Supreme Court of Canada eliminates Promise of Patent Doctrine

In an exciting decision released today, the Supreme Court of Canada eliminates the Promise Doctrine in Canadian patent law, which was established by the Federal Courts of Canada some years ago.

Under the Promise Doctrine, patents could be invalidated if they did not live up to all of the promises made in the patent, such as to a particular utility or advantage.  To the delight of many patent holders, the Supreme Court finds that a single use related to the nature of the subject matter is sufficient, and that utility must be established by either demonstration or sound prediction as of the filing date.  The Court also confirms that a patent holder is not required to disclose the utility of the invention.  For the full decision:


Features of Colour! Now part of a Combination of Features Protectable as a Canadian Industrial Design

We are excited to report that the Industrial Design Office now takes the position that colour may form part of a combination of features that constitute a design as defined in section 2 of the Industrial Design Act.  However, colour as the sole design feature is not considered to fall within the definition of a design.

The Canadian Intellectual Property Office (CIPO) also announced changes to five (5) other industrial design office practices.

The six (6) practice changes are related to:

  1. applications for protection of computer-generated animated designs
  2. colour as a registerable feature of an industrial design
  3. time limits to respond to office actions 
  4. the search to assess the originality of an application where there is a priority claim
  5. the issuance of notices of possible refusal
  6. delaying the registration of an application

A fact sheet providing an overview of the changes is also available.

Quebec and Saskatchewan to legislate Patent Box Incentives

Quebec and Saskatchewan are the first provinces in Canada to announce fiscal incentives for companies commercializing intellectual property. On March 17, 2016, Quebec’s Minister of Finance announced a “patent box” that would lower tax rates on revenue attributable to patents for inventions developed in Quebec as part of the provincial budget coming into effect on January 1, 2017. Earlier in the month, on March 11, Saskatchewan’s Premier announced that, if re-elected, a similar patent box incentive will be implemented in this province.

Prepared By Leah Labib, Associate

Patents Granted by Country at the USPTO: Canada is 6th in the world!

Canada should be proud of its recent record at the US Patent and Trademark Office in terms of granted patents.  Among foreign country filers, Canadian resident companies/individuals placed 6th in the total number of US patents being granted between 2001 to 2014.  In fact, between 2007 and 2014, the number of US patents granted to Canadians has more than doubled!  Innovation is alive in Canada, and our innovators are succeeding at protecting their rights in one of the most important markets.

Please visit link for a full listing of countries:




C+BR Recognized as 2015 Patents Law Firm of the Year in Canada

Clancy P.C. + Brion Raffoul is pleased to announce its recognition in the Legal Awards 2015 as “Patents Law Firm of the Year – Canada” by Lawyer Monthly (a UK-based publication).  C+BR was one of six law firms recognized in Canada, and in the company of about one hundred law firms worldwide.  Each recipient was subject to an independent and confidential nomination and research process.

For further details, please visit the Legal Awards 2015 PDF press release  –

A link to the entire Awards Edition –

Canada Ratifies the International Convention for the Protection of New Varieties of Plants

Canada has ratified the International Convention for the Protection of New Varieties of Plants. The treaty will come into force on July 19, 2015. Canada previously amended the Plant Breeders’ Rights (PBR) Act via Bill C-18, which came into force in February 2015, to bring the legislation in line with the Convention.

Under the PBR Act, in order to obtain exclusive rights to a plant variety, a plant breeder must invent a plant that is: new, distinct, uniform and stable. The breeder’s right to exclusivity will extend for 20 years, or 25 years in the case of trees and vines. If exclusive rights are granted, the rights holder may authorize a third party to exercise those rights; however, use of the protected material for private and non-commercial purposes, experimental purposes, or for the purpose of breeding new plant varieties does not constitute infringement. In addition, the amendments legislatively entrench the farmer’s privilege, a previously implicit restriction to plant breeder’s rights, which allows farmers to store and use their harvested material for the subsequent propagation of the plant variety.

The International Convention for the Protection of New Varieties of Plants can be found here.

For more information regarding the impacts of the International Convention for the Protection of New Varieties of Plants, on Canadians, click here.

