Canada: Strategies for International Patent Protection

Last Updated: June 30 2005
Most Read Contributor in Canada, September 2016

Originally published Spring 2005. The information contained within this article is only current at the time of writing.


Strategies for International Patent Protection

The Patent Cooperation Treaty (PCT) is an ever more useful tool for clients who want patent protection in a number of countries. Its principal features are that it allows essentially 2-1/2 years from the first filing in relation to the invention (the "priority date") to decide which countries are worth pursuing and it offers the opportunity to resolve objections or potential objections in a single forum instead of country by country. Both of these features have important cost deferral and cash flow advantages for applicants as well as potential for actual cost savings.

There have been a number of important changes to the PCT over the past year or so, too numerous to recite fully here. For example, it is no longer necessary to specifically designate PCT member countries (virtually all countries of "normal" interest – Taiwan is the most important non-member.) All 120+ member countries are now automatically designated.

One of the most important changes is that the deadline for "national phase entry" is now automatically 30 months (31 months in some countries) after the priority date, for virtually all countries. Formerly, one had to elect International Preliminary Examination by the 19th month to defer national phase entry to 30 months. Thus the decision as to whether or not to elect International Preliminary Examination now properly turns on whether or not examination would be advantageous, not on whether or not further cost deferral is desired. Clients should now request International Preliminary Examination in any case where: (a) an early objective indication of the likelihood of a patent being granted is important; e.g., to potential investors; (b) the International Search Report or other factors indicate that there are likely to be significant objections to granting a patent, and there is a reasonable chance that those can be resolved in the international forum instead of country by country later.

Another important change, for Canadian applicants, is that the Canadian Intellectual Property Office is now a designated International Searching Authority, so international applications are no longer just filed in Canada, but also processed in Canada.

Patent Fees – One Strike, Your Patent’s Out

On May 5, 2005, Bill C-29 was passed; it is intended to remedy some of the effects of the strict application of patent fee payment laws. A recent series of decisions highlighted the need for strict compliance with the Canadian requirements for patent fee payments. For example, the Federal Court had most recently held a patent invalid where the patentee had incorrectly paid the filing fee applicable to a small entity, but was allowed by the Commissioner to top up the filing fee to that of a large entity outside the reinstatement period (Johnson & Johnson et al. v. Boston Scientific [2004] FC 1672). Bill C 29, was introduced into Parliament on December 3, 2004 and provides a one year window in which to correct an incorrectly paid small entity fee, irrespective of when the incorrect fee was paid and of any pending actions or other proceedings in relation to the patent or patent application affected. However, it does not provide any continuing relief for incorrectly paid fees of any kind and, therefore, does not address the continued onerous effect of Canadian patent fee payment laws. Bill C-29 has not yet come into force and it is speculated that it will not do so until 2006.

$458 Million Damages Award for Spinning Off Patent Liability

Weyerhaeuser Co. has been ordered to pay $458 million in damages (plus attorney’s fees and interest) to the bankruptcy estate of Paragon Trade Brands, a spin-off company to which Weyerhaeuser sold assets, including diapers, in 1993 at the time Paragon went public. Weyerhaeuser received more than $200 million in proceeds from the IPO. The bankruptcy estate argued that Weyerhaeuser knew its diapers infringed third party patents, but had warranted otherwise. Weyerhaeuser’s diapers featured a patented inner leg cuff that the company did not have license to use. Paragon’s use of the patented technology resulted in two patent infringement lawsuits against Paragon by Procter & Gamble and Kimberly-Clark Corporation, respectively. The $279 million damages award, in favour of P&G, and the injunction issued against Paragon in late 1997 set in motion Paragon’s bankruptcy filing in late 1997. "The gravamen of Weyerhaeuser’s liability is that, in addition to the funds Weyerhaeuser received in connection with the IPO the primary benefit of the bargain to Weyerhaeuser was divorcing itself from what it knew to be an enormous potential patent infringement liability that was substantially certain to occur," the judge wrote in her ruling. Instead of paying the royalties in 1992, Weyerhaeuser’s strategy was to postpone the inevitable. In her opinion, Judge Murphy warned that rewarding Weyerhaeuser’s strategic divestment by limiting damages would encourage other large corporations to evade liabilities by transferring assets to a subsidiary and divesting themselves of their liability-laden subsidiaries.


