Insights and Developments
Recent updates and developments in Canadian patent, trademark, and IP law and practice.
When a Madrid Protocol Trademark Application Draws a Canadian Office Action
A Canadian designation under the Madrid Protocol is still examined like any other Canadian trademark application, and it can still draw a full CIPO office action. Here is what happens when it does, the response deadlines that apply, and when a Canadian trademark agent must be appointed to respond.
When a Hague System Design Application Draws a Canadian Office Action
A Hague System design application designating Canada is still examined by CIPO on the merits, and it can still draw a full Canadian office action. Here is the response timeline that applies, and when a Canadian agent must be appointed to respond.
CIPO Issues New Practice Notice on Patentable Subject Matter
On March 24, 2026, CIPO published a revised practice notice on patentable subject matter that removes the actual-invention inquiry and problem-solution framework from patent examination, aligning office practice with the Benjamin Moore, Pharmascience v. Janssen, and Dusome line of decisions.
Federal Court of Appeal Confirms a Strict Due Care Standard Applies Beyond the Patentee
In Canada (Attorney General) v. Matco Tools Corporation, 2025 FCA 156, the Federal Court of Appeal restored the Commissioner's refusal to reinstate a patent application, holding that the due care standard for reinstatement looks to the period after the Commissioner's notice issues, and extends to the applicant's agents and representatives who receive it.
Bartz v. Anthropic: Federal Court Rules AI Book Training Can Be Fair Use
A US federal judge ruled that training Claude on legally acquired books was transformative fair use, while the same ruling found Anthropic's separate use of millions of pirated books was not protected, a split decision that later produced the largest reported copyright class-action settlement in US history.
Major Amendments to Canada's Trademarks Act and Regulations Come Into Force
Amendments arising from Canada's IP Strategy took effect April 1, 2025, giving the Registrar new powers to award costs, issue confidentiality orders, case-manage opposition and section 45 proceedings, and process a new challenge mechanism for stale section 9 official marks.
Federal Court Invalidates Sea Tow's Trademarks in Favour of B.C.'s C-Tow
In Sea Tow Services International, Inc. v. C-Tow Marine Assistance Ltd., 2025 FC 27, the Federal Court found that a B.C. towing company's chain of title to its marks predated a much larger U.S. rival's Canadian trademark applications, and struck those registrations from the register.
CIPO Pilots Registrar-Initiated Non-Use Cancellation Proceedings
Starting in January 2025, CIPO began proactively issuing section 45 non-use notices against randomly selected trademark registrations, rather than waiting for a third party to request one, issuing 100 notices in January followed by 50 each in February and March.
What the 2025 Amendments to the Canadian Patent Rules Mean for Filers
Amendments to the Canadian Patent Rules took effect January 1, 2025, introducing a patent term adjustment regime that can extend a patent's term where the Patent Office's own delay in examination is unreasonable. The same amendments set new fees for requesting an additional term and for reconsideration of one, and updated the maintenance fee schedule for later-stage patents. Filers and agents should now factor patent term adjustment into portfolio and renewal planning.
Use It or Lose It: Section 45 Trademark Expungement in Practice
Section 45 expungement proceedings are an important mechanism for clearing unused trademarks from the Canadian register, and the Registrar of Trademarks has begun initiating a limited number of these proceedings itself under a new pilot project, rather than waiting for a third party to request one. This update unpacks what triggers a Section 45 action, the steps for responding, and why prompt evidence of use is critical. Understanding the process can mean the difference between keeping your mark and losing valuable brand protection.
LKQ v. GM: Federal Circuit Rewrites the Design Patent Obviousness Test
Sitting en banc, the US Federal Circuit overruled the forty-year-old Rosen-Durling test for design patent obviousness and replaced it with the flexible Graham factors used for utility patents, making US design patents materially easier to invalidate.
An IP Audit, Simply Explained: Why Most Growing Businesses Need One
Most growing businesses hold more intellectual property than they realize, and less of it may be properly protected, or even properly owned, than they assume. Here is the difference between an IP inventory and an IP audit, and when the deeper review earns its cost.
Federal Court of Appeal Rules Disclosing a Patented Design Is Not Infringing Use
In Steelhead LNG (ASLNG) Ltd. v. Arc Resources Ltd., 2024 FCA 67, the Federal Court of Appeal held that sharing drawings and cost estimates of a patented facility design with investors does not amount to infringing use under section 42 of the Patent Act.
SWISSKISS Trademark Bid Denied After Federal Court Rejects Flawed Survey Evidence
In Promotion in Motion Inc. v. Hershey Chocolate & Confectionery LLC, 2024 FC 556, the Federal Court upheld Hershey's opposition to SWISSKISS trademarks for chocolate, ruling the applicant's online consumer-confusion survey evidence inadmissible.
USPTO Issues Its First AI-Inventorship Guidance
The USPTO published its first formal inventorship guidance for AI-assisted inventions, confirming that inventors must remain natural persons while an invention is not automatically unpatentable simply because AI contributed to it, applying a significant-contribution test drawn from the Pannu factors.
Federal Court Finds BYOOVIZ Infringes Novartis's BEOVU Trademark
In Novartis AG v. Biogen Inc., 2024 FC 52, the Federal Court found a likelihood of confusion between two ophthalmic drug trademarks, granted a permanent injunction, and awarded Novartis $20,000 in damages.
CIPO's Fees Rise Sharply Across Patents, Trademarks, and Industrial Designs
Effective January 1, 2024, the Canadian Intellectual Property Office applied a one-time increase of roughly 25 percent or more to most official fees across patents, trademarks, and industrial designs, its first substantial fee increase in about two decades.
Federal Court of Appeal Rejects Rigid Test for Computer-Implemented Invention Patentability
The Federal Court of Appeal struck down a rigid three-step test the Federal Court had imposed for assessing patentable subject matter in computer-implemented inventions, leaving the analysis more open rather than settling on a fixed replacement.