IP Handbook - Home
The comprehensive guide to the world's leading tax firms

At-a-glance: Canadian Intellectual Property Office (CIPO) Mailing address: Place du Portage I, 50 Victoria St, Room C-114, Gatineau, Quebec K1A 0C9, Canada Tel: +1 819 997 1936, Fax: +1 819 953 2476 Email: cipo.contact@ic.gc.ca Website: www.cipo.gc.ca Though... [more]

Though the Canadian legal market remains stable amid economic turmoil, IP practitioners and their clients have adopted new habits that could very well become the standard. Alternative fee arrangements and competitive pricing among firms are becoming commonplace. Companies have been forced to find efficiencies in their IP filings. "Many of the companies with IP wells running dry continue to be on the hunt for intellectual property, purchasing IP rights that they historically would not have purchased," says one lawyer. "When revenues are down, they're looking to be strategic in purchasing portfolios to help their revenues." The courts, meanwhile, are increasingly turning to international courts for guidance, in some instances bringing Canadian rulings more in line with those of the US and UK. Recent attempts by the courts to apply laws drafted in a pre-digital age have been a source of frustration and uncertainty among practitioners.

In Amazon.com Inc v Commissioner of Patents, the Federal Court grappled with the patentability of business methods. Cited by legal commentators as among the most significant of the decade, the case applied tests of patentability to Amazon's one-click ordering system. In October the Federal Court, finding the system had practical application beyond abstract ideas, for the first time concluded that certain types of business methods were patentable. The case was closely-watched because the company's application had been rejected by the Canadian Patent Office, unlike in the US, where Amazon successfully patented the one-click system. The ruling echoed many of the issues in Bilski and Warsaw v Kappos, which was decided by the US Supreme Court in June. Canadian IP practitioners said Amazon poses challenges to the bar, as patents once deemed invalid may now be patentable. "It's open season for the patent protection of computer-related inventions," said one partner. "It clarifies the Canadian position and makes us a more liberal jurisdiction in granting IP rights in the IT sector." But the issue may be far from settled: the commissioner of patents filed an appeal in November.

In pharmaceutical litigation, patent lawyers said the courts in recent years have heightened requirements for disclosure in patent applications, to the disadvantage of brand-name drug manufacturers. "If you were speaking to people slanted on the brand side, they'd say the direction courts have been taking has changed the rules," said one practitioner. "They got patents 10 to 15 years ago under one set of circumstances, and the court is changing them." Selection patents remain contentious, as practitioners struggle with the Supreme Court's 2008 decision in Apotex Inc v Sanofi-Synthelabo Canada. The Canadian Supreme Court, applying the UK's test for obviousness, found Sanofi's selection patent valid, dismissing Apotex's claims of invalidity on the basis of obviousness, anticipation, and double patenting. "Most recognise the decision raised as many questions as answers," said one partner.

Perhaps the most visible attempt by the Canadian government to adapt to the digital age is its Copyright Modernization Act, or Bill C-32. The bill clarifies the role of internet service providers in enabling infringed material, and broadens fair dealing exceptions in relation to satire, education and the reproduction of works for private, non-commercial use. Most controversial is its allowance of digital locks, which essentially overrules those provisions by preventing the reproduction of any copyrighted material, regardless of use. Says one lawyer: "The Parliament of Canada is trying to find balance, and inevitably balance is controversial."