The IP Year 2007 In Review: Patents (Part 1)

This first part of The IP Year 2007 in Review covers the year's developments in patents. See parts 2 and 3 for a discussion of trade-marks and copyright.

Following our very successful The IP Year 2006 In

Review,1 rated most popular Canadian article on the MONDAQÆ website

(www.mondaq.com) in February 2007, Fasken Martineau's Intellectual Property

("IP") Group is pleased to present The IP Year 2007 in Review. Our

synopsis of the year 2007 significant IP related decisions and noteworthy developments in

IP law will be helpful and informative for those doing business in Canada since these may

affect your rights with regard to patent, trade-mark and copyright protection. Many of

these recent developments reflect the ever-changing international aspects of the commerce

as well as the influence of technology, electronic media and the internet on IP

acquisition, maintenance and enforcement.

TABLE OF CONTENTS

TOPIC

PROFESSIONAL

PATENTS

SMALL ENTITY 2.0: UPDATING THE PATENT RULES

Mark D. Penner

PATENT OFFICE PRACTICE REGARDING SIGNALS

Mark D. Penner

CANADIAN DRUG HELP MAY BE ON THE WAY

Mark D. Penner

NO REVIVAL OF DEAD APPLICATIONS AFTER FAILURE TO MAKE PAYMENTS WITHIN REINSTATEMENT PERIOD

Tai Nahm

LAST MINUTE REPRIEVE FOR CONTROVERSIAL AMENDMENTS TO U.S. PATENT RULES

Serge LaPointe

BROADENING THE TEST: CONSIDERING OBVIOUSNESS IN THE UNITED STATES

Alexandre Abecassis

MAINTAINING A NARROWER APPROACH: CONSIDERING OBVIOUSNESS IN CANADA

Armand Benitah

U.S. SUPREME COURT LIMITS THE EXTRATERRITORIAL REACH OF U.S. SOFTWARE PATENTS

Tai Nahm

NO DISCRETION TO REFUSE A DISCLAIMER FILED BY A PATENTEE

Serge LaPointe

AVOIDING ìSELF-INFLICTED WOUNDSî IN THE SPECIFICATION

Mark D. Penner

UNDERTAKING AVOIDS INFRINGEMENT OF ìUSEî CLAIMS

Mark D. Penner

NEED TO PUT YOUR ìBEST FOOT FORWARDî FOR PROCEEDINGS UNDER NOC REGULATIONS

ChloÈ Latulippe & Hilal El Ayoubi

CHALLENGES TO THE DATA PROTECTION REGULATIONS

Mark D. Penner

ONLY FAILURE TO MATERIALLY REPLY IN ìGOOD FAITHî LEADS TO ABANDONMENT

Doran Ingalls

MISSING A MINOR PRIOR ART REQUISITION CAN HAVE MAJOR CONSEQUENCES

Dan Polonenko

HOW SWEET IT IS: THE SACCHARIN DOCTRINE IN CANADA APPLIES TO PRODUCTS

Mark D. Penner

THIRD PARTIES HAVE LIMITED ROLE IN RE-EXAMINATIONS

David Turgeon

KEY CANADIAN DEVELOPMENTS IN PATENTS

A number of interesting patent developments occurred in 2007. Of

particular note, recent legislative changes amended the Patent Rules to streamline

the patenting process and to provide a mechanism for top-up payments from incorrect small

entity status claims. The Canadian Intellectual Property Office ("CIPO") also

issued a statement regarding its position on the patentability of electromagnetic and

acoustic signals. In a Canadian first, the Commissioner of Patents (the

"Commissioner") granted the first licence to a Canadian generic drug

manufacturer, to manufacture and export a combination AIDS therapy to Rwanda.

In the vein of 2006, judicial activity in 2007 focused mostly on pharmaceutical patent

disputes under the Patented Medicines (Notice of Compliance) Regulations ("NOC

Regulations").2 However, there were also a number of interesting decisions

dealing with abandonment and reinstatement of cases.

There were other important developments in the United States in 2007

that will be followed in Canada, including the injunction to stop the most significant

amendments to the U.S. Patent Rules in several decades.

IMPORTANT PRACTICE NOTICES & AMENDMENTS TO THE PATENT RULES

Small Entity 2.0: Updating The Patent Rules As of June

2, 2007, there were a number of amendments to the Canadian Patent Rules,3

which attempted to address a number of concerns, most notably ongoing "small

entity" concerns and changes to sequence listing requirements.4

The Patent Rules now require a small entity declaration

submitted either as part of the petition or as a separate document. The declaration must

also provide that the applicant believes that it is entitled to pay fees at the small

entity level. More importantly, it will now be possible for the Commissioner to provide an

extension of time allowing correction of fees mistakenly paid on or after June 2, 2007 at

the small entity level. In its October practice notice,5 the Patent Office

provided a further update with respect to claiming "small entity" status.

