CIPO Practice Exam Wrong Answers

Under what section of PA and PR is priority?

28.4 PA, 88(1) PR

Who can pay US maintenance fees and on which dates are they due?

3.5, 7.5, 11.5 years from date of issuance (grant) Who can pay? Maintenance fees and any necessary surcharges may be paid by the patentee or by any person or organization on behalf of a patentee.

What section of Patent Act permits pre-grant intervenor proceedings of protest?

s. 34.1 (Last chance for protest before marriage/patent license issued! or forever hold your peace. people get married at age 34)

What section of which act governs entitlement? (applicant name matching etc. within 3 months of requisition)

s. 37(1)-(4) PR

What section of Patent Rules governs national phase of PCT application? What about entitlement?

s. 56-58, etc! and 37(2) PR

You recently filed a Canadian patent application on instructions from a US attorney. The application claims priority from US provisional applications filed on February 10, 2009 and September 10, 2009. The US attorney telephones you today, and explains that a scientific publication based on experiments disclosed in the Canadian application is to be published in August 2010. The inventor has agreed not to publish any results prior to the scientific publication, so it is important that the application not be published until after August. (i) [2.0 marks] Is it possible to withdraw the application to prevent its publication? State the required steps and relevant deadline(s).

yes before payment of final fee? or pre issuance??

Time limits applicable for entry into the national phase:

Under PCT Article 22(1): 30 months from the priority date1 Under PCT Article 39(1)(a): 30 months from the priority date1

What is the patent agent's duty to disclose (voluntarily) prior art, or anything else that may compromise a patent application? a) After requesting examination of the Canadian application, you receive an office action that makes reference to one prior art document - a PCT publication. An office action has not yet issued in respect of the U.S. application, and no information disclosure statements have been filed. As your client's agent, you have a duty to disclose the PCT publication to the U.S. Patent Office. True or false? (1 mark)

true due to case law on abandonment in violation of duty of candour - *Searle v Novopharm* True, despite there being no enshrined duty of candour analogous to US provisions, Canadian patent agents should deal with the Canadian IPO by employing the highest duty of candor and making voluntary pruior art submissions in light of recent case law. Specifically, certain case law suggests that there is a duty of candour operating in Canada: in Canada, there is an obligation to reply in good faith to any requisition made by an examiner, else a patent application may be abandoned. While historically it was thought there was a safe harbor 'good faith' exception whether an incorrect response made in good faith would not result in abandonment, the good faith safe harbour was extinguished in SEARLE V NOVOPHARM, in which *failure to voluntarily provide publicly disclosed results of tests formed part of the prior art and resulted in abandonment*. Because the communications between the examiner and a patent agent are ex parte (i.e. without cross examination and not adversarial) the court stressed that there is a high onus on the agent to present their position fairly and without bias). The application was also deemed abandoned where an agent unjustifiably argued that prior art taught AWAY from a patent when it actually provided examples of both, in which case the patent was also deemed abandoned. All of this points to the importance of candour during Canadian prosecution, which could conceivably extend to providing all known relevant prior art information during prosecution. While a more recent decision of Weatherford v Corlac 2010 held that 'the concept of abandonment ... operates during the prosecution of an application for a patent' and that 'its operation is extinguished once a patent issues' on the other hand, it stated that there 'is no doubt a duty to act in good faith in dealing with the Patent Office, as recognized by Justice Hughes in GD Searle v Novopharm. Thus, it is still *good prosecution practice to provide prior art information voluntarily through all stages of prosecution, even if it is questionable whether failure to do so results in abandonment of a subsequently issued patent* - err on the side of caution to protect the applicant's/your client's interests!*

Explain how national phase works. How can you elect certain countries following a PCT app?

The filing of a request constitutes the designation of all Contracting States that are bound by the Treaty on the international filing date. However, some States may be excluded from this all-inclusive designation where they have notified the International Bureau that Rule 4.9(b) applies to them (see International Phase, paragraph 5.053). National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.

Which section of the Patent Rules prevents amendment where it would necessitate a further search?

Paragraph 32(b) of the Patent Rules states that an application shall not be amended in a way that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Patent Act or Patent Rules. *If you are 32 you probably ain't changing*

What section is assignment? PA?

