Legal news and trends for Canadian in-house counsel and c-suite executives
Issue link: https://digital.canadianlawyermag.com/i/50881
By Cynthia Rowden & Ken Bousfield Changes in IP practice T he world of IP protection and enforcement is constantly changing. In Canada, the last year has seen proposed changes to the unwelcoming tenor of proposed changes to Chapter 9 of the Manual of Patent Office Practice (MOPOP), a policies and procedures guide to the Patent Act; and a number of important practice changes in the Trade- marks Office, to bring practice in Canada in line with its international partners, and also to streamline processes. However, the biggest changes may be yet to come. MOPOP The Canadian Intellectual Property Office publishes the MOPOP. It has no legal force or effect, but is widely used, particularly by examiners whose duty it is to reject appli- cations that do not comply with the law and supporting regulations. Chapter 9 addresses s. 27(3) of the Patent Act, which governs the description of an invention. It requires the invention to be described in a manner permitting a person of ordinary skill to practise the invention as well as the inventor could have done, once the patent has expired. CIPO has recently proposed some con- troversial revisions to Chapter 9: • The disclosure itself be construed to iden- tify "essential features" that must appear in the claims. Failure to include alternate embodiments could result in features of a sole described embodiment being consid- ered to be essential features of the claims. • The invention is to be presented in the context of a problem and an identified solution. • CIPO admits the law does not require disclosure of utility, nonetheless a fail- ure explicitly to disclose the utility could result in the application being refused since the application would not be con- sidered complete. • If the applicant relies upon the doctrine of sound prediction, the detailed description must provide the underlying theory and factual basis upon which it is based. The proposals underline the importance of careful drafting. If implemented, given the prohibition on new matter, the advan- tages of the inclusion of greater details at the time of filing will be even stronger. As always, the specification ought best to include thorough, multi-level concep- tual, functional, and specifically detailed descriptions of multiple embodiments of the invention, and ought to employ many examples to establish parameter ranges. The utility of the invention is best shown implicitly in examples of operation or use. The specification should avoid language tending to single out particular features or aspects of the invention, "objects of the invention," or other language that might inadvertently cause features to be consid- ered "essential." While applicants may desire an unevent- ful allowance of claims, where CIPO prac- tice diverges from the law, applicants should be prepared to respond appropriately. Changes at the Trade-marks Office Some of the most important changes taking place at the Trade-marks Office are: Revised opposition practices. Ambiguities and difficulties with a 2007 notice on opposition practice resulted in a major revision in 2009. Most importantly, a new "cooling off" period has been introduced. Both parties can, with consent of the other, request an extension of up to nine months before filing either pleadings or evidence. In addition, the practice notice sets benchmark extension guidelines and clarifies additional extensions will only be granted in exceptional circumstances. In the year since implementation of this new practice, it is clear that the guidelines put pressure on parties to settle faster. At the same time, there are many cases where unique circumstances should justify time for the parties to pursue agreement, yet there is doubt about whether extensions will be allowed. Revised summary non-use pro- ceedings (s. 45). The Trade-marks Act contains a useful provision permitting any entity to request the office to issue a notice to a registrant, requiring it to file evidence of use of its mark in the three years before the notice. The section is helpful in clearing the register of marks that would otherwise block a new appli- cation. The new practice notice limits extensions of time to file evidence or make submissions. In addition, it clari- fies that the office will generally not issue a notice in connection with any registra- tion if a notice has been issued in the last three years, to prevent repeated attacks against any registration. Three notices on deadlines to respond to official letters have been issued. The first changed the term for responding from four to six months. The second tightened up the generous practice of granting extensions of time — to a single, six-month extension, bar- ring special circumstances. The third removed the deadline to file a response on objections regarding assignment or change of name records. The biggest changes are yet to come. The time to comment on proposals to modernize the Trade-marks Act has just ended. The focus of the discussion is possible accession by Canada to the Madrid Protocol and the Singapore Treaty. Should Canada join these treaties, it is likely that there will be major changes to the Trade-marks Act. IH Cynthia Rowden is the leader of the trademark practice group and Ken Bousfield is a partner in the patent practice group at Bereskin & Parr LLP in Toronto. INHOUSE JUNE 2010 • 9