Meet the Presenters Daphne Lainson Ann McCrackin Partner; Smart - - PowerPoint PPT Presentation

Meet the Presenters

Ann McCrackin

President; Black Hills IP amccrackin@blackhillsip.com

Daphne Lainson

Partner; Smart & Biggar dclainson@smart-biggar.ca

Market Comparisons & Considerations

Country Population 326 Mil 1.38 Bil 126 Mil 51.2 Mil 35.9 Mil Economy #1 (GDP) #2 #3 #12 #10 GDP per Capita $57,500 8,100 39,000 27,500 43,200 GDP by Sector Agriculture: 1% Industry: 19% Services: 80% Agriculture: 9% Industry: 40% Services: 51% Agriculture: 1% Industry: 30% Services: 69% Agriculture: 2% Industry: 39% Services: 59% Agriculture: 2% Industry: 28% Services: 70%

Top 10 Canadian Technologies (By Patent Applications)

Measurement Transport Electrical machinery, apparatus, energy Other special machines Telecommunications Medical technology Pharmaceuticals Civil engineering Digital communication Computer technology 9.3% 8.5% 6.6% 5.8% 4.7% 4.3% 4.2% 4% 4% 4%

Top Patent Assignees (by 2016 Grants)

100 200 300 400 500 600 700 800

Patent Filing (Non-Resident)

110,583 117,464 120,200 127,042 133,612 133,522 55,030 55,783 56,705 60,030 59,882 58,137 40,890 40,779 44,611 46,219 46,419 45,406 24,970 26,828 26,304 24,705 24,713 24,637 20,000 40,000 60,000 80,000 100,000 120,000 140,000 2011 2012 2013 2014 2015 2016 Japan Korea Canada China

Patent Grants (Non-Resident)

59,766 73,297 64,153 70,548 95,880 102,072 40,729 49,874 51,508 49,392 42,609 42,444 22,462 29,406 31,663 32,492 25,554 26,475 18,612 19,415 21,077 20,765 19,343 23,129 20,000 40,000 60,000 80,000 100,000 120,000 2011 2012 2013 2014 2015 2016 Canada Korea Japan China

Patents in Force

696,939 875,385 1,033,908 1,196,497 1,472,374 1,772,203 1,542,096 1,694,435 1,838,177 1,920,490 1,946,568 1,980,985 678,005 738,312 812,595 885,959 912,442 950,526 137,368 144,363 153,781 161,442 166,771 175,236 500,000 1,000,000 1,500,000 2,000,000 2,500,000 2011 2012 2013 2014 2015 2016 Japan China Korea Canada

Lifetime Cost of a Patent

$9,723 $14,214 $10,267 $7,198 $15,648 $11,282 $16,154 $17,069

$0 $5,000 $10,000 $15,000 $20,000 $25,000 $30,000

China Japan Korea Canada

Patent Acquisition Annuities

Good News Stories from 2017

“Promise doctrine” struck down

– Supreme Court of Canada finds that the doctrine “is not good law”: AstraZeneca v Apotex 2017 SCC 36

Federal Court awards largest monetary remedy in patent infringement case in Canadian history

– Federal Court awards Dow Chemical $645 million (CDN) for infringement by Nova Chemical: Dow v. Nova 2017 FC 637

Pharmaceutical patentees gain new rights and relief

– Supplementary protection to restore patent term lost due to regulatory delays – Revised patent linkage regulations that provide greater procedural alignment to US ANDA litigation

Why Canada?

In comparison to the US:

– Patent procurement: relatively cheap and fast – No post-grant opposition practice

• Re-examination is ex parte and limited to a substantial new question of patentability

– Patent litigation: relatively cheap and can be fast with effective relief

• Trial within 2 years possible

Filing

Entitlement before CIPO

– Declaration of legal representative or declaration of entitlement in international phase

• Inventor assignments are not required

No excess claims fees

– $300 issue fee increases by $6 per page in excess of 100 pages

National phase entry

– 30 months, but up to 42 months with late fee

• Proposed new Rules: 42 month late entry, “due care” will be required

Grace period for applicant derived public disclosures

– One year from Canadian (PCT) filing date, NOT priority date

Major Steps in Prosecution

Annual maintenance fees

– Due on filing date anniversary, commencing with 2nd anniversary

Examination

– Request due 5 years from (PCT) filing

• Proposed Rules reduce to 3 years post filing

Responding to an Examiner’s requisition

– Typically 6 months (unless under a Special Order)