50

Describe prior user and the relevant case. *important*

Disclosure of an invention prior to the filing of a patent application can have disastrous consequences for an inventor. In order to obtain a valid Canadian patent, the Canadian patent application must, among other requirements, be filed within one year of the date that an inventor (or person deriving knowledge from the inventor) makes the subject matter of the invention available to the public anywhere in the world, and before the date any other person does so. In recent cases, Canadian courts have been asked to decide whether prior use constitutes making subject matter "available to the public". 2013 Oct 21 SAM-JAM_Canadian Federal Courts Consider When Prior Use Invalidates a PatentWhat is meant by making the subject matter of the invention "available to the public" can be a complex issue, particularly where the inventor makes a "black box" disclosure of the invention in which the public may see the invention at work, but not have access to the invention to understand how it works. This scenario was considered by the Canadian Federal Courts in Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2012 FCA 333 ("Wenzel") and more recently in Varco Canada Limited et al v Pason Systems Corp et al, 2013 FC 750 ("Varco"). Wenzel is an appeal from the decision of Justice Snider of the Federal Court in 2011 FC 1323 allowing National-Oilwell's counterclaim invalidating Canadian patent No. 2,026,630 (the "'630 Patent") belonging to Wenzel Downhole Tools. The '630 Patent relates to a bearing assembly for a drilling motor used in the oil and gas industry. Justice Snider found the patent invalid on the basis of prior public disclosure, amongst other things. The allegation of prior public disclosure in Wenzel related to the use of a bearing assembly (the "3103 assembly") designed by a third party and rented to and used by Ensco Technology Company ("Ensco") without any obligation of confidentiality prior to the filing of the application for the '630 Patent. Justice Snider concluded that the 3103 assembly contained the subject matter of the claims of the '630 Patent and went on to consider whether the rental constituted a disclosure that made the subject matter of the 3103 assembly available to the public. In this case, the 3103 assembly was encased in a steel tube and a visual inspection of the units rented to Ensco would not have disclosed their inner workings. However, the inner workings of the units could be discerned if the drilling tool was dismantled. It would not have been usual or easy for the user to open the casing and there was no evidence that the user made any effort to do so. Justice Snider equated this situation to the availability of a book in a library that discloses a patent even though no one has read the book. She stated that the 3103 assembly could have been dismantled and Ensco was free to use the resulting information. Accordingly, the '630 Patent was invalid for a lack of novelty since the 3103 assembly was available for more than a visual inspection by Ensco, thus making the subject matter of the '630 Patent available to the public before the patent's filing date. The decision was appealed to the Federal Court of Appeal where the court was split on the issue of whether the invention was made available to the public. Justice Gauthier for the majority agreed with Justice Snider's approach to determining whether a prior use of an invention made it available to the public. At paragraph 69 she stated: The book in the public library could be in Japanese, even though the library is located in a remote village where no one speaks Japanese. This would still be a disclosure that would make whatever information it contained available, even though accessing the information that is available requires the use of a dictionary or even an interpreter that would not be available in that village. Thus, according to this legal test, access to the information does not need to be easy if there has been an opportunity to access the information using known methods and instruments. Justice Mainville disagreed with the majority's finding of a lack of novelty on the grounds of prior disclosure. He noted that special tools would be required to take apart a drilling motor at a rig site and the evidence was that this was never done in practice. He concluded that the subject matter of the 3103 assembly had not actually been made available to the public. In qualifying the opportunity necessary to access the relevant information in order to satisfy making an invention "available to the public", the Federal Court of Appeal was split. The majority affirmed the trial court's decision that the public must simply have a theoretical opportunity to access the invention in order to constitute disclosure. Justice Mainville required something more and considered access in this case to be difficult enough that there was no disclosure. The Federal Court of Appeal also considered disclosure to the public in Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361, aff'd 2011 FCA 83 ("Bauer"). At trial, Justice Gauthier held that the act of wearing hockey skates in a hockey arena open to the public during a practice did not amount to making the invention "available to the public". The players were subject to confidentiality obligations, but the people watching the event were not. This decision could be considered to be at odds with Wenzel in that a theoretical opportunity to access the invention was not sufficient to make the subject matter of the invention available to the public. However, the decisions may be reconcilable. In the Bauer case, the skate was available to the public in a manner that prevented any member of the public to do anything more than make a visual inspection from afar. In contrast, on the facts of Wenzel, the 3103 assembly was available to Ensco for dismantle and inspection without any obligation of confidentiality. Thus, it appears that the possibility that someone could dismantle and inspect the item disclosed will be sufficient to make subject matter available if that subject matter could be ascertained by doing so. Earlier this summer, the Federal Court followed this approach and upheld the validity of a Canadian patent for an autodriller system for directional drilling used in the petroleum industry. In Varco, the inventor tested a new design in downhole rig equipment on an operating well owned by a third party prior to filing a patent application for the invention. Similar to Wenzel and Bauer, visual inspection of the exterior of the autodriller system did not itself reveal the workings of the invention or enable a skilled person to describe how the invention worked. However, in contrast to the disclosure in Wenzel, the inventor in Varco took steps to ensure that the device could not be inspected by locking the device. Despite the absence of any confidentiality agreement, the Court found that the inventor had intended to keep the invention confidential. Further, there was no evidence that the inventor told or showed any third party how the device worked and the Court was therefore able to distinguish Wenzel on the facts and find that there was no opportunity for the public to inspect the inner workings of the device. In summary, based on these decisions a Canadian patent may be declared invalid for a lack of novelty by prior disclosure if a member of the public has an opportunity to access information that would enable a person skilled in the art to be in possession of the invention. Thus, it is of paramount importance to protect an invention from public disclosure by ensuring the proper safeguards are in place, including non-disclosure and other confidentiality agreements.

What section governs top up of maintenance fees or small entity fees? *important*

s. 26(4) PR

What section PA governs top up of fees?

78.6 transitional provisions.

What is relevant date for enablement/utility/full description? Everything else?

Grant/issue date (POSITA must be enabled to replicate invention based on CGK at publication date! Not filing date!) Filing or priority date

D8. Your client wants to file a divisional patent application from its Canadian patent application. However, they have received a Final Action in connection with the Canadian patent application. Can the divisional patent application still be filed? If not, why not? If yes, what are the requirements for doing so? 2 marks with reference to applicable law

(What's the right answer? Is the voluntary divisional application due PRIOR to issuance of parent, and THEN request for examination is due at later of 6 months post filing divisional/5 years post filing parent/original?) After a final action is issued by an examiner, this suggests an impasse and that unless a substantial change is made, the matter will be passed on to the PAB and Commissioner for further review. If your client wants to file a divisional application, he/she generally has until the issue date. In this case, however, filing a divisional application may be viewed as an amendment, which is not possible if it will require the examiner to conduct an additional search. Paragraph 32(b) of the Patent Rules states that an application shall not be amended in a way that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Patent Act or Patent Rules. Because this is not an amendment but a voluntary divisional application I would say YES you can still file. You need to, under s. 96(1) of the PR, submit a request for examination (name and address, name and address of applicant if it is someone else, and the patent application #) and then pay item 3 of schedule II before the later of: the expiry of the five year period following filing of the original/parent OR the six-month date after which the child/divisional is actually filed.

Requirements to register assignment

*Assignor, assignee, patent #, and rights assigned, copy of document, affidavit, statements by witness and requested that signed and executed by all parties including assignor, with a seal, proof of registration elsewhere* Use of this form, http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03404.html or: In the case where the forms are not used, the Office urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee a request should include the following information, ideally on a cover sheet: • the name of the assignor(s); • the name and complete address of the assignee(s); • the application or patent number against which the assignment is to be registered; • specific information identifying which rights are being assigned and whether the interest in a right is being transferred in whole or in part. A copy of the document effecting the transfer and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed must be submitted in accordance with sections 49 and 50 of the Patent Act. The following proofs are all considered to be satisfactory: • with respect to a patent, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by all parties; • with respect to a patent application, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by the assignor; • a similar statement of a witness; • the signature of a witness or the presence of a corporate seal on the assignment document; • a document showing that the assignment was registered in a patent office of another country Any document related to a change of ownership that is submitted to the Office will be registered; if, however, the information provided in the document does not meet the requirements to effect a transfer of ownership the Office will be unable to give effect to the change of ownership purportedly made in the document. Note that all documents submitted to the Office will be made available to the public. Parts of these documents may contain personal information and applicants are encouraged to take steps to ensure that personal or sensitive information is omitted or obscured from the document before it is sent to the Patent Office.

