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:


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

Do abstract ideas become patentable subject matter when implemented by a computer?

By J. Duffy, N. Raffoul, A. Brion

On June 19, 2014, the Supreme Court of the United States decided the matter of Alice Corp. v. CLS Bank International. This case determined the validity of Alice’s patent claims, which pertained to a computer-implemented scheme for mitigating “settlement risk” by using a third-party intermediary.

The Court essentially rehashed a two step framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patentable applications of those concepts.  In the first step, the Court likened the Alice claims directed to an “intermediated settlement” to those in the Court’s Bilski decision that dealt with “risk hedging”.  In doing so, the Court found that Alice’s claims concerned an abstract idea.  In the second step, the Supreme Court found that the computer functions in the claims were “well-understood, routine, conventional activities previously known to the industry” and that each step did no more than require a generic computer to perform generic computer functions. The Court additionally found that viewing these separate components as “an ordered combination” of steps did not change the results of the analysis. Therefore, the Court decided the claims were invalid.

While this case will undoubtedly receive a lot of coverage in the world of patents, it is hardly a surprising one.  Alice merely reflects the recent trajectory of US patent law regarding computer-implemented business methods:  when confronted with questionable claims to a computer implemented business method, it is safer to have something more than the business method for patentability.

On a practical note, the case highlights the need to make sure that the invention (especially the invention covered in the claims!) is something more than using a computer to implement a known business method.  Interestingly enough, the outcome of this case should be familiar to Canadians, as it articulates a well-established Canadian principle for patenting software: merely using a computer is not enough to transform the unpatentable into the patentable.

For the full decision:



Don’t Throw Rocks at Double Wall Glass

By Michael House

Canadian Federal Court Releases Industrial Design Infringement and Validity Decision

The Canadian Federal Court recently released a rare industrial design decision that clarified the standards and analytic approaches to be used for deciding claims of infringement and invalidity under the Industrial Design Act, RSC 1985, c I-9.  The case, Bodum USA Inc and PI Design AG v. Trudeau Corporation Inc., 2012 FC 1128, involved Bodum claiming that Trudeau infringed two designs of double wall glasses.  A double wall glass has an exterior glass lining that is separated from the interior glass lining by having air between the interior and exterior linings.  According to Bodum’s promotional materials, this keeps hot drinks hot and cold drinks cold longer than a traditional glass.  The double wall also makes it so that condensation doesn’t accumulate on the exterior of the glass.  Although the functionality of the glasses was discussed by the Court, the Court took this opportunity to reiterate that industrial designs “protect visual features but not utilitarian function.”  As such, the functionality of the glasses was not relevant for the purposes of the infringement analysis.

The Court proceeded on its analysis of the infringement by conducting a side-by-side comparison of the articles in question.  This analysis was led by the expert witness called by the counsel for Trudeau.   The Court decided that a close examination of the convex/concave nature of the interior and exterior lines of the glasses showed that the glasses were not “substantially similar.”  As this is the standard set out in section 11 of the Act, Bodum was not successful in its claims for infringement.

Bodum tried to argue that the analytic approach for infringement of industrial designs should be conducted in accordance with the three-pronged test set out in Valor Heating Co. v Main Gas Appliances Ltd., [1972] FSR 497.  This would involve the designs being compared separately, not side-by-side.  Without ruling on the issue, Boivin J said that this test may not be relevant in light of amendments made to section 11 of the Act in 1993.  As such, the analytic approach that will be used going forward will be a side-by-side analysis of the articles in question.

Trudeau turned the tables on Bodum by counterclaiming that the industrial designs held by Bodum were invalid in light of prior art that existed prior to the 2004 priority date of the designs.  Although registering a design with the Office of the Commissioner of Patents of the Canadian Intellectual Property Office results in a presumption of validity, this presumption can be rebutted if the claimant shows that the design is not “substantially different” from prior art.  Counsel for Trudeau pointed to designs that existed as early as 1897 that used the double wall design.  The Court was persuaded that the Bodum designs were not substantially different from the prior art.  As such, Bodum’s industrial designs were deemed invalid.

So, what can we take away from this decision?  First, the analysis for an industrial design infringement claim should be conducted by a side-by-side comparison of the articles with an eye to “substantial” similarity.   If the articles are not “substantially similar,” the claim will fail.  Second, in order to invalidate an industrial design, the claimant must show that the design is not “substantially different” from prior art.  Third, if you are going to trial for claims based on industrial designs, it is probably worth it to call an expert witness who agrees with your analysis of the articles (Bodum did not call an expert witness).

Of course, this is a trial decision and may not be the last word on these issues – Bodum may appeal the decision.  It would be interesting to see how the Court of Appeal reacts to the analytical approach taken in determining the invalidity of Bodum’s industrial designs.  In particular, it would be interesting to see if the Court of Appeal agrees with Boivin J that the standard of proof to rebut the presumption of validity of Bodum’s designs had been met by Trudeau.

Cadbury May Preserve Purple Wrapper Rights in UK

Submitted by Jessica Vaianisi.