By Alexandra Lyn

Patenting Medical Diagnostic Methods in Canada

CIPO has released new Guidelines for analyzing the patentability of Medical Diagnostic Method Claims.

As with general Canadian practice, Medical Diagnostic Method Claims must be construed in accordance with the practice of purposive claim construction. Namely, the claims must solve the problem described by the inventors according to the  essential elements identified in the Description.

Specifically regarding Medical Diagnostic Methods, the Guidelines identify two broad problem categories: (1) Data Acquisition Problems and (2) Data Analysis Problems. The Guidelines conclude that:

  • Data Acquisition Problems constitute patentable subject matter because the essential elements described include technical matter beyond the Common General Knowledge of the skilled artisan; however,
  • Data Analysis Problems do not constitute patentable subject matter because the essential elements are often disembodied (e.g., relate to mental analysis and/or intellectual significance of the data), and are therefore non-compliant with Section 2 of the Patent Act.

Should you have any questions regarding medical diagnostic method claims, please feel free to contact one of our professionals.

For further information, please see the Practice Notice at:

Prepared by Leah Labib

Canadian Competition Bureau Releases Draft IP Enforcement Guidelines

The Competition Bureau has released a draft version of its Intellectual Property Enforcement Guidelines that outlines how the Competition Bureau intends to approach the interface between competition and IP law.


There are two broad categories in which the Competition Bureau will determine whether conduct involving IP raises an issue under the Competition Act. The first pertains to agreements or arrangements between independent entities that hinder the competitiveness of the marketplace. The second pertains to situations where a dominant entity exercises its IP rights in a manner that prevents others from competing in the marketplace. The latter is only applicable in certain circumstances, because merely exercising IP rights rarely constitutes anti-competitive behaviour.


For further information, please contact our office.


Katie Wei and Alexandra Lyn

Privilege for Patent & Trade-mark Agents and Extensions of Time at CIPO for Unforseen Circumstances

By Katie Wei and Alexandra Lyn

Significant changes will be introduced to Canada’s laws on intellectual property as Bill C-59 received Royal Assent on June 23, 2015.

Privileged Communications

Client communications with registered Canadian patent and trade-mark agents will be privileged and confidential under the new legislation. This means that communications will be protected from forced disclosure in legal proceedings as long as the communication is (a) intended to be confidential, and (b) made in order to give or receive advice relating to the protection of inventions or trade-marks.

Communications between clients and foreign agents will also be privileged, provided that the communication is privileged under the laws of the foreign jurisdiction and the criteria above are met. These provisions will come into force on June 23, 2016; but will apply retroactively, as long as the communication remains confidential and are not subject to litigation before June 23, 2016.

Correction of Errors and Extension of Time Limits

The new legislation also provides for corrections to obvious errors in patent or industrial design documents, as well as extensions of time limits due to unforeseen circumstances (e.g. floods or ice storms) in patent, trade-mark, or industrial design documents. These provisions will likely come into force at a later date.

For more information, please contact our office.

Update on Patenting Methods of Medical Treatment in Canada

By Leah Labib and Natalie Raffoul


Some good news regarding methods of medical treatment and dosage-related Claims in Canada.


While patent claims directed to methods of medical treatment remain unpatentable in Canada, claims to medical uses are generally permitted. With regard to the permissible types of use claims, the Canadian Intellectual Property Office (CIPO) recently released revised Examiner guidelines that broaden the scope of patentable subject matter for medical use claims. The Practice Notice – PN 2015-01 – suggests that claimed dosages may be patentable. Specifically, claims directed towards “a fixed dosage, a fixed dosage regimen, a patient sub-population or to a particular administration site” are now considered patentable as they do not “[limit] a physician’s professional skill or judgement”.


The new guidelines also suggest that claims “instructing” a medical professional on “‘what’ to use” to treat a patient may be patentable. However, claims “instructing medical professionals on “how” to treat a patient are considered methods of medical treatment and are therefore not considered patentable.


Should you have any questions regarding medical use claims, please feel free to contact one of our professionals.


For further information, please see the Practice Notice at