Reasonable compensation vs damages under PA

*Liability damage before patent is granted* (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that per- son, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringe- ment of the patent if the patent had been granted on the day the application became open to public inspection un- der that section. - reasonable royalty as determined by court, dow was 8.5% *Liability for patent infringement* 55 (1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the in- fringement. - patent act doesn't allow for damaged for actual infringement post-grant but courts often allow, look to Dow Nova springboard profits case and accounting of profits, accounting of profits often results in higher award and is coveted. more common in US. As a result of the findings of infringement, the Federal Court awarded Dow various remedies, including an election between damages and an accounting of profits, reasonable compensation for infringement that occurred between the publication date of the '705 Patent and its date of issuance, interest and costs. --The remedy for damages, so stipulated in the Act, may be categorized as a legal one. When one invokes the legal remedy of damages, the Court will seek to allow the Plaintiff to make good on its loss. As such, damages are only awarded for proven loss and the usual burden of proof lies with Plaintiff.

Draft three (3) different categories of claims acceptable in Canada directed to known compound X for the treatment of disease Y (new indication). [3 marks]

- use of compound X as method to - use of compound x to treat - composition of matter X for treatment of X

Briefly explain: 1) Use of Patents for International Humanitarian Purposes to Address Public Health Problems (Jean Chrétien Pledge to Africa Regime); 2) Bill C-29, An Act to amend the Patent Act; and 3) The Budapest Treaty.

1. A compulsory licensing regime that permitted generics to file requests for licenses to produce innovator in drugs in countries contained on a specified list, where the innovator was not otherwise willing to sell the drug for 25% of its market value or less. This was in place when anti-retrovirals were needed for the HIV/AIDS Epidemic but was subsequently replaced by TRIPS. 2. They properly place the Schedules contained in the JCPA inside the Patent Act, an important component of the regime in that they establish which pharmaceutical products are eligible for export and which countries are eligible to receive them. 3. *budaPEST - E coli* The main feature of the Treaty is that a contracting State which allows or requires the *deposit of microorganisms for the purposes of patent procedure must recognize, for such purposes, the deposit of a microorganism with any "international depositary authority", irrespective of whether such authority is on or outside the territory of the said State.* Disclosure of the invention is a requirement for the grant of patents. *Normally, an invention is disclosed by means of a written description. Where an invention involves a microorganism or the use of a microorganism, disclosure is not possible in writing but can only be effected by the deposit, with a specialized institution, of a sample of the microorganism. In practice, the term "microorganism" is interpreted in a broad sense, covering biological material the deposit of which is necessary for the purposes of disclosure, in particular regarding inventions relating to the food and pharmaceutical fields.* *It is in order to eliminate the need to deposit in each country in which protection is sought, that the Treaty provides that the deposit of a microorganism with any "international depositary authority" suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office* (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations. What the Treaty calls an "international depositary authority" is a scientific institution - typically a "culture collection" - which is capable of storing microorganisms. Such an institution acquires the status of "international depositary authority" through the furnishing by the contracting State in the territory of which it is located of assurances to the Director General of WIPO to the effect that the said institution complies and will continue to comply with certain requirements of the Treaty. On January 16, 2017 there were 46 such authorities: seven in the United Kingdom, four in the Republic of Korea, three in China, Italy and the United States of America, two each in Australia, India, Japan, Poland, the Russian Federation and in Spain, and one each in Belgium, Bulgaria, Canada, Chile, the Czech Republic, Finland, France, Germany, Hungary, Latvia, Mexico, the Netherlands, Slovakia and Switzerland. The Treaty makes the patent system of the contracting State more attractive because it is primarily advantageous to the depositor if he is an applicant for patents in several contracting States; the deposit of a microorganism under the procedures provided for in the Treaty will save him money and increase his security. It will save him money because, instead of depositing the microorganism in each and every contracting State in which he files a patent application referring to that microorganism, he will deposit it only once, with one depositary authority. The Treaty increases the security of the depositor because it establishes a uniform system of deposit, recognition and furnishing of samples of microorganisms. The Treaty does not provide for the institution of a budget but it does create a Union and an Assembly whose members are the States which are party to the Treaty. The main task of the Assembly is the amendment of the Regulations issued under the Treaty. No State can be requested to pay contributions to the International Bureau of WIPO on account of its membership in the Budapest Union or to establish an "international depositary authority". The Budapest Treaty was concluded in 1977. The Treaty is open to States party to the Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO.

Within what period from international filing date does an international applicant need to elect Canada for a PCT National Phase application? What rule?

19 months, section 58(9)

B7. Your client has become aware of Canadian Patent Application No. X,XXX,XXX. Your client advises you that the invention claimed in this patent application has been commonplace in the industry for years and was used publicly well before the filing date of the application. Your client wants to prevent the application from issuing. (a) What can your client do? (b) What can your client do if it turns out that the application referred to above is in fact an issued patent?

2 marks I would advise the client to apply for a special form of pre-grant proceeding, by 'protesting' the patent in the form of inter partes review in the context of a re-examination proceeding, and paying the appropriate fee to request to present prior art that raises questions about the patentability of specific claims set out in the application. Pursuant to s. 34(1) of the Act any person can file with the Commissioner any prior art (like patents, patent applications, and printed publications) that they believe have a bearing on the patentability of a claim, and the Commissioner will take it into account. The written request should comply with s. 10 of the Patent Act and specify the patent application numnber, clearly indicate the bases for non-patentabiltiy and draw a clear connection between the prior art and the specific claim at issue. It may contain affidavits, raising serious questions about whether a patent should be granted, but these should be supported by dated documentation to be viewed as valid. It will later become part of the laid-open application, unless requested to be confidential, in which case it is not considered and instead is returned to the sender. The applicant should not expect to receive a response back from the Commissioner - they will only be notified that it has been received, as will the patent applicant. In this way, an intervener can interfere with a patent during pre-grant proceedings by providing the Examiner with arguments that could be used to reject the applicant's patent application. In addition to prior art submissions, one of the other few exceptions to ex parte prosecution of Canadian patent applications is the filing of protests under section 10 of the Patent Rules. There is case law that suggests section 10 of the Patent Rules allows third parties to file a protest against the grant of a patent on the basis that the patent application contravenes section 38.2(1) of the Patent Act for adding new subject matter.[1] Even after a notice of allowance has been issued, an Examiner has discretion to consider protests and prior art submissions, and withdraw the notice before the patent grants.

