The copyright in the above photograph is the exclusive property of Raptor Mining Products Inc. and used with permission.
ARTICLES
Patent Marking
Patent marking, the practice of labeling products to indicate protection by one or more patents, is a vital communication tool between patent holders and the public. In general, intellectual Property (“IP”) markings offer significant advantages to IP owners by...
What to Know When Licensing Your Trademark
You have to use it, or you’ll lose it, when it comes to trademarks. When licensing, you have to use it and control use of it, or you’ll lose it. A trademark owner (Licensor) can grant permission to another individual or corporation (Licensee) to use their trademark on...
Official Marks: Impacts of Amendments to the Trademarks Act
Overview The 2018 amendments to the Canadian Trademarks Act (the “Act”) relating to official marks are expected to come into force in the near future. The Canadian Intellectual Property Office (CIPO) published a draft practice notice outlining their proposal to...
The Federal Court of Appeal on the Patentability of Computer-implemented Inventions
Overview In Canada (AG) v. Benjamin Moore & Co. 2023 FCA 168, the Federal Court of Appeal rejected the test put forward by the lower court to determine the patentability of computer implemented inventions. The Court of Appeal did not put forward a new test or...
The Use of “Or” and “And/Or” Terms in Patent Claims
The use of clear and concise language is required when drafting claims for a Canadian patent application. Although imprecise terms should be avoided, “or” and “and/or” terms are (increasingly) included to avoid excess claim fees, working to reduce the total number of...
AIPLA CLE Webinar: What’s all the CANUKUS about? Trademark Prosecution Pain Points in Canada, the UK, and the US
Michelle Wassenaar, Method Law Professional Corporation (Canada) Steven Wake, Forresters (United Kingdom) Patricia Olosky, The Webb Law Firm (United States) Introduction Trademark lawyers from Canada, the UK and the US herein provide advice on dealing...
How to potentially overcome a distinctiveness objection by providing evidence use of your trademark
Guidance from the Trademarks Office and its Limitations After the amended Trademarks Act and the new Trademarks Regulations came into effect on June 17, 2019, many trademark applications have received a new type of objection from the Trademarks Office that has been...
Non-Publication Requests for U.S. Patent Applications
Non-provisional U.S. patent applications are published 18 months after the filing date (or priority date) of the application by default. However, applicants of U.S. patent applications have the option to file a non-publication request if they have not filed their...
The Benefits of Filing a U.S. Provisional Patent Application
A “provisional” U.S. patent application is an application that can be filed with the U.S. Patent Office to secure a filing date for an invention. Since most countries have a first-to-file system as opposed to a first-to-invent system, it is important to be the first...
The Business Development Bank of Canada (BDC) as a Potential Financing Option for Companies Rich in Intellectual Property
Broadly speaking, financing options for companies rich in intellectual property (IP) but poor in capital include:
Registering Trademark Registrations with Amazon Brand Registry
Amazon’s Brand Registry program offers sellers additional protection for their trademarks by making it easier to find and remove listings from infringing third parties. To be eligible for the program, the seller must have an active trademark registration in at least...
Brief Guidelines for Preparing Your Own Industrial Design Drawings
This is a guide for inventors who wish to prepare their own drawings for the purposes of an industrial design application or to assist hiring a third party illustrator. The Industrial Design Regulations outline the general requirements for drawings that are presented...
Brief Guidelines for Preparing Your Own Patent Drawings
This is a guide for inventors who wish to prepare their own drawings for the purposes of a patent application or to assist a third party illustrator. Both the Patent Act and the Patent Rules outline the requirements for when drawings are necessary and if so, the type...
The Advantages of Registering Your Trademark
Common law rights through use of a trademark can exist without registering the trademark with the Canadian Intellectual Property Office. However, these rights are limited, and trademark registration has the following advantages: Exclusive rights to use the mark across...
NEWS
Bill C-47 to Introduce a Patent Term Adjustment to Canada
On June 22, 2023, the federal government passed Bill C-47, An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023. The introduction of a Patent Term Adjustment (“PTA”) system will be among the amendments to the Patent Act once in...