• Proposed Rules reduce to 4 months

Grant

– Issue fee due 6 months from Notice of Allowance – Grant within about 6 weeks post fee payment

Amendment Practice

Voluntary amendments

– Generally available at any time up until allowance – U.S. style new matter standard

• Amendments must be reasonaby inferable from the specification (description and claims)

and/or drawings as originally filed, or admitted in the specification to form part of the prior art

Amendments after allowance possible

Term

20 years from (PCT) filing

– No patent term adjustment for CIPO delays – Up to 2-year Certificate of Supplementary Protection may be available for regulatory approval delays for new drugs

Possible Pitfalls During Prosecution

• Double patenting
• Statutory subject matter

Double Patenting

Same invention and obviousness double patenting, without the benefit of a terminal disclaimer Problems arise with:

– “Voluntary” divisionals

• Pursue all subject matter in original application, subject to Canadian Examiner’s unity objection

– Closely related applications filed on the same day

• E.g., Application #1 claims composition of matter and Application #2 claims method of use

– Collapse applications into a single application

– Applications related through continuation (CIP)

• Prosecute first filed application to grant before application based on US CIP

Statutory Subject Matter

Broad definition of statutory subject matter in Patent Act

invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter

Statutory exclusion

“No patent shall be granted for any mere scientific principle or abstract theorem”

Judicial exceptions

– Mere “abstract ideas”, “professional skills and judgment”

• Example: methods of medical treatment

Business Methods

Amazon “one-click” patent found patent-eligible by Federal Court of Appeal in 2011

– Required “purposive construction” of patent claims as opposed to a parsing of elements (claim as a whole approach)

• Purposive construction: some elements essential and some non-essential

Post-Amazon, CIPO adopted a “problem-solution approach” to supplement purposive construction

– Problem-solution cannot be merely an abstract idea or professional skills and judgement

• E.g., if invention is a dosing regime requiring professional skills and judgement, then non-

statutory

CIPO Practice

CIPO should consider what features of a claim are essential to the invention

– If a feature (e.g., a computer) is essential to an invention, then a computer-implemented invention should be patentable

CIPO may require “physicality” (e.g., a computer), or a technical solution to a technical problem to demonstrate that the invention is more than an abstract idea, or professional skills and judgement

– Diagnostics: if the problem is more than a data acquisition problem, or the solution is more than a disembodied data analysis without practical application, then the diagnostic should be patentable

• E.g., CIPO may require a physical step of data acquisition that is an essential feature of the claim

First substantive office action after request for examination made (90% of applications)

Examination Timelines: CIPO Service Standards

Subsequent actions, post-response (90%

• f applications)

Discipline Months Biotechnology 17 Electrical 18 Mechanical 16 Organic Chemistry 15 General Chemistry 18 Discipline Months Biotechnology 9 Electrical 9 Mechanical 5 Organic Chemistry 6 General Chemistry 6

Accelerating prosecution

– Request examination on filing/national entry – Prompt action on all steps (responses, final fee payments) – Special Order

• $500 government fee
• Green technology

– Patent Prosecution Highway

• Global PPH (25 Patent Offices, including

USPTO)

• Bilateral agreements (EPO, Mexico, SIPO,

Chile)

Buying more time

– Defer requesting examination

• Currently 5-years post (PCT) filing

– Proposed Rules change to 3-years post (PCT) filing

– Reply on or shortly before deadline

• 6-months normal time to reply

– Proposed Rules change: 4 months

– Abandonment/reinstatement

• 1-year reinstatement as of right

– Proposed Rules change, “due care” for reinstatement may apply

Examination Timelines: Managing Grant

Highlights of Canadian Patent Litigation

Pre-trial

– More limited discovery than in U.S.

– Fact/inventor/expert; one company representative

– No forum shopping

Trial

– No juries – No Markman hearings

Relief

– Remedies include damages, equitable remedies of injunction and accounting of profits, and costs – No treble damages

Standard of Proof (validity attacks)

• Balance of probabilities; not clear and convincing evidence

Questions

• Interested in learning more about Black Hills IP services?
• Contact Jim Brophy at (612) 867-4018 or

jbrophy@blackhillsip.com

• Interested in learning more about the SLW Institute?
• Contact Bryan Ness at (612) 371-2149 or bness@slwip.com