Canadian Intellectual Property Office to update online filing

Awesome smileCIPO has announced that at the end of July or beginning of August, the online mechanisms for filing patents on line will be updated.

Here’s the CIPO Website Link

Apparently you will be able to request yourself to be added to the trademark agent registry online. This would be more earth shattering if more than 14 people a year passed the examination, but it’s a step.

Also, you will be able to file a patent application from your mobile device!

Wait, what?

I don’t think that one is going to get a lot of usage. However, good on CIPO for trying to stay current!

Personally, I find filing patent applications online to be frightening enough using a big screen computer with a real keyboard, but if there is someone out there who can stomach filing a patent application on his phone, I want to shake his hand for having nerves of steel.  And the sense of a rabbit.

: )

Canadian Patent Practice – Medical Diagnostic Claiming

The Canadian Patent Office has issued another practice notice for practitioners in the pharmaceutical patent field!

Click Here for the Link to the Notice

It is actually quite a good read, patiently walking the reader through the logic of “Data Acquisition” and “Data Analysis” type claims. Examples are provided, which help me feel the concepts in my pilates-hardened inner core.

Where a physical step is an essential element, the claimed subject-matter should satisfy the fickle Section 2 of the Canadian Patent Act. There is more of a challenge with data analysis, as one needs to ensure that the claims incorporate physical steps and not mere mental processes.

Arg!  Why do my experiments NEVER WORK????

Arg! Why do my experiments NEVER WORK????

Fantastic US Patent Term calculator UPDATED

Patent term history: VERY interesting. Did you know that the first US patent terms were only 14 years? This was in 1790 . Then in 1836 it was changed to 21 years with an extension option. Then, in 1861 it became 17 years with no extension options. In 1994, there was a change to bring the US patent term in line with other jurisdictions, part of NAFTA, and the term became 20 years from filing date (earliest, but not including provisional filing date). There are provisions for up to 5 years of extension in some circumstances (more algorithms – call me).

Patenting Medical Treatment in Canada

Although a little hard to find on the internet (Field Notes: search for practice notices only for trademark practice notices; search for patent notices for patent related practice notices), the Canadian Intellectual Property Office’s periodic official guidance on accepted case law interpretation are mighty useful, if a little confusing.

Maybe I’m just not suited to patent law; I find some of the discussions about why one thing is patentable and another not patentable to be dizzying, making me want to throw down my pencil and declare defeat.  However, as someone who writes patent and trademark exams for a living (it seems), giving up is not really in my vocabulary.

And, I can feel the principals of essentiality and purposive construction in my gut.  They make sense.

So many words, ‘though.

For example, take this quote from PN 2015-01:

In order to determine whether the subject-matter of a claim is statutory, examiners must take into account the guidance outlined in PN 2013-02, which provides that an assessment for section 2 compliance should be based on the essential elements of the claim as determined by a purposive construction as outlined in Part A of this document.


Medical use claims: are they patentable in Canada?  Well, it depends.  Not patentable:

Essential elements that point to a limitation of a physician’s professional skill or judgment include those that provide details of a dosing schedule encompassing a range and those that represent a range of potential dosages that a patient may receive (as distinct from a range of dosage forms).


…essential elements that narrow treatment to a fixed dosage, a fixed dosage regimen, a patient sub-population or to a particular administration site…

And that does give us something to go on.   Thank you, CIPO!


Foreign Filing Strategies

The question of what countries to file for invention protection: always a hard one. There is normally a timeframe (6 months to a year, depending on whether you have filed a utility patent or a design/trademark) in which one has to make the decision, and there are no do-overs.  

I present some considerations to help stir up your innate decision-making process.

For a North American company, the US is the biggest market and an obvious choice.  Furthermore, the USPTO acts quickly to provide feedback on patentability.  Canada is the other North American market, and the costs of patenting are relatively low, making it an easy decision for most businesses.

Mexico and the South American markets may be useful if you plan to do business further south. I recently had a patent go to grant in Mexico after a fairly reasonable prosecution,  which is promising.  Brazil is a large and sophisticated market.

Look at where your product will be or might be successful, or where your competitors operate, and file there.

Crossing the oceans, we find mega markets in Europe and Asia.

For Europe, Germany, France and the UK are large markets, and might be your first tier if budget is limited.  Traditionally, I prosecute European patents through the EPO and once granted, the invention is “validated” in each of about 28 European countries.    For designs and trademarks, there is an even easier process in Europe.  One application will do it all.

Caveat: Be careful not to assume that a country is covered by a community application in Europe – Norway is still outside of the fold.

Also, bear in mind that France, Germany, Luxembourg, Monaco, Switzerland/Liechtenstein and the United Kingdom do not require translations into their local language upon validation.  This is a consideration if you are on a budget and trying to decide which countries to validate your European patent in.

Asia is an important market with an increasingly sophisticated patent tribunals and court systems.  S. Korea, PRC (China), and Japan are the first tier.  Second tier could include Singapore, Vietnam, and Thailand, and India.

The middle east is another market that may interest you: Israel, Egypt, Saudi Arabia, Qatar, Oman, Bahrain, and the UAE are potential jurisdictions.

At the core, consider filing in depending on where you will be selling and where your competitors are, and  how long you want your patent list to look: Australia, New Zealand, the Philippines, Indonesia, and the Russian Federation.