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LEGAL REPORT: INTELLECTUAL PROPERTY "For most Canadian applicants, the objective is to get the issue of a U.S. patent as soon as possible." — FRASER ROWAND, RIDOUT & MAYBEE LLP new rules, first disclosed late last summer, set limits on the number of allowable claims to patent applications, restrict the number of continuances, and imposes duties surround- ing the disclosure of any related application a patent appli- cant might have. They are intended to relieve a backlog of applications and languishing files. But the response to the new rules as they were proposed was "overwhelmingly negative," says Rowand, referring par- ticularly to the pharmaceutical sector, on which they would have the most impact. Just hours before the rules were to come into effect Nov. 1, the USPTO was hit on Halloween with legal actions by inventor Dr. Triantafyllos Tafas, along with GlaxoSmithKline. The parties contend, as did many critics, that the new rules were complex, often vague. "People were scrambling just to try to understand them because there was a complete nest of caveats and exceptions," says Rowand. "Generally, patent lawyers don't want to put anything on the record if they can avoid it." Rowand says lawyers are expecting the matter to be heard early in the year. In the interim, "It's a wait and see," he says. "As far as applicants go, we're trying to structure things to deal with the changing situation and make sure an applica- tion is as water tight as possible upfront." Before the pro- posed rule changes "you could file a large application and if you weren't entirely sure what you were going to go after, you had options in prosecution for continuation, examination, and dividing things out," he says. "But if this rule package becomes effective, you've lost a lot of these options. There will be a lot more thought that has to go into the initial fil- ings than may have gone into it before." Despite the uncertainty south of the border, it's not like- ly Canada — with its smaller market — will become the new patent frontier, even if it does ramp up its intellectual property regime, Rowand adds. "For most Canadian appli- cants, the objective is to get the issue of a U.S. patent as soon as possible." Hill Dewar Vincent LITIGATION COUNSEL Hill Dewar Vincent carries on a legal practice that concentrates on providing litigation, arbitration and dispute resolution services to local, national and international clients. Dave Hill Sherri Walsh Derek M. Olson Robert A. Dewar, Q.C. Faron J. Trippier Madeline Low Stephen F. Vincent Karen R. Wittman Mandy Klein Counsel: The Honourable Peter S. Morse, Q.C. Suite 2670 - 360 Main Street, Winnipeg, Manitoba R3C 3Z3 Telephone (204) 943-6740, Facsimile (204) 943-3934 E-mail: lawyers@hillco.mb.ca 52 JANU AR Y 2008 www. C ANADIAN Law ye rmag.com Untitled-2 1 12/6/07 10:48:19 AM