Canada: Intellectual Property Weekly Abstracts Bulletin - Week Of February 6, 2012

Last Updated: February 13 2012

Edited by Chantal Saunders and Beverley Moore


Court Invalidates Helicopter Landing Gear Claims for Lack of Sound Prediction; However Awards Punitive Damages re Infringed Claim

Eurocopter v. Bell Helicopter Textron Canada Limitée

Infringement of several claims of a patent was alleged regarding two models of helicopter landing gear. Counterclaims alleged invalidity of the patent on the basis of anticipation, obviousness, lack of utility or of sound prediction, insufficiency, lack of best mode and overbreadth.

One model was found not to infringe, while the other was found to infringe the patent. The regulatory and common law experimental exceptions were not available, as the Court held that at least one of the twenty-one gears at issue was used on a non-test aircraft, and was in a display at a trade show, used to solicit orders amounting to $6 million in deposits. Thus, the Court held that the landing gear at issue was not used "solely for uses reasonably related to the development and submission of information required by law."

When the Court considered the validity allegations, anticipation was dismissed with the Gillette defence. With respect to obviousness, only one independent and two dependent claims were at issue. The remaining dependent claims were admitted not to disclose anything novel over claim 1. However, the claims were found not to be invalid for obviousness. The Court also held that the allegations regarding insufficiency were specious.

Regarding the allegations as to inutility, the Court held that unless a claim specifically refers to a particular use, "the requirement for utility of the patented invention should not be confused with any necessity to put it directly or by inference in the claims". In this case, the Court held that the patent promised to significantly reduce the drawbacks of the prior art. The Court held that Bell had not proven that the invention will not work. However, regarding specific allegations of a lack of sound prediction, the Court held that there was demonstrated utility of the forward embodiment as of the filing date, but not of the backwards embodiment. Thus, to the extent the claims cover the backwards embodiment, they are invalid for lack of sound prediction and/or overbreadth. The single dependant claim specifying the forward embodiment was held valid.

The Court ordered destruction of the infringing landing gear. The Court also denied an election of accounting of profits, awarding general damages to the Plaintiff. Finally, the Court awarded punitive damages to Eurocopter. The Court held that the infringement was not innocent or accidental, and that the Defendant acted with wilful blindness or intentional and planned misappropriation of the claimed invention. Furthermore, it represented to the public that it had developed the invention.


New Affidavit Struck from Record in Judicial Review

Association of Universities and Colleges of Canada v. Canadian Copyright Licensing Agency (Access Copyright)

This is an interlocutory motion to strike an affidavit in a Judicial Review (JR) of the decision of the Copyright Board. The JR relates to an interim tariff issued by the Copyright Board until such time as the Board decides upon Access Copyright's proposed tariff. The applicants requested amendment of the interim tariff. The Board denied this request.

As part of the JR, the Applicants filed two affidavits. The first provides the complete record before the Board when it made its decision. The second made a number of factual assertions and discussed adverse effects from the interim tariff. This second affidavit is the subject of the within motion to strike.

The Court of Appeal held that in a JR, the Court only has limited powers to review the decision; it is not to re-decide the merits of what the Board has done. Thus, the general rule is that the evidentiary record before the Court on JR is restricted to that which was before the Board. Certain exceptions exist such as if the affidavit provides general background that might assist in understanding the issues, if the affidavit shows procedural defects, or if the affidavit serves to highlight a complete absence of evidence before the decision maker.

The Court of Appeal held that the affidavit in issue did not fall into any of these exceptions. Thus the affidavit was struck.

Doctrine of Bona Fide Purchaser for Value without Notice Applies to Patent Rights

Verdellen v. Monaghan Mushrooms

This case involves a dispute over who owned certain patent rights. There was a factual dispute over whether Verdellen and Rolland ever came to an agreement over the assignment of the patent rights. Furthermore, the Court did not decide this issue. Rather it proceeded on the assumption there was a binding agreement, and determined whether there were grounds available to support a declaration of the rights of the parties.

Rolland started CCAA proceedings and was eventually sold to Monaghan through those proceedings. The Court held that as the agreement of purchase and sale did not restrict the business to any particular locality or jurisdiction, the patent rights conveyed were not limited to North America. Furthermore, on the day of the closing, Rolland executed and delivered to Monaghan an assignment of patent rights that specifically contained world wide rights to the invention in question.

Shortly after filing of the U.S. patent application, Verdellen and his co-inventor executed written assignments in favour of Rolland which were recorded in the USPTO. In addition, a power of attorney was signed by Rolland as the assignee, indicating Rolland was the owner of the US application. This power of attorney was also recorded in the USPTO. Furthermore, the Court held that the evidence was that Monaghan's due diligence showed nothing inconsistent with this publically available information that Rolland held the ownership interest and the patent right. The due diligence included interviews with Verdellen. The Court thus held that even if Verdellen had a binding contract with Rolland covering the patent rights, Monahan acquired those patent rights as a good faith purchaser without notice and thus acquired them free and clear of any interest Verdellen might otherwise have had in them.

Thus, the Court declared that the purported agreement between Verdellen and Rolland is void as against Monahan as a bona fide purchaser for value from Rolland without notice of any such agreements.


The Supreme Court of Canada denied leave to appeal in Pfizer Canada Inc. et al. v. Apotex Inc. et al. The decision of the Federal Court can be found here. The decision of the Federal Court of Appeal can be found here.

CIPO has announced a new PPH Pilot Project Agreement between CIPO and UKIPO.

On January 31, 2012, the PMPRB launched its user-friendly Web application for New Patented Medicines Reported to the PMPRB.

The PMPRB has released its January 2012 NEWSletter.

About BLG

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions