emails in their junk email folder. The applicant then instructed the agent to seek reinstatement. In the reinstatement request, the agent indicated “[t]o the best of his knowledge, the patent owner did not take any actions which would cause [the] emails to be directed to his junk folder, and had no reason to regularly check his junk folder for relevant emails.”

The Commissioner rejected the request for reinstatement, finding that there was not “any other action that was taken, or even considered, by the agent or the patentee, to ensure that communication channels remain[ed] effective and the Fees [we]re paid on time…”

In rejecting the application for judicial review, the Federal Court stated “it is my view that it was reasonable for the Commissioner to have looked at steps that could have avoided the communication failure and to have expected that the Agent would have additional communication mechanisms in place… Similarly, in my view it was reasonable for the Commissioner to expect that a reasonably prudent patentee would have a system in place to make sure that their email was operating effectively if they were relying on this as the primary communication means to pay their maintenance fees.”

This decision is a reminder of the high bar required to show the due care necessary for reinstatement of a Canadian patent or patent application that was deemed abandoned for failure to pay a maintenance fee.

A copy of the decision is available here.

The United States Court of Appeal for the Fifth Circuit has upheld last year’s decision that Canadian band Nickelback’s song “Rockstar” did not infringe the song “Rock Star” by Snowblind Revival.

The Court of Appeal noted that any alleged similarities between the lyrics of the two songs were “mere clichés of being a rockstar that are not unique to the rock genre.”

Furthermore, the Court of Appeal upheld the findings of the court below that Nickelback did not have access to the earlier song, a necessary component to a finding of copyright infringement: “Inferring access from this evidence would require ‘leaps of logic’ that are not supported by the record…[the] chain of hypothetical transmittals is insufficient …especially in the face of testimony from Nickelback members and relevant executives that they had never heard of Johnston’s song.”

The decision is reported in further detail here. “Rock Star” by Snowblind Revival can be heard here, while “Rockstar” by Nickelback can be heard here.

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.