UK-based chocolate company, Cadbury, was successful in preserving its pending application for the colour purple (Pantone 2685c) in association with milk chocolate.  Nestlé had appealed to UK’s High Court, challenging the UK Intellectual Property Office’s 2008 decision to award Cadbury exclusive use of the distinctive purple for its wrappers, arguing that “colours could not be practically trademarked for commercial advantage.”

Noting that Cadbury has used purple for its Dairy Milk bars since 1914, the High Court in London rejected the appeal, stating that “the evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate.”

The ruling means that, barring any further appeals, Cadbury’s application may now proceed to registration for the particular shade of purple for use in association with “milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate”.

This is not the first time we have seen a controversial colour trademark case; last month in the U.S., fashion designer Christian Louboutin won a trademark case against Yves Saint Laurent over the use of red soles on shoes. The District Court overturned an earlier 2011 decision, which said that a colour could not serve as a trademark in the fashion industry.

While colour trademarks are extremely difficult to obtain, these two rulings demonstrate that obtaining the registration of single colour marks requires a high-level of public recognition, where the colour has become analogous with brand.

To view the  UK High Court decision, click here.

Pro-Consumer Copyright Decisions Released by the Supreme Court of Canada

Five copyright decisions were released yesterday by the Supreme Court of Canada.  The decisions are generally consumer friendly decisions that will benefit consumers who like to download music from services such as Apple’s iTunes, AmazonMP3, or Spotify, and students who like to have freely available photocopies of educational materials.

In short, the Canadian Copyright Licensing Agency and the Society of Composers, Authors, and Music Publishers of Canada were looking to have additional royalties placed on music downloaded or previewed from music download services, and on music used in downloadable video games.  The Supreme Court decided that no additional royalties were warranted in these circumstances.

Straying from the pro-consumer motif that seemed to permeate the July 12th decisions, the Supreme Court ruled that streaming music from websites constitutes a form of communication or broadcasting.  The Court, therefore, allowed new royalties to be placed on such forms of communication.  The likely effects of this will be an increased cost of business for websites that stream music, such as the CBC.  Whether this increased cost of business will translate to an increased cost to the consumer is yet to be seen.

The only non-music related decision had the Court deciding whether royalties should be placed on photocopies of educational materials when they are used in the classroom.  The result of this decision is that educational institutions will be allowed to reproduce snippets of printed materials for educational purposes.  The Court decided that such reproduction fell within the meaning of “research” contained in the fair dealing provision of the Copyright Act.  This will allow teachers to continue to give photocopies of printed materials to their students instead of requiring them to purchase an entire book for the purpose of reading a single article.

More importantly, though, this decision is pointing to a shift in the jurisprudential treatment of the fair dealing provision in the copyright act.  Some legal scholars are of the opinion that despite the Court’s adherence to the formalistic analytical process that is required by the treatment of the fair dealing provision in case law, the Court is shifting towards treating the “fair dealing” provision more like a more flexible “fair use” system such as those found in the United States or Israel.

The full effects of these decisions will only be realized after the Bill C-11 copyright laws have been argued before the Supreme Court.  Of course, it could take several years before the Supreme Court will hear another case relating to the Copyright Act.  Regardless, it was an interesting and eventful day for Intellectual Property jurisprudence.

Some interesting articles relating to these recent Supreme Court decisions include:


Michael Geist:

Toronto Star:–supreme-court-rules-against-copyright-fees-on-music-videos-printed-matter


Should Colour be Accorded Trade-mark Protection in the Fashion Industry? Louboutin’s “Lacquered Red Sole” Trade-mark in Jeopardy in U.S.

In 2008, shoe designer Christian Louboutin was granted a U.S. trade-mark registration for “a lacquered red sole on footwear” as applied to “women’s high fashion designer footwear” (U.S. Reg. No. 3,361,597).   Louboutin’s red-soled shoes have become famous worldwide, as well as highly sought after by celebrities and fashionistas alike.  However, Louboutin’s U.S. trade-mark registration has recently been challenged by the fashion house, Yves Saint Laurent, which also features red-soled shoes in its fashion collections.  Saint Laurent claims that the use of colour in the fashion industry is intended to please the eye rather than to identify a commercial source.    The U.S. District Court for New York agreed with Yves Saint Laurent and found that the colour red as used by Louboutin is aesthetically functional and therefore not entitled to trade-mark protection.   Judge Victor Marrero found that granting trade-mark protection to a colour in the fashion industry unfairly impacted competition, “cramping what other designers could do while allowing Louboutin to paint with a full palette.”  Surprisingly, the court seems to have ignored the significant customer recognition and acquired distinctiveness of Louboutin’s red soles.  The District Court’s decision suggests that any use of colour in the fashion industry constitutes an aesthetically functional use.  Louboutin has appealed to the U.S. Court of Appeals (Second Circuit), and we will continue to monitor this case as it will have significant implications for fashion designers.  See Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.  2011 WL 3505350 (S.D.N.Y. Aug. 10, 2011).