According to the notice, where a fee (e.g. maintenance fee) is paid at the small entity

level after June 2, 2007, CIPO will only accept that fee if there is either a signed small

entity declaration on file or a signed small entity declaration is filed concurrent with

that fee payment. More importantly, CIPO now takes the position that if the fee is

required to maintain a patent application or issued patent in good standing and the fee is

paid at the small entity level without there being a signed small entity declaration on

file, the patent application or issued patent will be considered abandoned and must be

reinstated on or before the one year reinstatement period. CIPO will not identify all

cases where a previously filed declaration is inadequate and thus will not be taking the

active step of rejecting the payment.

Whereas prior to June 2, 2007, any changes in title or ownership that

occurred prior to the filing of an application for a patent required evidence such as an

assignment, applicants now need only provide a declaration indicative of the chain of title

events. We recommend that applicants still file assignment documents with CIPO as a means

of maintaining a complete chain of title with CIPO.

The Canadian format for sequence listing has now been amended to comply

with the Patent Cooperation Treaty standard provided under the World Intellectual Property

Organization ("WIPO").

Patent Office Practice Regarding Signals In its August

practice notice,6 CIPO indicated its position on claims to electromagnetic and

acoustic signals. According to CIPO, electromagnetic and acoustic signals are forms of

energy and do not contain matter even though the signal may be transmitted through a

physical medium. As such, electromagnetic and acoustic signals do not constitute statutory

subject matter within the meaning of the definition of invention in section 2 of the

Patent Act.

Canadian Drug Help May Be on The Way In 2005, Canada was

one of the first countries to amend the Patent Act7 and the Food &

Drugs Act8 to include provisions whereby a manufacturer could produce

patented pharmaceutical products for export to countries experiencing public health crises

under the Canadian Access to Medicines Regime Program

("CAMR").9 The goal of CAMR was to assist under developed and

developing countries with little or no pharmaceutical manufacturing capacity to have access

to drugs to combat HIV/AIDS, tuberculosis, malaria and other diseases. As one of the first

countries to enact such a regime, Canada created a model for addressing the problems

created by the intersection of significant public health issues and patent rights for

pharmaceutical products. These 2005 amendments set out a mechanism whereby an applicant

can apply for and be granted an "authorization" to make, construct and use a

patented invention solely for sale or export to specified countries. The authorization

once granted is valid for a period of two years, is nonexclusive, is non-transferable, and

is renewable for a further two-year period.

In another Canadian first, the Commissioner granted the first licence to

Canadian generic drug manufacturer Apotex under CAMR in September to manufacture and export

APOTRIAVIRTM, a triple combination AIDS therapy, to Rwanda.10

NOTEWORTHY PATENT DECISIONS

No Revival Of Dead Applications After Failure To Make Payments Within

Reinstatement Period In Harry O. Wicks v. The Commissioner of

Patents,11 the Federal Court found that curative provisions of the Patent

Act do not provide a remedy for the failure to pay the applicable government fee, only

deficient payments. As noted in last year's Review,12 Section 78.6 of

the Patent Act came into force on February 1, 2006 to address the harshness of the

Dutch Industries decision, and allowed a one-year window of opportunity (extending

from February 1, 2006 to February 1, 2007) for patent holders and applicants to

"fix" their applications by topping up their payments. This window of

opportunity is now shut, but CIPO has introduced new regulations to address deficient

maintenance fee payments as noted above.13

In Wicks, the applicant of a number of abandoned Canadian

patent applications attempted to revive them by arguing that Section 78.6 of the Patent

Act applied retroactively to cure missed maintenance fee payments. The applicant

failed to pay annuity fees and, as a result, the patent applications were deemed abandoned.

Within one year of the deemed date of abandonment, the applicant submitted a form claiming

small entity status and requested reinstatement of the patent applications submitting the

appropriate fees as a small entity. When the applications were later abandoned again, the

applications were not revived and those were allowed to lapse.

In order to revive the cases, the applicant argued that the maintenance

fee payments should have been made at the large entity rate all along, and the enactment of

subsection 78.6(1) provided a remedy by allowing a one-year window of opportunity for

patent holders and applicants to "fix" their applications by topping up their

payments, thereby allowing for the reincarnation of the dead patent applications.

In refusing to allow the revival, the Federal Court found that the

applicant could not bring himself within the purview of subsection 78.6(1) since "[i]t

is evident that section 78.6, on its face and in accordance with Parliament's intent, was

enacted to remedy the harsh effects of the Dutch Industries decisionÖ. If the

applicant had continued to pay small entity maintenance fees, albeit in error (as a result

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