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: https://scc-csc.lexum.com/scc-csc/scc-csc/en/item/16713/index.do

 

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.

Attention Quebec Retailers! New French Language Regulations Coming Soon

The Quebec government introduced amendments to the Charter of the French Language that will come into force on November 24, 2016.  As a result, all Quebec businesses will now be required to add French words to their non-French trademarks on all outdoor signage.  This means that retailers like WALMART or BEST BUY will now need to include on their signage a French descriptor outlining the nature of the business, or a slogan.

Businesses will have 3 years to comply with respect to existing signage, but the changes apply immediately to all new signage. 

For additional information, please contact Paula Clancy.

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