Who can pay maintenance fees? Can anyone?

46(1) patent act only applicant 'racing in' to preserve space on the register and fend off infringers (motorsport 46 'the doctor')

In adding a sequence listing to an application originally filed without a sequence listing, what additional step is required of the Applicant?

??

What two (2) conditions must be satisfied in order for a Patent Examiner to reject a patent application after an applicant has replied in good faith to the Examiner's requisition?

??

What happens when applicant name differs during national phase of PCT application?

An applicant may only file a request for priority based on a prior application that has also been filed by the applicant named on the pending application unless the person who filed the prior application has transferred priority to the requesting applicant (see section 7.03.02). That is, an applicant may not request priority based on an earlier application or applications filed by a different applicant unless the applicant named on the pending application is successor in title of the earlier application on the date the request is made under the provisions of Article 4 A(1) of the Paris Convention.iii The prior application must have been filed in Canada or in any country belonging to the Paris Convention or in any World Trade Organization (WTO) member country to be afforded priority rights. The applicant need not be a national of a Contracting Party of the Paris Convention but must either reside in, or have Areal and effective industrial or commercial establishments in the territory of one of the countries of the Union. *Specifically:* Pursuant to subsection 58(5) of the Patent Rules, in respect of PCT national phase applications, where the applicant is not the applicant originally identified in the international application, the Commissioner shall requisition evidence that the applicant is the legal representative of the originally identified applicant where the documents already in the Patent Office do not provide such evidence. Pursuant to subsection 58(5.1) of the Patent Rules, where the applicant does not comply with a requisition made by the Commissioner pursuant to subsection 58(5) within three months after the requisition is made, that applicant shall be deemed never to have complied with the requirements for their international application to enter national phase in Canada. While not a requirement to enter national phase in Canada, pursuant to subsection 37(2) of the Patent Rules, the application must contain a declaration that the applicant is the legal representative of the inventor, or a declaration as to the applicant's entitlement, as at the filing date, to apply for and be granted a patent, in accordance with Rule 4.17 of the Regulations under the PCT. As noted above, pursuant to subsection 37(4) of the Patent Rules, if an application does not comply subsection 37(2) of the Patent Rules, the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements before the later of the expiry of the 3-month period after the date of the notice and the expiry of the 12-month period after the filing date of the application. If the applicant does not reply in good faith to this requisition, then pursuant to section 97 of the Patent Rules, the application will be deemed abandoned, and subject to the reinstatement provisions of the Patent Act and Rules.

Ford is the high water mark for public disclosure, what is low water mark when putting patented item into public was not sufficient?

Bauer.

What is the ultimate deadline for all extensions of time on a patent application? Under what section?

Could be argued that patent was not filed within 5 years from filing date and thus should be held to be impeached/invalid? (s. 96 of Patent Rules)

Discuss STRATEGY with respect to filing a mandatory and/or voluntary divisional application in Canada - specifically 1) what is each type? 2) How can you, for your US client, adapt their Canadian filing strategy off of the US filing (say it is a continuation or CIP) and make use of the divisional process in Canada? What is the standard process, and how can you exploit it to ensure the validity of your client's claims?

Divisional applications are always governed by s. 36 of the Patent Act, which specifies that 'a patent shall be granted for one invention only', but that in an action or proceedings grounds for invalidity shall NOT be held to be exclusively on the basis of a lack of unity of the invention, i.e., a failure to properly file divisional applications. This is solely an administrative issue. In US, you can file a continuation patent or a continuation in part, which permits you to file both the parent and successive applications, sticking with the original aprent application which has been constrained as per the examiner's suggestions, while also filing successive child applications to broaden the scope of the original aplpication. In contrast, Canada does not allow continuation (or continuation in part) applications, but does allow something slightly similar, called a divisional application (s. 36 of the Patent Act). The main way that these are used in Canada is in the form of mandatory divisional applications, following an Examiner's unity objection, and employed to prosecute claims that have been cancelled from a parent application due to lack of unity of the invention (i.e., the claims on the face of the patent disclose more than one inventive concept). In this way they are different from the 'extension' aspect of the continuation and CIP applications south of the border. Canada has a strict policy against doing anything to expand the scope of subject matter claimed in a patent, both by way of amendment, as well as by way of re-issue and/or by way of filing a divisional application. Instead, Canada only permits you to file a second, separate invention, originally disclosed in the parent application claims, which after electing one invention in the parent application (generally, by way of response to a requisition/office action and amendment that inherently signals your claimed invention) you can then move to file in a child application. In Canada, theoretically you can treat divisional applications like a continuation or CIP patent, but care needs to be exercised because outside of the grace period window of 1 year under 28.2(1)(a) - which has now been shortened. On July 19, 2016, CIPO announced it would be reducing the examination time for patents, from 10 weeks post payment of final fee to 6 weeks, and an anticipated shorter ramp-up period later on. While this is a positive thing for an increased patent term post-filing date, it also means fewer time to file divisional applications (these must be filed before the parent issues, whether they are voluntary or involuntary divisional applications). Mandatory divisional applications just HAVE TO come before the issue date of the parent application, because the Examiner requires an amendment by the applicant in response to a unity of invention objection (one patent, one invention). Mandatory divisional applications claim the subject-matter of additionally claimed inventions from the parent application. In contrast, voluntary divisional applications are filed where the applicant wants to claim an additional invention that was not claimed in the parent application. Patentees often seek voluntary divisional applications as a 'round hole' for the 'square peg' of a US creature of patent law, continuation and CIP patents. In this way, voluntary divisional applications commonly arise where an applicant would like their Canadian application to mirror counterpart US continuation applications, or CIP patents. If this cross-border approach is being considered, the applicant should speak to a cross border patent agent right away as soon as a NOA is issued to allow for adequate time to properly draft and file/prosecute continuation- or CIP-type voluntary divisional applications north of the border. This is important because to meet the requirements of a voluntary divisional application under Canadian law (i.e., to make the square peg adjust to fit into the round hole) one must exercise caution to avoid double patenting problems: If claims are pursued in a divisional application in Canada that were not cancelled from the parent application (as per a unity objection and standard mandatory divisional application), double patenting problems can arise if the claims of the divisional are not sufficiently (read: patentably) distinct from the parent application. In the US, these are dealt with by a terminal disclaimer, something we also don't have in Canada. The best approach is this, because Canada doesn't add exorbitant fees like the US does for 'excess claim fees': A patentee should proceed to add all claims of interest to an application, and wait for a unity objection, necessitating a mandatory divisional application - this way the cancelled claims will be immune from double patenting when prosecuted in a mandatory divisional application.