Changes to Trademark Opposition and Section 45 Proceedings
Overview As of December 1, 2023, the Trademarks Opposition Board (TMOB) implemented changes to the Practice in trademark opposition proceedings and the Practice in section 45 proceedings. The durations granted for extensions of time, cooling off periods, and...
The Patent Rules’ New Definition for a “Small Entity”
On January 1, 2024 the new definition for a “small entity” (which entitles a patentee to pay reduced fees) will be: (a) in respect of an application for a patent – other than a PCT national phase application or a divisional application – the applicant of the...
The Canadian Intellectual Property Office Set to Increase its Fees in 2024
Overview The majority of the Canadian Intellectual Property Office’s (CIPO) fees will be increased by about 25% and the definition of a “small entity” for patents has been expanded to include organizations that employ between 50-100 employees. The fee increase will...
Unitary Patent and Unified Patent Court in Europe
Overview A European patent with unitary effect ("Unitary Patent") and the Unified Patent Court ("UPC") are expected to come into effect in the Spring of 2023. Please find more information at https://www.epo.org/applying/european/unitary.html The patent prosecution...
Amendments to Canadian Patent Rules are Coming Into Force October 3, 2022
Overview On October 3, 2022, the newest set of amendments to the Patent Rules in Canada will come into force. These amendments will bring about changes to patent prosecution in Canada. The key changes under these new Patent Rules are excess claim fees and the addition...
Trademark Applications – Requests for Expedited Examination and Measures to Improve Timeliness in Examination
In 2013, when applications were typically being examined within 6 months of filing, the mechanism to request expedited examination for trademark applications was removed by the Trademarks Office. Currently, examination of trademark applications takes about 2 years...
Michelle Wassenaar has received recognition as one of the World’s Leading Trademark Professionals of 2021!
Michelle Wassenaar has received recognition in the WTR 1000: The World’s Leading Trademark Professionals 2021 and is listed under the category of “enforcement and litigation”! As a recommended expert in Canada, the World Trademark Review (“WTR”) states that: Michelle...
Trademark Applications related to Covid-19 may be Eligible to receive Expedited Examination
In 2013, when applications were typically being examined within 6 months of filing, the mechanism to request expedited examination for trademark applications was removed by the Trademarks Office. Currently, examination of trademark applications takes about 2 years...
Automatic Extensions of CIPO Deadlines due to COVID-19
Due to operational restrictions related to COVID-19, the Canadian Intellectual Property Office (CIPO) has provided public notice of various service and website interruptions: HERE. Most deadlines that originally fell between March 16, 2020 and August 21, 2020, now...
New Trademark Practice: No More Guaranteed Extensions of Time
The Trademarks Office recently published new practice notice indicating that applicants who are issued examiner's reports dated on or after January 17, 2020 will no longer be guaranteed at least one six-month extension of time to file a response. Instead, the...
Intersection between the Customs Act and IP Law
The Customs Act (R.S.C., 1985, c. 1 (2nd. Supp.)) sets out the law in Canada with respect to the importation and exportation of goods, as well as the collection of tariffs on such goods. The Customs Act explicitly refers to patents, trademarks and copyright in two...
MADRID PROTOCOL
Method Law as your Designated Canadian Agent On June 17, 2019, Canada joined the Madrid Protocol. As such, foreign agents may extend their clients’ international applications or registrations to include Canada as a designated country. However, foreign agents should...
Changes in Canadian Trademark Law (Effective June 17, 2019)
Effective June 17, 2019 the new Canadian Trademarks Act will be coming into force resulting in substantive changes with potential cost consequences and a reduction of the registration term. The Canadian online system will be inaccessible June 14 to June 16, 2019....
Canada Border Agency (Counterfeit Products)
The Canada Border Services Agency's (CBSA) allows intellectual property rights holders to file a request asking for the CBSA to temporarily detain suspected counterfeit goods encountered at the border while rights holders seek legal redress. To request help from the...