Intellectual Property – When does Competition Bureau Step In? (Canada)

On March 31st, the Competition Bureau of Canada published guidelines on the intricate dance of the various Acts governing intellectual property and unfair competition.  It is not a bad read at all, as it provides succinct definitions of intellectual property types (which I will no doubt use for inspiration when explaining things to my clients – they are that good), as well as 9 examples of unfair practices  in which the Competition Bureau would be called to intervene.

Intellectual Property Enforcement Guidelines

Some of the examples are:

  • Price fixing
  • Exclusive Contracts
  • A Patent Pooling Arrangement
  • Refusal to License Intellectual Property
  • Representations Made in the Context of Asserting Patents
  • Reneging on a Licensing Commitment
  • Seeking an Injunction after Making a Licensing Commitment

Enjoy the read.  As always, the proof is in the pudding, or more accurately, in the implementation of these new Guidelines.

Healthy Relationships Between Clients and IP Practitioners

Between a client and his agent, things can go wrong very quickly.  Here are some common reasons.

  1. Money.  The cost of some activity is not clear to the client, or they think that once an application is filed, that issuance is just a matter of time, and not a matter of time AND money.  On the practitioner’s side, if a client does not have money, you are not going to get paid.
  2. Information.  Every client has a different level of sophistication.  Some are overwhelmed easily, and I find that with those, giving a time frame and full cost beginning to end is best.   Knowledgeable, clients are merely worried about getting a good deal.  Regardless of the type of client, the practitioner should be careful to have a written record of what was disclosed to the client in terms of risks and costs.  It is a good idea to confirm all instructions in writing.
  3. Bandwidth.  Practitioners must be aware that some clients need a lot of help with the patenting or trademarking process.   Clients need to be aware that all practitioners need to  bill their time, and cannot live off  last year’s filing.   If you want your agent /attorney to have bandwidth for you on a daily basis, you must be prepared to pay something for it.
  4. Endings.  Know when to say good-bye.  Circumstances change.  Be prepared to lose clients who think they have found greener fields somewhere else (as if that could possibly be true!).  Try to be grateful when a difficult client leaves you.  It’s hard, I know.  Clients, some practitioners may not be able to give you the intensive service you once had from them when they were starting out and filing your application because of a larger workload, or even personal matters.  Do not take it personally;  find a new practitioner and move on.

So you have an invention – now what?

I am asked almost daily “what is involved” in filing a patent application to protect an invention.  Every inventor is different in terms of his or her experience and technical background.  Here are some basic questions to have in mind that will make it easy for us to work together to have a successful patent application:

  1. Any prior public disclosure?  This can make it impossible to patent an invention.
  2. Patentability search – patent databases, web searching for similar products and competitors
  3. Drawings and written description so that the patent agent has something to work with
  4. Inventors and any duties to assign to an employer or investor?
  5. What countries do you want protection in?
  6. Is the benefit of patenting worth the considerable investment of thousands of dollars per country?

Practice Notices at the Canadian Intellectual Property Office – the Simpleton’s Guide

In Canadian patent and trademark practice, there is the law, the regulations containing more detail about how to comply with it, the Examiner’s Manual for each Practice (patents, trademarks), and then these cute little Notices from the Office on “practice”.

 

Trademark Practice Notices

Patent Practice Notices

Student: Oh wise old woman, which do we need to read, the Law, the Regulations, the Manual or the Notices?  

Wise old woman (looking pretty good for her years): Well, all of them, of course!  [Aside] That’s the rest of your life for you, young whippersnapper, because there are frequent updates.

 

There is always a statement with the Notices:

“In the event of any inconsistency between the notices and the applicable legislation, the legislation must be followed.”

 

Student: What prompts the issuance of these tiny authorities?

Wise old Woman: Often there is a recent Court Decision that leads to these notices, and the Practice Notice is intended to update Examiners in an official and public way on changes to practice, even subtle ones.  For example:

Patent Notice: Examination Practice Respecting Medical Diagnostic Methods – PN 2015-02

June 29, 2015

Student: What was the text of this Notice?

Wise old Woman: Too dull for me to reiterate, youngster.  Anyway, go to the website so I don’t get hit with a copyright suit.

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Some notices are statements about what has already been happening, almost an afterthought.

Colour Claims: PANTONE

Publication Date: 2010-12-22

Where an applicant claims colour(s) as a feature of the trademark, pursuant to Rule 28(1) of the Trade-marks Regulations the said colour(s) shall be described.  

Student: What about greyish-blue, or brownish purple?  Is that accurate enough?

Wise old Woman:  No.  But I’d be interested to hear what happened if you said “taupe” in your application.  Get back to me on that.

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Some notices appear to address annoying things that some patent or trademark agent has done recently,  so that no one ever tries it again:

Notice on returning a granted patent certificate

Date modified:

The Canadian Intellectual Property Office (CIPO) recommends that patent owners and agents do not return their original patent grant certificate for processing, unless CIPO specifically requests that it be returned. If during the process of returning a patent to CIPO, the original grant certificate is misplaced or lost in transit or process, a replacement grant copy (certificate) cannot be provided as the Patent Act and Patent Rules do not support such a re-issuance of original documents. …

Student:  Does this mean the applicant has to pay for a new certificate if the Office lost it?

Wise old: You are getting this very quickly, aren’t you?

 

Procedures at Time of Filing (aka, “no refunds”)

Publication Date: 1999-03-10

The Trademarks Office will not refund the application filing fee once an application is received by the Registrar of Trademarks. The fee set out in Item 1 of the Tariff of Fees, that is payable on the filing of an application for the registration of a trademark, is considered to cover the work associated with the filing of the application and is not considered to be dependent on whether or not the application obtains a filing date in accordance with section 25 of theTrade-marks Regulations

Student: That seems pretty clear…
Wise Old:  Yup.

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Student:  Why are there almost three times as many Trademarks Notices as Patent Notices?

Wise Old: Thanks for bringing that up, kid.  The Trademarks Examining Corp is more prolific with its Practice Notices.(as of November 30, 2015).   No answer to your question is available at this time.   It might just be a coincidence.

The scores so far:

Office of the Registrar of Trade-marks:  65 Notices

Patent Office:  24 Notices

 

 

 

 

Trademark and Patent Agent Exams in Canada -Rates

I wanted to share some research on pass rates for the TM and Patent Bar exams in Canada.

 

It should be noted that one has to qualify to write both the Patent Agent and Trademark Agent qualifying exams, and even accredited lawyers need to go through these exams.  I used to whine 😯 about how hard they were, but we’re on the front line and it takes a lot of training to fight for the rights of noble innovators and trademark holders!

(Fair Use, don’t you agree? – apologies to the talented Bill Murray in STRIPES)

and we can feel pretty proud of our skills, and in most cases, persistence, when we pass these exams.

 

Table 1. Canadian Patent Agent  Qualifying Exam passed/wrote in Numbers (sourced from Patent Agent Qualifying Examination Report)

Year Wrote Paper A

(patent application)

Wrote Paper B

(Validity)

Wrote Paper C

(Respond to Requisition)

Wrote Paper D

(Infringement)

Pass/Wrote overall
2012 174 186 97 142 17/231
2013 170 174 186 149 28/218
2014 156 141 62 119 40/196
2015

 

Table 2. Canadian Trademark Agent Qualifying Exams Passed/Wrote*

Year Pass Rate
2014
2013 18/67
2012 4/45

 *data kindly provided by CIPOexams as these are not published