Saccharin doctrine** *important*

First, Apotex argued vigorously that its importation and use in Canada of cefaclor manufactured abroad using the patented processes was not infringement of the Canadian patents in issue. In this regard, Apotex argued that the Canadian courts had improperly accepted the "Saccharin doctrine" as being applicable in Canada or that the Saccharin doctrine should be restricted in its application in Canada in a manner similar to restrictions imposed on infringement by importation in Europe and the United States as a result of legislation adopted in those jurisdictions. The Saccharin doctrine (which derives its name from a UK decision involving the artificial sweetener) permits a finding of infringement of a Canadian patent pertaining to a process or intermediate which has been practiced abroad in the manufacture of a product which is imported for use and sale in Canada. Following a detailed review of the Canadian and UK authorities, Justice Gauthier concluded that it is too late to "turn back the clock" on the application of the principles concerning infringement by importation stated in the Canadian jurisprudence and that it would be inappropriate to re-write the Canadian law based on the statutes adopted in foreign jurisdictions. Justice Gauthier further accepted that the Saccharin doctrine applied to Apotex's conduct in this case.

Process for Canadian equivalent of invalidating a patent? What is it called and what section?

In Canada, a third party may seek to impeach (the Canadian equivalent of US invalidation) a patent on the basis of s. 60 of the Patent Act (as opposed to a re-examination proceeding post-grant, or a pre-grant protest, which pertain to assessing the claims) on the basis that under s.60(2), "where any person has reasonable cause to believe that any action by him/her is an infringement, may initiate proceeding in Federal Court against patentee for declaration that Could be argued that patent was not filed within 5 years from filing date and thus should be held to be impeached/invalid? (s. 96 of Patent Rules) Could also determine whether requisition period set out was in fact the permissible 3 months. If this pushed the permissible extensions of time over the deadline of 5 years from filing, patent may be impeachable under s. 60.

What is the one-year grace period for prior art for the national phase of a PCT application in Canada?

In the case of a Canadian national phase of a PCT application, the filing date in Canada is deemed to be the PCT international filing date.

Your client seeks advice with respect to the filing of an Industrial Design Application relating to Widget A based on an earlier filed U.S. Design Application. Your client tells you that the U.S. Design Application includes multiple sets of figures showing different versions of Widget A and that some of the drawings show Widget A in its environment. Your client asks you if all of the figures can be maintained in a single Canadian Industrial Design Application and if there are any special drawing requirements that must be met when showing environment. Advise your client.

Industrial designs are governed by the Industrial Design Act, and s. 9.1 governs the drawings that should be contained in an industrial design application. Specifically, s. 9.1(1) indicates that drawings must have margins of at least 2.5cm, and that all views on a drawing must be a) of sufficient quality to permit the features of the design to be identified clearly and accurately; b) clearly and accurately show the article to which the design is applied; and c) show the article in isolation. As per s. 9.3, in the case of an article showing more than one view, a single view on a single drawing may show environment that is not part of the article if the environment helps to make clear what the article is, or what the features of the design are. Under 9.1(4), drawings must show the design in well-defined solid lines; with portions of the article that do not form part of the design either wholly in well-defined solid lines or wholly in well-defined stippled lines, and the environment, if any, in well-defined stippled lines. Under Canadian law, and specifically under s. 9.3 of the Industrial Design, only one of the pictures showing the item in its environment can be included.

When are US maintenance fees due? Cost?

Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the utility patent.[21] No maintenance fees are due while an application is pending.[22] Design patents and plant patents are not subject to maintenance fees at all.[23] Maintenance fees may not be paid in advance;[24] the patentee must wait until the payment window opens six months before the due date before paying a maintenance fee. At the end of the half-year window during which a maintenance fee may be paid, a six-month grace period begins during which a patentee may still pay the maintenance fee along with a small surcharge (as of 2016: $160 for a large entity, $80 for a small entity; and $40 for a micro entity) in order to maintain the patent.[25] If the maintenance fee has not been paid at the conclusion of the grace period, the patent expires for non-payment of maintenance fees. However, the patent can be revived, by a petition indicating that the non-payment was unintentional.[26]

Maintenance fee schedule and abandonment

Pursuant to subsection 27.1(1) of the Patent Act and subsection 99(1) of the Patent Rules, an applicant who files a patent application in Canada must pay maintenance fees for prescribed periods in order to maintain the application in effect. The amounts and time limits for paying maintenance fees to maintain an application in effect are listed in item 30 of Schedule II of the Patent Rules. Divisional applications carry their own maintenance fees, separate from the parent application. Pursuant to subsections 99(2) and 154(2) of the Patent Rules, maintenance fees will be calculated from the filing date of the parent application and are payable upon filing of the divisional application. For example, if a divisional application is filed 40 months after the parent application, maintenance fees for the 2nd and 3rd years have to be paid upon filing of the divisional application. Applications filed under the provisions of the Patent Cooperation Treaty and entering the national phase in Canada must pay maintenance fees in accordance with part VI of Schedule II of the Patent Rules. It should be noted that the international filing date is the date on which the maintenance fee schedule is based. 24.01.02 Late and non-payment of application maintenance fees If the maintenance fee on a patent application is not paid on or before the anniversary date the application will become abandoned pursuant to paragraph 73(1)(c) of the Patent Act. The application, however, may be reinstated if there is a clear request for reinstatement and payment is made within the one-year period following the due date along with the prescribed reinstatement fee listed in item 7 of Schedule II of the Patent Rules. If the one-year period for reinstatement has expired before payment of both the maintenance fee and the reinstatement fee, or before a request for an extension of the reinstatement period is made (subsection 26(1) of the Patent Rules), the application can never be reinstated (see Chapter 20 of this manual).

(a) What does Rule 92 bis of the PCT regulations allow you to do? (0.5 mark) ....... *what a stupid exam question for a non-open book test when the entire patent practice is open book. test for substantive knowledge.*

Regulations under the PCT Rule 92bis Recording of Changes in Certain Indications in the Request or the Demand 92bis.1 Recording of Changes by the International Bureau (a) The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand: (i) person, name, residence, nationality or address of the applicant, (ii) person, name or address of the agent, the common representative or the inventor. (b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration of 30 months from the priority date.

