promise doctrine

Promise Doctrine Rejected by the Supreme Court of Canada

By | Canada, Intellectual Property, Katie Wang, Patent, Shapiro Cohen LLP

On June 30, 2017, the Supreme Court of Canada released its highly anticipated landmark decision in AstraZeneca Canada Inc. v. Apotex Inc. (2017 SCC 36) in which it considered the so-called “promise doctrine”. The Supreme Court of Canada has found the “promise doctrine” to be “unsound”, “not good law” and “incongruent with both the words and scheme of the Patent Act.”

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Canada’s Trademarks Act

Upcoming Changes to Canada’s Trademarks Act

By | Canada, Intellectual Property, Shapiro Cohen LLP, Trademark

Canada will be making substantive changes to its trademark laws. The Canadian Intellectual Property Office has confirmed that it now plans to implement the amendments to the Trademarks Act in early 2019 and has just released the proposed changes to the Regulations which are required in order to facilitate the implementation of the amendments. Consultations on the draft regulations will be open until July 21, 2017.

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antispam legislation

Canada’s anti-spam laws are changing

By | Canada, Intellectual Property, Shapiro Cohen LLP

Canada has implemented anti-spam legislation that affects the sending of commercial electronic messages (CEMs) to and from Canadians. This legislation affects organizations both inside of Canada and out – if a foreign organization is sending commercial or promotional information to Canadian recipients electronically, such communication is covered by the legislation

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Trademark Monitoring

The Importance of Trademark Monitoring

By | Canada, Intellectual Property, Shapiro Cohen LLP, Trademark

You have found yourself in the enviable position of having a successful business with a recognizable brand name. You did your due diligence: Before selecting your brand name, you consulted your trademark agent to make sure your idea was registrable. You searched the marketplace to make sure you would not interfere with the rights of others. You sought protection for that brand name by registering it as a trademark and you spent significant resources promoting the brand name to the public. You did everything right. But the work in protecting a trademark does not stop there.

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I Just Disclosed My Invention – Can I Still Protect It?

By | Canada, Industrial Design, Intellectual Property, Patent, Shapiro Cohen LLP

The answer to this question depends on the type of protection that is being sought, the specific countries in which protection is desired, and also the nature and the timing of the disclosure that has been made. Generally speaking, fewer options will be available after an invention or an industrial design has been disclosed publicly, but it may still be possible to obtain some useful protection.

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new brand

The Benefits of Trademark Searching and Clearance

By | Canada, Intellectual Property, Shapiro Cohen LLP, Trademark

If you are considering launching a new brand in Canada, it is generally a good idea before investing in the launch, and even before filing a trademark application, to determine whether the proposed mark is available for use and registration. This inquiry is carried out by conducting a clearance search for the trademark against the relevant goods and services with which you intend to use it.

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Budget Update: 2017

By | Canada, Intellectual Property

In its 2017 budget, the Canadian Federal Government announced its “Intellectual Property Strategy 2017,” in which “the Government will develop a new intellectual property strategy over the coming year. The strategy will help ensure that Canada’s intellectual property regime is modern and robust and supports Canadian innovations in the 21st century.”

The Minister of Innovation, Science and Economic Development, Navdeep Bains, indicated that part of this strategy includes improving IP literacy of Canadian businesses, and making sure that robust IP strategies are built into their business plans. In particular, this means that startups and scale-ups will be more strategic about IP processes, in order to capture the value of R&D investments. Stay tuned!

Implication of CETA on the Pharmaceutical Industry

By | Canada, Intellectual Property, Patent, Shapiro Cohen LLP

Pharmaceutical IndustryThe Canadian federal government wishes to implement the Comprehensive Economic and Trade Agreement (“CETA”) after it was signed at the end of October 2016. Bill C-30 seeks to amend the Patent Act to provide for the issuance of Certificates of Supplementary Protection (“CSP”), which seeks to compensate patentees for the effective loss of patent protection they suffer as they await regulatory approval to market a drug in Canada. The term of a CSP will be calculated by subtracting five years from the period beginning on the patent’s filing date and ending on the day on which a Notice of Compliance (NOC) is issued, up to a maximum of two years. For more information please contact us.

Exclusionary Rights

Exclusionary Rights in Useful Articles: Corocord et al v. Dynamo

By | Canada, Copyright, Intellectual Property, Shapiro Cohen LLP, Trademark

In today’s competitive marketplace, the right to prevent a competitor from replicating a consumer product can be tremendously valuable.
In the recent Federal Court decision in Corocord Raumnetz GmbH and Kompan A/S v. Dynamo Industries Inc., 2016 FC 1369, the Court had the opportunity to consider exclusionary rights in useful articles in the context of the Canadian Trademarks Actand Copyright Act.

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Colour as a Registrable Design Feature of an Industrial Design

By | Canada, Industrial Design, Intellectual Property, Shapiro Cohen LLP

Registrable DesignOn January 16, 2017, the Canadian Industrial Design Office issued a Practice Notice stating that that colour may form part of a combination of features that constitute a design. Colour by itself is not considered to fall within the definition of a design.

In the case of an application for registration of a design that includes colour as a feature, the description must state that colour forms part of the design. Drawings or photographs filed in respect of an application for registration of a design that include colour as a feature, must be filed in paper form and in colour. For more information please contact us.