Safeguard your Registered Trade-mark from becoming a “.xxx” Domain Name

The Internet Corporation for Assigned Names and Numbers (ICANN) has approved a new top-level domain for “.xxx” domain registrations intended for the adult entertainment industry.

Existing registered trade-mark owners and licensees may proactively exclude registration of their trade-marks as “.xxx” domain names. The opt-out period is tentatively scheduled to begin in September 2011 and will provide a limited period of time (30 days) during which rights holders may exclude the registration of their trade-marks as .xxx domain names, effectively blocking third parties from using their trade-marks as “.xxx” website addresses.

If you have any questions or concerns in this regard, or require any assistance in protecting your trade-marks, please contact one of our professionals at Riches, McKenzie & Herbert LLP.

Revised Patent Rules for Expedited Examination: Green Technologies

As of March 3, 2011 it will be possible to request expedited examination of patent applications which are related to Green Technologies.

Applicants may request expedited examination of pending applications by filing a request for advanced examination together with an applicant declaration indicating the application relates to technologies, which once commercialized, will help to resolve or mitigate environmental impacts or conserve the natural environment and resources. Currently, no additional government fees are required for requesting advanced examination of applications related to Green Technologies.

For applications granted advanced examination, a first Office Action from the Canadian Patent Office can be expected to be received within two months from the date the request is processed.

Under the revised Patent Rules, applicants will not be granted expedited examination if after April 30, 2011 either the application has been abandoned or an extension of time has been granted. In order to preserve eligibility for expedited examination, applicants whose patent applications are currently abandoned must take the necessary steps to obtain the reinstatement of their applications on or before April 30, 2011.

In addition to expediting examination of applications related to green technologies, it remains possible for any person, upon payment of a fee, to request expedited examination of an application if the failure to grant expedited examination would prejudice that person’s rights, or to advance examination of applications under the Patent Prosecution Highway program.

Amazon.com, Inc. v. Canada (Attorney General), 2010 FC 1011: October 14, 2010

On October 14, 2010, the Federal Court Trial Division issued a decision in Amazon.com, Inc. v. Canada (Attorney General), 2010 FC 1011, overturning the Commissioner of Patents’ decision to deny a patent for a “business method”. Previously, the Commissioner found that Amazon.com’s application for a “one-click” ordering method and system was not patentable subject matter under section 2 of the Patent Act, R.S.C. 1985, c. P-4.

In overturning the Commissioner's decision, Mr. Justice Phelan of the Federal Court confirmed that “business methods” are not automatically excluded from proper subject matter in Canada, holding that there was “no basis for the Commissioner’s assumption that there is a ‘tradition’ of excluding business methods from patentability in Canada”. The Court acknowledged that fundamental differences existed between foreign and Canadian patent regimes and strongly criticized the Commissioner’s reliance on foreign jurisdictions to justify her reasons.

The Federal Court also strongly criticized the Commissioner’s adoption of a “four-step” approach in assessing subject matter, specifically rejecting the Commissioner’s “form and substance”, “contribution” and “technological” requirements in assessing the claims. In doing so, the Federal Court explicitly held that it is incorrect to “parse the claims into their novel and non-novel components in order to evaluate patentability”. Rather, the Court reaffirmed that the claims are to be purposively construed as a whole. Specifically, the Court rejected the Commissioner’s restrictive interpretation of the term “art” recited in section 2 of the Patent Act, and as set out earlier by the Supreme Court of Canada, reiterated the three elements in the test for “art”: “i) it must not be a disembodied idea but have a method of practical application; ii) it must be a new and inventive method of applying skill and knowledge; and iii) it must have a commercially useful result.”

The Federal Court decision has been appealed which may result in further refinement of Canadian jurisprudence respecting patentable subject matter in Canada.

PROSECUTION OF PATENT APPLICATIONS

In December 2009, the Commissioner amended chapters 12 and 13 of the Manual of Patent Office Practice (“MOPOP”) relating to “Utility and Subject-Matter” and “Examinations of Applications”, respectively, and more recently in October 2010 amended chapter 16 relating to “Computer Implemented Inventions”. The revised chapters were redrafted to reflect much of the rationale underlying the Commissioner’s rejection of the Amazon.com application, including the now rejected “four-step” approach in assessing subject matter. In our view, the applicability and relevancy of these chapters are now brought into question.

While the current decision of Mr. Justice Phelan is important for indicating that there is no automatic exclusion for “business methods” in Canadian patent practice, the decision also provides a clear rejection of the Commissioner's “form and substance” analysis, impacting many of the Office Actions which the Canadian Intellectual Property Office (“CIPO”) has recently issued based on the now rejected “form and substance” analysis. While the decision appears to clarify a number of aspects respecting patentable subject matter in Canada, it remains to be seen what impact this decision will have on CIPO’s examination procedures and the recently revised chapters of the MOPOP.

Revised Trade-mark and Design Office Practice RE: Extensions of Time

Effective March 11, 2010, the Canadian Trade-marks and Industrial Design Offices have revised their practice with respect to the granting of extensions of time by which to respond to Examiner’s Reports.

Under the newly adopted practice, it will now only be possible to secure a single six (6) month extension of time to respond to an Examiner’s Report in the absence of either exceptional circumstances, or circumstances beyond the applicant’s control. Some flexibility will remain for the granting of further extensions of time for reasons which include:

1. recent changes in agent;
2. exceptional circumstances such as illness, bankruptcy, accident;
3. recent assignments;
4. delays in receiving certified copies from foreign trade-mark offices;
5. additional time to permit the cancellation/abandonment of cited third party trade-marks; and
6. additional time to secure consents from Official Mark holders.

Revised Patent Rules in Force 01 October 2010

The Canadian Government has amended the Canadian Patent Rules effective October 1, 2010.

The most significant change will be to replace the current requirement to complete Canadian patent applications by providing a Declaration establishing the applicant’s entitlement to proceed with the Canadian case as of the filing date, by a new Declaration attesting that the applicant is the "legal representative" of the inventor.

For Canadian patent applications filed via the PCT, the applicant will have the option of completing the national phase application by either submitting the new Declaration of Legal Representation, or in the alternative a Declaration of Entitlement under the former practice.

Revised Trade-mark and Design Office Practice RE: Extensions of Time

Effective March 11, 2010, the Canadian Trade-marks and Industrial Design Offices have revised their practice with respect to the granting of extensions of time by which to respond to Examiner’s Reports.

Under the newly adopted practice, it will now only be possible to secure a single six (6) month extension of time to respond to an Examiner’s Report in the absence of either exceptional circumstances, or circumstances beyond the applicant’s control. Some flexibility will remain for the granting of further extensions of time for reasons which include:

1. recent changes in agent;
2. exceptional circumstances such as illness, bankruptcy, accident;
3. recent assignments;
4. delays in receiving certified copies from foreign trade-mark offices;
5. additional time to permit the cancellation/abandonment of cited third party trade-marks; and
6. additional time to secure consents from Official Mark holders.

Revised Section 45 Summary Cancellation Practice

Effective September 14, 2009, the Trade-marks Opposition Board is adopting a new practice with respect to the granting of extensions of time in Section 45 summary cancellation proceedings.

Under the revised practice, the Registrar will grant Registrants only a single four (4) month extension of time by which to submit evidence establishing the use of the registered mark, following receipt of a Section 45 Notice.

The Registrar has furthermore indicated that it will no longer grant Registrants retroactive extensions of time to file additional evidence once a Requesting Party files Written Submissions in support of the cancellation of the Registrant’s Canadian Trade-mark Registration.