Insights

What is “prior art”?

“Prior art” is another term which is used to refer to patents and other publications that are made in the relevant time frame before the filing date of a patent application, for patentability consideration.  The prior art is often times referred to further in the context of the knowledge of a reasonable person skilled in the art at the relevant time.

What are patent maintenance fees and when do they need to be paid?

Many countries require the payment of periodic maintenance fees to maintain the validity of patent applications or registrations.  In Canada, maintenance fees are payable annually on the anniversary of the Canadian filing date, starting on the second anniversary.  The fees themselves payable to the patent office range from $50 for a small entity for the first few years upwards through several hundred dollars towards the end of the patent term.

What is the final deadline to enter the national phase in Canada under the PCT? (42 months)

It is possible to make a late national phase entry of a PCT application in Canada up to 12 months after the 30 month deadline.  This is possible by reinstating the application which is deemed to be abandoned as of the 30 month national phase entry deadline.  As such, it is possible to enter the national phase in Canada up to 42 months from the priority date .

How long does copyright last?

The term of a copyright in Canada is 50 years after the life of the author.  There are a small number of exceptions to this general rule.  Copyright terms vary in other countries.

Counterfeiting: What Is It and What Can You Do About It?

The value of your brands and other intellectual property (IP) rights can be affected both positively and negatively as you expand your markets – in many cases as the notoriety of your company and your brands increases, so does the temptation for people to copy or trade on the goodwill and value of your IP rights and planning to deal with counterfeit products is one area in which many companies can benefit from the deployment of some resources. Companies addressing some of these issues in their market development plans will be best positioned to protect, exploit and maximize their own IP positions as their businesses grow.

IP legal considerations when entering the Canadian market

I spoke recently as a panelist at the Global Intellectual Property Law Symposium hosted by Gearhart Law in New Jersey and New York. The topic of my panel comments was to outline the Canadian legal environment for American SME’s and other companies considering entering the Canadian marketplace and the IP regime here.

Public Authority Trademarks in Canada – Legislative Reform

On June 9, 2014 Bill C-611 (a private members bill) was put before Parliament with the intention of amending section 9 of the Trademarks Act,which deals with official marks. Section 9, and official mark protection thereunder, is the primary purview of governments and governmental authorities within Canada allowing for streamlined access to broader protection for public authorities and official marks than is available in most circumstances to regular trademark applicants.

New Canadian trademark law amendments – business impact

In the summer of 2014 a large series of amendments to the Trademarks Act in Canada received Royal Assent. The implementation of these treaties and legislative changes will have a significant impact on trademark practice and brand owners in Canada.

IP Considerations in New Product Development

Business should think about IP issues during new product development. Risks can be avoided, and opportunities captured, by dedicating time to these questions at the appropriate decision points.

What countries are covered by the PCT (Patent Cooperation Treaty)?

The Patent Cooperation Treaty is an international treaty providing for the filing of a international patent application which will allow an applicant to secure filing date in many countries at the same time.  The PCT system does not yield a global patent, per se, but allows for the streamlined international processing of the initial steps of the patent application to allow for handling in multiple countries at the same time.