What rules are applied governing inventorship and entitlement?

Rule 37 PR

In what section of the Patent Act does infringement fall?

S. 55 - over the hill! (*****d for damages)

Explain finding of Dow v Nova *important* and springboard profits

Select Languagearrow linkedin twitter Contact Us | Press Room About Us Services Professionals Offices Publications & Resources Careers Publications and Resources Articles IP Update — Canada Rx IP Update Archives Dow succeeds on major issues in patent infringement profits case April 24, 2017 by: Daniel Hnatchuk The Federal Court has issued their Public Judgment and Reasons concerning the financial compensation to be paid as a result of earlier patent infringement and validity proceedings between Dow Chemical Company ("Dow") and NOVA Chemicals Corporation ("Nova") (2014 FC 844). In his reasons, Justice Fothergill considered a number of significant and novel issues relating to patent infringement remedies and, in particular the accounting of profits remedy available in Canadian patent infringement litigation. The final quantum of the award is still before the courts, but is expected to be one of the largest ever awarded in a Canadian patent case. Steven Garland, Jeremy Want, Colin Ingram, Daniel Davies and Kevin Graham of Smart & Biggar acted as co-counsel on behalf of Dow. Background During the liability phase, the Federal Court upheld the validity of Dow's Canadian Patent No. 2,160,705 ("'705 Patent") and found that Nova's SURPASS polymers infringed. The polymers are polyethylene compositions used in packaging applications including heavy duty bags, pallet wrapping and food packaging. The compositions comprise blends of two polymers with particular physical or mechanical characteristics. Dow sells such compositions under the name ELITE. As a result of the findings of infringement, the Federal Court awarded Dow various remedies, including an election between damages and an accounting of profits, reasonable compensation for infringement that occurred between the publication date of the '705 Patent and its date of issuance, interest and costs. Dow subsequently elected for an accounting of Nova's profits. On September 6, 2016, the Federal Court of Appeal upheld the Federal Court decision on the merits (2016 FCA 216). On April 20, 2017, Nova's application for leave to appeal to the Supreme Court of Canada was dismissed (37274). First reported award of 'springboard' profits Of particular note, Justice Fothergill's judgment represents the first time that springboard profits have been awarded in Canada, and is potentially the first reported instance of such an award anywhere in the world. Dow claimed that Nova's infringement of the '705 Patent provided it with a "springboard" into the market, which resulted in Nova continuing to profit from its infringing activity after the expiry of the '705 Patent. Justice Fothergill was satisfied that in a hypothetical "but for" world where Nova was unable to enter the relevant market until the expiry of the '705 Patent, it would have taken time for Nova to attain the same level of sales of the infringing products that Nova enjoyed in the real world. Justice Fothergill therefore found that Nova's post-expiry profits resulting from its pre-expiry infringing activities should be included in the accounting of profits. The springboard profits covered a period of approximately 20 months post-expiry. Accounting of profits and the deduction of costs Justice Fothergill also considered the extent to which Nova should be allowed to deduct its costs from its revenues to arrive at its profits. Two primary issues were before the court. The first issue related to the appropriate measure of the cost of ethylene, a key component used to make the infringing SURPASS products. Nova claimed that it should be entitled to deduct an "economic value" of the ethylene as measured by Nova's average selling price of ethylene to third-parties. Dow claimed that because Nova itself produced the ethylene used to make SURPASS, it was entitled to deduct only its actual costs incurred to manufacture the ethylene. Justice Fothergill agreed with Dow's position that the actual cost to Nova of manufacturing the ethylene should be used, noting that Nova's position would result in deduction of a "theoretical cost that [Nova] did not incur." The second issue relating to Nova's deduction of costs was whether non-incremental fixed costs and capital depreciation expenses could be applied against the relevant revenues. Justice Fothergill indicated in his judgment that there are several recognized means of accounting for profits: the differential profit approach, under which the profits to be disgorged are those earned from the infringement less those profits that would have been earned had the infringer produced a non-infringing alternative. the incremental cost approach, under which the profits to be disgorged are the applicable revenue less any variable costs attributable to the invention, and any increased fixed or capital costs attributable to the invention. the full cost approach, under which the profits to be disgorged are the applicable revenues less applicable variable, incremental fixed, and a proportion of certain non-incremental fixed and capital costs. Nova contended that the full cost approach was the appropriate approach in this case since there were no direct non-infringing alternatives (such that the differential profits approach could not apply), and its incremental costs would be negligible, such that the incremental costs approach would result in an inequitable outcome. Justice Fothergill ultimately concluded that Nova should be entitled to deduct a proportion of certain of its claimed fixed costs and capital depreciation expenses related to the production and sale of the infringing products. Currency conversion on profits aligned to judgment date The issue of the timing of currency conversion was also before the Court. While Nova's profits from the sale of infringing SURPASS products were mostly earned in U.S. dollars, the Currency Act requires that the judgment of a court be expressed in Canadian Dollars. Dow argued that since Nova retained its profits in U.S. dollars, the date of currency conversion should be the date of the Judgment. Nova countered that its profits should be converted to Canadian dollars at the applicable exchange rate when they were earned, i.e. annually during the period of the infringement. Justice Fothergill found that the evidence supported that Nova's profits were primarily retained in U.S. dollars such that the date of conversion into Canadian dollars should be the date of the Judgment. Inclusion of additional product grades in the calculation of profits Also at issue before Justice Fothergill were four grades of Nova's SURPASS product that Dow claimed were identical or nearly identical to those that were specifically identified in Dow's original Statement of Claim, but were sold by Nova under slightly different names at various times. Nova conceded that these grades infringed the '705 Patent, but argued defences of res judicata, abuse of process and the application of a limitation period because they had not been specifically identified in the Statement of Claim during the liability phase of the proceeding. Justice Fothergill ultimately determined that these grades were to be included in the calculation of profits, holding that it would be inconsistent with the liability judgment to exclude them merely because they were "sold under slightly different names by the infringing party." Other issues For the period between the publication date of the '705 Patent and its date of issuance, Dow was awarded a reasonable royalty at 8.8%. Finally, Justice Fothergill also found that Dow was entitled to recovery of pre-judgment interest on Nova's profits at a rate of 5%, compounded annually, citing evidence of Nova's actual cost of borrowing. For further information, please contact a member of our firm's Litigation group. The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly. ### Smart & Biggar is Canada's largest firm practising exclusively in intellectual property and technology law, with offices in Ottawa, Toronto, Montreal, Vancouver and Calgary. We are leaders in intellectual property and technology law and have been serving clients for over a century. For more information, please visit smart-biggar.ca. A A A HomeContact UsAccessibilityPrivacy PolicyTerms of UsePress RoomSite Map web design toronto Rebel Trail

