CanadaPatentBlog

For many countries in the past, including Canada until 1923, after an initial period of time, e.g. three years, a patent would not be valid unless the invention was being manufactured in the patent-granting jurisdiction. This was never part of the United States patent law.

From the inception of the Paris Convention in 1883, the United States campaigned against this type of patent law policy of requiring “local manufacturing”. A review of the history of the Paris Convention will show regular revisions that tightened restraints on a country’s ability to insist on local manufacturing as a condition for the exercising of
patent rights. Read the rest of this entry »

The benefits of a priority patent filing only arise in respect of the first filing of an application describing specific features in respect of an invention. This is a stipulation in the Paris Convention which has been adopted as part of the Canadian patent law.

Consequently, US attorneys who proceed by first filing a US provisional application, followed by a US non-provisional application a year later, but without filing an application in Canada within the priority year are exposed to the following limitations under Canadian patent law.

Canada does have a one-year grace period that shelters an application from self-originating public disclosures in the previous year. This partial one-year grace period extends back from the actual Canadian filing date. It does not extend back from the priority date associated with an application. Therefore, if a client, after making an initial US provisional application, decides to publicly disclose their invention, then this sets a one-year deadline from the date of first disclosure for the filing of a patent application in Canada. Read the rest of this entry »

An important piece of information required by Canadian attorneys when effecting Canadian filings on behalf of foreign associates is the entity status of the applicant under Canadian patent rules.     

For an applicant to qualify as a small entity in Canada, no party having over 50 employees may hold any “right in the invention”.  This quoted expression is not defined and may include a shop right, a license, or even a security interest held by a bank.  There has not been sufficient litigation in Canada to clarify the meaning of this expression. New rules, not yet in force, have been tabled which exclude “contingent” rights, but this expression will still remain relatively undefined. Read the rest of this entry »

A priority patent filing is normally understood to shelter an applicant from any public disclosures that may be made by themselves or others in the priority year following thereafter.  This is true in respect of inventions that were not made available to the public before the priority filing date.  But it is not true in respect of inventions which were disclosed publicly before that date, even though the right to obtain a US patent is still available based on the US one-year grace period.

If a third party has disclosed an invention publicly before the date of a priority patent filing, then it is too late to file an application in Canada in respect of the subject matter that has been disclosed.

Once a priority date has been obtained, it will shelter the Canadian application against all public disclosures occurring thereafter during the priority year.  This is true irrespective of the source of such disclosures.  Under these circumstances, it is not necessary to file the Canadian application promptly unless the invention has been disclosed publicly by the inventor previous to the priority filing date. Read the rest of this entry »

Here is a thought as to what makes patent trolls so dangerous. They choose as their victim companies that are heavily invested into using patented technology.

These are not companies that are administering patent rights in order to assist a startup. Negotiations with the erstwhile infringer are not occurring at a stage where no one knows whether the technology will succeed. Rather, trolls are asserting patent rights against patented technology that has proven to be a success.

In this context, negotiating leverage is drastically shifted in the direction of the patent troll.

This is not the whole story, but surely this is one aspect.

On May 15, 2006 the US Supreme Court initiated an earthquake within the United States patent system. In a unanimous decision, the court rejected the traditional policy of issuing a permanent injunction against a party found guilty of patent infringement, absent exceptional circumstances. Instead, the Supreme Court ruled that the traditional principles of equity apply to the granting of an injunction - a “shut-down” order - in a patent case.

 To obtain an injunction, a patent holder must satisfy the four-prong test:

(1) that it has suffered irreparable injury;

(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;

(3) that, considering the balance of hardships between the patent holder and patent infringer, a remedy in equity is warranted; and

(4) that the public interest would not be disserved by a permanent injunction. Read the rest of this entry »