In 2010, Canadian entities filed almost 5000 applications for
United States patents1, representing about 2.3% of all
patent applications filed at the U.S. Patent and Trademark Office
("USPTO"), and just short of the 5200 applications for
Canadian patents2 filed by Canadian entities at the
Canadian Intellectual Property Office ("CIPO"). As the
United States is Canada's largest trading partner, and by far a
bigger market, it is no surprise that Canadians file almost as many
patent applications in the United States as they do in Canada.
The America Invents Act ('AIA') signed into law by
president Barack Obama on September 16th, 2011 brings about
sweeping changes to the United States' patent system, some of
which may require Canadian applicants to adapt their current filing
strategies to consider changes from south of the border. Other
mechanisms have also been put into place that may be used as
strategic tools going forward.
One change that may alter the approach companies take to
monitoring the patent filings of competitors and others operating
in the same space is the introduction of substantial mechanisms for
third parties to raise various forms of oppositions to the granting
of another party's patent. These changes come into effect on
September 16th, 2012, meaning that patent applications currently
being filed may be subject to these mechanisms.
Third-party submissions of relevant references may be submitted
before the earlier of (i) the issuance of a notice of allowance; or
(ii) the later of six months from the date of first publication or
the date of the first Office Action. Effectively, this requirement
requires that third-party submissions be made before the
examination process is underway. Third parties will have the
possibility of having substantial influence over the examination of
a patent application. This mechanism may thus prove to also be
significant for companies wanting to prevent overly-broad claims
from issuing to a competitor, and provides an incentive for
enhanced monitoring of competitor patent filings. Preventing a
patent application from issuing, or more accurately, preventing
overly-broad claims of a competitor from issuing, could result in
substantial cost savings in mitigating the risk of litigation after
issuance of a patent. The implementation of a system for monitoring
competitor patent filings, triggering alerts to
potentially-troublesome filings, and making submissions to the
USPTO in respect of these filings should be considered.
The AIA also provides a post-grant review process that permits a
third party to file a petition with the USPTO to challenge the
validity of a patent within nine months of its issuance. Of note,
and in contrast to the prior rules, the validity of a patent may be
challenged on any grounds and is not limited to prior art-based
objections. The post-grant review process is an ex parte review. An
inter parte review process is also available that permits
substantial involvement by the third-party requestor.
It remains to be seen how widely used these mechanisms will be,
but they do have the potential to be effective defensive tools
forming part of a comprehensive IP strategy.
1. "Patent Counts By Country/State And Year"
published by the USPTO, March 2011.
2. "CIPO Annual Report 2009-2010"
published by the CIPO.
The foregoing provides only an overview. Readers are
cautioned against making any decisions based on this material
alone. Rather, a qualified lawyer should be consulted.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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