Government of Canada Announces Upcoming Amendments to Copyright Act

On March 24, 2005, the Government of Canada released a Statement outlining proposed amendments to the Copyright Act that will address the challenges and opportunities of the Internet. The Government intends to introduce legislation later this spring that will implement the provisions of the 1996 World Intellectual Property Organization (WIPO) Treaties, clarify liability for Internet service providers, facilitate the use of the Internet for educational and research purposes, and harmonize the treatment of photographers with that of other creators. Soon after tabling of the bill, the

Government will open consultations for additional public input and consideration. The proposed amendments represent a significant step in updating copyright laws. Consultations on additional issues of concern are expected to take place as soon as possible after the bill is tabled. A copy of the government’s Statement, as well as a series of frequently asked questions, is available at,, and

Private Copying Levy Re-affirmed in Canada

The Federal Court of Appeal recently ruled that Canada’s private copying levy is not a tax and is, therefore, constitutional (Canadian Private Copying Collective v. Canadian Storage Media Alliance et al., [2004] FCA 424). The Court also upheld the Canadian Copyright Board’s decision to declare the Canadian Private Copying Collective’s (CPPC) zero-rating system illegal.

The Federal Court of Appeal recently ruled that Canada’s private copying levy is not a tax and is, therefore, constitutional (Canadian Private Copying Collective v. Canadian Storage Media Alliance et al., [2004] FCA 424). The Court also upheld the Canadian Copyright Board’s decision to declare the Canadian Private Copying Collective’s (CPPC) zero-rating system illegal. It also struck down the application of a levy to digital audio recorders, like the Apple iPod, because the levy was improperly applied to a device rather than a medium. At the time of the initial implementation of the private copying levy, CPCC introduced a zero-rating program permitting manufacturers and importers to sell blank audio recording media to certain categories of users without having to pay the levy. These included religious organizations, broadcasters, law enforcement agencies, courts, tribunals, court reporters, provincial ministers of education and members of the Association of Universities and Colleges of Canada, music and advertising industries. CPCC’s initial zero-rating program applied to audio cassettes tapes, CD-R Audio, CD-RW Audio and MiniDiscs.


Jewellery Designs May Be Entitled to Copyright Protection

Section 64 of the Copyright Act exempts the reproduction of a design that is applied to a useful article from copyright infringement where more than fifty articles are produced. In an appeal of a decision granting summary judgment against a plaintiff claiming copyright infringement of its jewellery designs, the Federal Court of Appeal held that it was not clear that there was no genuine issue to be tried in this case and ordered a trial (Pyrrha Design Inc. v. 623735 Saskatchewan Ltd. (c.o.b. SpareParts), [2004] FCA 423). The Appeal Court held that the issue of whether jewellery was "useful" (for the purposes of the Copyright Act) had not been litigated in Canada and that significant consequences would flow from that determination. In order to make such a decision, more evidence of the "usefulness" of specific items of jewellery was required, including evidence from the artistic and cultural milieu. The Court indicated that some jewellery might be functional (and protectable only under the Industrial Design Act) while other jewellery might be purely ornamental (and subject to copyright protection).

Clearly Descriptive When Sounded

In a recent Practice Notice, the Trade-marks Office stated that it will object to a design mark as being clearly descriptive when sounded if the word elements are clearly descriptive and the word elements are considered to be the dominant feature of the mark. The interpretation of this test has changed since the initial draft was presented in November 2004 in that the Trade-marks Office will now consider the inherent distinctiveness of the design element. For example, a crest may be considered more inherently distinctive and, therefore, the words may be considered less dominant, than a design component comprised merely of underlining. The Trade-marks Office also stated that in order to rely on section 14 to overcome the "clearly descriptive" objection, the mark as registered and used abroad must be the same as the one for which registration is being sought in Canada; i.e., the foreign registration of a word mark will not support an application for a design mark in Canada.

Fair Use Does Not have to Negate Likelihood of Confusion

The U.S. Supreme Court has recently held that a party raising the affirmative defence of fair use to a claim of trade-mark infringement does not have to negate any likelihood of consumer confusion about the origin of the goods or services affected. While the Court stated that the statute is silent on the likelihood of confusion in laying out the elements of the statutory fair use defence, it also held that confusion may be relevant in assessing fair use. KP Permanent Make Up Inc. v. Lasting Impression I Inc., SupCt, No. 03-409, December 8, 2004.

The Fate of Famous Marks in Canada

The Supreme Court of Canada (SCC) has granted leave to hear an appeal of the Federal Court of Appeal’s decision in Veuve Clicquot Ponsardin v. Les Boutiques Cliquot Ltee. (2004 FCA 164). The well-known manufacturer of champagne in suing the owner of six women’s retail clothing stores that operate under the names CLIQUOT and LES BOUTIQUES CLIQUOT for trade-mark infringement, passing off and depreciation of goodwill. both lower Courts had found that there was no likelihood of confusion between the parties’ wares and services and referred to the Federal Court of Appeal’s 1998 decision in Pink Panther Beauty Corp. v. United Artists Cort. ([1998] 3 F.C. 534), in which no likelihood of confusion was found between the famous THE PINK PANTHER movies and PINK PANTHER hair and beauty care supplies and services. While the SCC had granted leave to hear an appeal in the Pink Panther case, the parties settled and owners of famous trade-marks have been awaiting the SCC’s pronouncement on famous marks since.

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
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.