Describe Gillette defence *important*

The Gillette Defence is a way of arguing non-infringement by proving invalidity without requiring the patent claims to be construed. The defence is based on an early 1900s decision from the House of Lords and allows the defendant to plead that their alleged infringing actions are part of the prior art, and thus either the patent is invalid for claiming the prior art or if the patent is valid, the defendant does not infringe.[19] In view of the Supreme Court's decision in Free World Trust, any Gillette Defence would still require that the patent claims are construed prior to determining infringement. Gillette Defence The Gillette Defence is an extension of showing the patent you allegedly infringe is invalid. If you can show that your product or process is wholly covered by a piece of prior art then it cannot infringe the patent for the new invention. The reasoning here is that you are basically using a product or process that was known at the time of the patent (i.e. you are recreating prior art) and if your product or process is covered by the patent then the patent is invalid on the grounds of novelty.

Does disclosure anywhere in Canada suffice for obviousness, or anywhere in the world? *Important* Under what section of the Patent Act?

The subject matter defined by a claim in an application for a patent in Canada must be subject matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to a) information disclosed more than one year before the filing date by the applicant, or someone who obtained knowledge from them, in such a manner that the information became available to the public in Canada or elsewhere; b) information *disclosed before the claim date by a person not mentioned in paragraph a in such a manner that the information became available to the public in Canada or elsewhere*

Tsm test? *important* review

Where is the "TSM test" applicable? What is this test used for? Briefly identify what the TSM test entails, and discuss whether the test is still applicable to patent prosecution practice. teaching suggestion motivation test no longer applicable - replaced by sanofi v apotex obviousness analysis purposive approach The Teaching, Suggestion, or Motivation Test and KSR The Federal Circuit has implemented the obviousness requirement and the Supreme Court's decision in Graham by way of the TSM test. According to the Federal Circuit, when an invention is comprised of multiple prior art references, whether the invention is obvious depends on specific evidence that the prior art provided a teaching, suggestion, or motivation to combine the prior art.6 The motivation to combine can be explicit, implicit, or even inferred from the "nature of the problem to be solved," the Federal Circuit has explained, but it must be present in some form in order to maintain a finding of obviousness.7 The facts in KSR presented a classic obviousness question. The patent at issue, United States Patent No. 6,237,565 (the '565 patent), revealed a gas pedal assembly that combined two pieces of technology within the prior art: electronic sensors on gas pedals used to regulate a vehicle's throttle and gas pedals that adjust to accommodate drivers who are taller or shorter than average. Applying Graham, the district court concluded that the assembly was unpatentable because all of the elements of the patent claim were included in the prior art and a person having ordinary skill in the art—someone with training in mechanical engineering and experience in the field of pedal assemblies—could easily combine an adjustable gas pedal with an electronic sensor. The district court also reasoned that summary judgment was appropriate because a person with skill in the art actually would have been motivated to make the combination. The Federal Circuit reversed on the ground that the district court incorrectly applied the TSM test. According to the Federal Circuit, the district court had not made required factual findings showing the "specific understanding or principle within the knowledge of the skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination" in "the particular July 2007 | 3 manner claimed by" the patent.8 In other words, the district court could not find the patent invalid as obvious without "specific findings as to a suggestion or motivation to attach an electronic control to the support bracket of the [gas pedal] assembly."9 The Supreme Court granted KSR's petition for certiorari on June 26, 2006. The Court heard oral argument on November 28, 2006, and handed down its decision on April 30, 2007. The Supreme Court Rejects the "Rigid" Application of the TSM Test in KSR Reversing the Federal Circuit's decision, the Supreme Court "reject[ed] the rigid approach of the Court of Appeals" but stopped well short of abandoning the TSM test.10 To the contrary, the Court underscored that its precedent "set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here."11 The Court underscored that because the process of invention is fluid, the obviousness inquiry must not be artificially constrained. "When a work is available in one field of endeavor," Justice Kennedy wrote, "design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."12 Thus, in assessing whether it would have been obvious for a person to combine prior art elements, Justice Kennedy reasoned that courts should take a number of factors into account, including "interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art."13 Turning to the Federal Circuit's TSM test, the Court held that it captured a "[h]elpful insight" regarding obviousness, but that it was "incompatible with [the Court's] precedents" when applied in a "rigid" fashion or as a "mandatory formula[ ]."14 To be sure, the Court emphasized, "[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs."15 The Court next addressed several specific flaws in the Federal Circuit's analysis and application of the TSM test. First, Justice Kennedy wrote that in determining whether the '565 patent was obvious, the Federal Circuit did not properly consider whether "there existed at the time of the invention a known problem for which there was an obvious solution encompassed by the patent's claims."16 Rather, the Federal Circuit "foreclosed this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve."17 Second, the Court explained that the Federal Circuit erroneously assumed that in attempting to solve a problem a person having ordinary skill in the art (again, a PHOSITA) "will be led only to those elements of prior art designed to solve the same problem."18 In fact, courts and examiners should adopt a more nuanced, and commonsense approach to understanding how PHOSITA will fit together multiple patents to solve a new problem.19 "A person of ordinary skill is also a person of ordinary creativity," the Court emphasized, "not an automaton."20 Third, the Court noted that the Federal Circuit was properly concerned with the prospect of hindsight bias but that it drew the "wrong conclusion" from those concerns.21 In particular, factfinders "should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning," but that "[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it."22 Focusing on these shortcomings in the Federal Circuit's decision, the Court did not cast aside the TSM test in its entirety. Indeed, it noted that the Federal Circuit "has since elaborated a broader conception of the TSM test than was applied in the instant matter," but observed that "[t]hose decisions . . . are not now before us and do not correct the errors of law made by the Court of Appeals in this case."23 The Court therefore left it to the Federal Circuit to consider whether those cases "may describe an analysis more consistent with our earlier precedents and our decision here."24 Then, specifically addressing the '565 patent, the Court agreed with petitioners' contention that it was obvious within the meaning of Section 103 and therefore invalid.25 The Court agreed that the prior art taught the various components included in the patented adjustable pedal assembly. The Court also identified several pressures in the marketplace that created strong incentives for an inventor to combine the prior art (notably the increase in demand for pick-up trucks and sport utility vehicles which tended to incorporate adjustable pedal assemblies). Finally, the Court found multiple likely routes for PHOSITA to combine the prior art and create the underlying invention.

What was Laboratories v Apotex 2008? Important!

While it is arguably infringement from the POV of See you There (i..e, In Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 (CanLII), the Supreme Court of Canada concluded that a rebuttable presumption of "use" exists by merely possessing a patented product in Canada, at least in commercial circumstances (see Monsanto at 58). This position has since been elaborated by the lower courts - for example, the Federal Court has held that "the purchase or possession of infringing articles in Canada, with a view to sale or trade, or for the purpose of export, constitutes infringement" (emphasis added - see Laboratories Servier et al. v. Apotex Inc., 2008 FC 825 (aff'd 2009 FCA 222) (CanLII) at 143).) Client should argue that there is no possession in commercial circumstances since the client is not selling those aprts just using them? also s. 55(1) PA

Effect of prior disclosure on EPO patents?

Your client has requested that you file patent applications in Canada, the US, and the EPO in order to protect their invention. US application XXX,XXX is filed on June 12, 2006, CA 2,XXX,XXX is filed on June 10, 2007, and EP X XXX XXX is filed on January 8, 2007. Your client has informed you that they have presented their invention at EXPO 2006 on May 8, 2006. Discuss the citability of such a disclosure with respect to each jurisdiction and justify your conclusion. Can - outside of one year grace period 28.2(1)(a) anticipated US - same udner AIA EP - Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."[1] State of the art under Article 54(2) EPC[edit] The state of the art is essentially defined in Article 54(2) EPC. Namely: The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. The state of the art under the EPC is therefore said to be absolute. Even the disclosure to a single person who is under no obligation to maintain secrecy is sufficient for a disclosure to be considered part of the state of the art. The absolute novelty also means that even the theoretical possibility of having unrestricted access to a certain information is regarded as rendering this information available to the public.[2] In other words, as summarized in decision T 1081/01:[2] The case law (...) accepts that information is "available to the public" if only a single member of the public is in a position to gain access to it and understand it, and if there is no obligation to maintain secrecy.[3]

Your client is a manufacturer of electrical safety devices. You are asked if your client may manufacture a limited number of devices in Canada and export them to Japan, to be used in testing in Japan so that your client can receive regulatory approval for their sale and use in Japan. The devices are protected by patent in Canada but not in Japan. Is your client able to do so without accounting to the patent owner? 1 Mark

client manufactures electrical safety device can client manufacture in Canada and export to Japan in limited number to receive regulatory approval? no. infringement is set out in s. 54 of the Patent Act. Liability for patent infringement is set out in 55(1) - a person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee (read: accounting of profits) or by any such person, after the grant of the patent, by reasons of the infringement. The Canadian Patent Act grants a patentee the exclusive right to make, construct, use and sell the patented invention. However, the Patent Act does not expressly address a patentee's rights in relation to exportation of the patented invention. The general position of the Canadian courts has been that the exclusive rights conferred by a Canadian patent are territorially limited to Canada. In other words, a person will not have infringed a Canadian patent unless they have made, constructed, used, or sold the patented invention in Canada. That said, the courts have adopted a broad interpretation of use. In Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 (CanLII), the Supreme Court of Canada concluded that a rebuttable presumption of "use" exists by merely possessing a patented product in Canada, at least in commercial circumstances (see Monsanto at 58). This position has since been elaborated by the lower courts - for example, the Federal Court has held that "the purchase or possession of infringing articles in Canada, with a view to sale or trade, or for the purpose of export, constitutes infringement" (emphasis added - see Laboratories Servier et al. v. Apotex Inc., 2008 FC 825 (aff'd 2009 FCA 222) (CanLII) at 143). Thus, the client would likely infringe under Laboratories Servier et al v Apotex (2008) but may be saved by exception 55.2(1): it is not an infringement of a patent for any person to make, construct, use, or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province or country other than Canada that regulates the manifacture construction use or sale of any product. (55.2(1) Patent Act)

C2) List three prerequisites that are needed in order for an applicant to qualify for CIPO's Expedited Examination of Patent Applications Related to Green Technology. [3 marks] *discuss with Ian important*

declaration indicating relation of claims to such technollogy (help to resolve/mitigate environmental impacts or conserve natural environment and resources) fee under tariff of fees written request for expedited examination

List three grounds for invalidity other than anticipation and obviousness. Apply the appropriate section of the Patent Act or Rules.

no utility? insufficient description? no factual basis for sound prediction????

London Agreement will come into force in Europe. Briefly explain its main advantage for patent applicants *important*

relates to European Patents The major advantage of this system is that the applicant can get a European patent by filing just one patent application in any of the three EPO official languages, in English, French or German. Another advantage is that the application is examined by a single patent office. Representative of long term trend of moving toward synergy in international arena, making international trade easier and flow more smoothly.

Your client is the owner of Canadian patent application no. 2,XXX,XXX, filed 6 months ago with no equivalent foreign application. They have become aware of a potential infringer and wish to secure a patent as soon as possible in order to commence proceedings against the potential infringer. What steps are necessary in order to have the application examined as soon as possible? *important*

request for special order advanced examination upon showing under 28.1 payment of fee (Item 4, section 1 patents) and showing that failure to advance will prejudice patentee rights

Which country should act as the receiving office for an international application (PCT)?

s. 52 Patent Rules - where an international application is filed with the Commissioner and the applicant or where there is more than one applicant, at least one of the applicants is a national or resident of Canada, the Commissioner shall act as a receiving office.

What law applies to a PCT national phase application and under what Patent Rule?

s. 59: When an international application becomes a PCT national phase application, the application shall thereafter be deemed to be an application filed in Canada and the Act and these Rules shall thereafter apply in respect of the application.

What section of which legislation governs small entities?

s.3 governs small entity declaeations in patent rules.