The Supreme Court of Canada has issued two judgments that address how the decisions of administrative bodies should be reviewed by the courts: Canada (Minister of Citizenship and Immigration) v. Vavilov, 2019 SCC 65 (Vavilov) and Bell Canada v. Canada (Attorney General), 2019 SCC 66. These decisions prescribe a new test for determining the standard of review that should be used, replacing the previous test adopted in Dunsmuir v. New Brunswick, 2008 SCC 9. We anticipate that the approach that the Federal Court takes when reviewing decisions of the Canadian Intellectual Property Office and its tribunals will be affected by these decisions.

The Duke and Duchess of Sussex (Prince Harry and Meghan Markle) have filed a U.K. trademark application for the mark SUSSEX ROYAL. The application was published on 20 December 2019 and can be viewed on the U.K.’s Intellectual Property Office website. The trademark was filed by their foundation for use in association with a broad variety of goods and services including: printed publications, clothing, campaigning, charitable fundraising, and counseling services. Read more here.

The Canadian Intellectual Property Office has announced that, effective January 1^st, 2020, the fees for certain services associated with geographical indications or industrial design applications and registrations will increase. Specifically, for industrial designs, the fees for examination, maintenance, reinstatement and advanced examination will increase by 2.2%. Similarly, the fee for a request for the protection of a geographical indication will also increase by 2.2%. The revised fees for industrial designs are available here. The revised fees for geographical indications are available here.

A new patent system will be officially launched in Hong Kong on December 19.  Currently it is only possible to apply for the protection of a standard patent in Hong Kong by filing a corresponding application in China, the United Kingdom or Europe and requesting that the protection conferred by that application be extended to Hong Kong.

Going forward, in addition to this existing route for obtaining patent protection, Hong Kong will also allow for standard patent applications to be filed directly in Hong Kong, so that a prior application in another jurisdiction will no longer be essential.  Additionally, Hong Kong’s short term patent regime which allows for a limited eight-year term of protection will remain in place, but such patents may be subject to post-grant substantive examination upon request by a patent owner or a third party with a concern about the validity of such a patent.  Examination will also be required prior to enforcing any short term patent.

More information is available from this press release from the Government of Hong Kong.

Earlier this month the World Intellectual Property Organization released its biennial report on the global state of innovation and intellectual property.  A key finding was that innovative activity was increasingly collaborative and transnational, while originating in a few large clusters located in a small number of countries.  The report identified 30 metropolitan “hotspots”, mostly based in the US, Japan, Germany, China and South Korea, that accounted for 69 percent of patents and 48 percent of scientific activity during 2015-2017.

Read more here.

The Federal Court of Canada recently issued Canada’s first ever site blocking order in Bell Media Inc v GoldTV Services, 2019 FC 1432. The court compelled Canadian internet services providers (ISPs) to take steps to block their customers from accessing websites operated by pirate streaming sites GoldTV.biz and GoldTV.ca.

The plaintiff ISPs (Bell and Rogers) first began pushing the CRTC, Canada’s media regulatory agency, to create a blacklist of piracy sites and to require all other Canadian ISPs to block such sites. When the CRTC declined to do so, Bell and Rogers commenced a lawsuit in Federal Court.  The Federal Court concluded that making a Canada-wide blocking order was ‘just and convenient’ in the circumstances.

This case, along with the Supreme Court of Canada case Google Inc. v. Equustek Solutions Inc, 2017 SCC 34 signals that Canadian courts are more willing to regulate the internet, where internet regulation was traditionally thought to be in Parliament’s realm. Critics fear that this decision could lead to further censorship of the internet and argue that site blocking should only be used as a last resort.

A new bill has been proposed in the United States that is purportedly aimed at reducing drug prices.  The proposed legislation would create a Bureau of Prescription Drug Affordability and Access and is purportedly modelled after Canada’s Patented Medicine Prices Review Board.  In Canada, the Patented Medicine Prices Review Board is responsible for reviewing the prices of patented medicines sold in Canada, among other responsibilities.  The board considers many factors, including comparison to the drug prices in some other countries.

However, the bill proposed in the United States would allow the bureau to void patents providing exclusive manufacture and use of the drug in an effort to allow others to produce a generic version of the drug at a reduced cost.

More information can be found here.

The United States Patent and Trademark Office (USPTO) has published updated guidance for patent examiners to follow when determining whether a claim being examined is directed to patent eligible subject matter. The updates are responsive to comments the USPTO received from the public.

The updated guidelines may be found here.

New Patent Rules have come into force in Canada, marking the completion of Canada’s long journey to modernize its patent legislative regime. The modernized patent legislative regime implements the Patent Law Treaty and is inline with many of Canada’s important trading partners worldwide. The new Rules bring several significant changes to Canadian patent practice. 

Please see our article for a summary of some of the changes.