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#intellectual-property-law#ontario
Asked: 3 months ago

How does applying for SR&D grant affect the defensibility of our technology?

We are developing our technology in Canada. Our plan is to market and sell our product in the European Union (EU), and to Canadian companies doing business in the EU. I'm unclear on the impact SR&D would have, on the def… (Read more)


Dominic Alfred

IP and Technology Lawyer, Alfred Law


The Scientific Research and Experimental Development (SR&ED) Tax Incentive Program is a tax credit that reimburses businesses for their R&D expenses. For specific questions about the defensibility of technology already or yet to be registered in Canada and how to extend that protection into the EU, a detailed consultation may be helpful to give a more complete answer to this question.


Edited: a month ago
#intellectual-property-law
Asked: 2 months ago

Can an existing patent be challenged in Canada?

Can the validity of existing patent protection granted to somebody else be challenged after the fact?


Dominic Alfred

IP and Technology Lawyer, Alfred Law


In Canada, there is no formal interference or opposition procedure available to challenge a competitor's patent application. There is however, a mechanism for one party to provide information to the patent office in an effort to prevent a patent being granted, a procedure known as a "protest".


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago

How fast should a patent be filed?

How soon should the inventor of a patentable technology file an application, especially in cases when new invention becomes known to the general public?


Dominic Alfred

IP and Technology Lawyer, Alfred Law


A patent is issued to the first applicant to file a patent application with an enabling description that fully supports the claimed invention.


Canada has a 12-month grace period for prior public disclosures derived from the inventors, based on the Canadian filing date. The 12-month grace period provides the opportunity to file a patent application in Canada within 12 months of the applicant disclosing the invention to the public. The Canadian filing date of a PCT application that enters the national phase in Canada is deemed to be the "international filing date".


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


Accelerated examination of a patent application can be obtained by the applicant or any other person who alleges that failure to accelerate it will prejudice their rights.


This process is called a "Special Order". The Special Order process is relatively straightforward. It is granted automatically in response to a request containing an affirmation that the failure to advance the examination would prejudice that person's rights, as well as the payment of a government fee.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


In Canada, the examination of a patent application is not automatic upon filing and must be requested by the applicant or a third party. If examination is deferred, the results of examination of corresponding patent applications in other countries may lead to strategies to expedite prosecution of the Canadian application at reduced cost.


There are no claims fees in Canada of any kind. There is no limit to the total number of claims, or the number of independent claims, included in a patent application. There are also no restrictions on the use of multiply dependent claims. There is a nominal excess-page printing fee for patent applications exceeding 100 pages in length.


Canada has a "small entity" designation that in circumscribed cases allows businesses employing 50 or fewer employees and universities to pay reduced patent application filing, examination and annual maintenance fees.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


Standard government filing fee for patent application:


  • 2020 Fee ($CDN): $ 200.00
  • 2021 Fee ($CDN): $ 204.00


Please review the most up-to date fees related to Patent filing here.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago

What are the benefits of having a patent in Canada?

What rights does the patent owner gain regarding the invention that's been patented?


Dominic Alfred

IP and Technology Lawyer, Alfred Law


Rights derived from an issued Canadian patent can be enforced through the Federal Court of Canada or Canadian provincial courts.


A Canadian patent is a monopoly granted by the Canadian government that affords the patent holder an exclusive right to manufacture, sell or use an invention throughout the country for a period of 20 years from the date of the application. A patent owner or licensee may bring a court action against someone who infringes the claims of the patent.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


The granting of Canadian patents is within the exclusive jurisdiction of the Canadian federal government - under the control of CIPO - and is governed by the Canadian Patent Act and Patent Rules.


Patent protection is requested by filing a formally prepared application with CIPO, which should include background, description, drawings and claims that provide sufficient detail of the invention and its operations for a notional person skilled in the area to create it. Also included in the filing are the requisite CIPO patent application fees and details concerning the invention's inventor(s).


Once a request for examination is filed, a patent application is examined by a patent examiner in view of any information publicly available before the filing date. Once deemed allowable by the patent examiner, the patent is issued after payment of an issue fee.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago

What can be protected using a patent application?

What are some of the examples of what's considered an "invention" and thus could be patentable in Canada?


Dominic Alfred

IP and Technology Lawyer, Alfred Law


A Canadian patent may be obtained for any new invention, including processes, machines, methods of manufacturing or a composition, or any new and useful improvement to one of the above that is applicable to industry. The key is that there must be at least one new and innovative element to the invention or improvement. That being said, Canadian patents cannot be issued to protect a scientific principle or theorem in the abstract without a practical application.


Canadian courts have ruled that business methods are patentable in Canada. However, CIPO has implemented examination policies that create new obstacles to patenting business methods and computer-implemented inventions in general.


Claim format and content can make a big difference between acceptance and rejection for certain technologies. For example, methods that provide practical therapeutic benefits to subjects are considered methods of medical treatment, and are not patentable in Canada. However, therapeutic innovations may generally be captured in the form of "use" claims. Also, higher life forms - such as multicellular plants and animals - are not patentable per se, but a higher life form may be protected by directing claims to a cell having distinctive characteristics.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


On October 30, 2019 new Rules and Amendments to the Patent Act came into force, which include changes to the requirements for filing a patent application.


These changes include the following:


  • Applicants are no longer required to submit a filing fee in order to establish a filing date. If the application fee is not submitted when the patent application is filed, the Commissioner of Patents must notify the applicants that the missed application fee and the late fee must be submitted within three months of the date of the notice. If they are not, the application will be deemed withdrawn.


  • Applicants are able to submit their application in a foreign language to establish a filing date, avoiding translation costs.


  • Applicants are allowed, for the purposes of establishing a filing date, to substitute a reference to another previously filed application, as opposed to having to resubmit other parts of the application, such as the specifications or drawings.


For more information and current government fees, visit the Canadian Intellectual Property Office website.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


You must submit information about your invention. There are three parts to the submission:


  1. The abstract
  2. The specification
  3. Drawings of the invention


The abstract is a short technical description of the invention and describes how it is different from other inventions. It is basically a summary.


The specification must include a clear and complete description of the invention and its usefulness. One very important part of the specification is the “claims.” The claims are a definition of the boundaries of patent protection that you want. They are like a fence around the patented invention that protects it from trespassers. Everything that is not enclosed by this fence is freely available to be copied, manufactured, or sold by the public.


The difficult part of the application is to write the claims so that the invention is defined broadly enough to provide the maximum protection, while also being specific enough to differentiate your invention from what others have done before you. A claim can only cover what you have invented. A registered patent agent can write the claims for your application.


The final part of the required information is the drawings of the invention. There are specific requirements that must be followed with respect to the size, quality, and detail of the drawings. The drawings should also clearly show all parts of the invention defined in the claims.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


A petition is the request for a patent. A blank petition form can be downloaded from the CIPO website. This form asks for the names and complete addresses of all the inventors, a title for the invention, and the name of the patent agent who will be acting on your behalf.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


The government fee for a Trademark application is $330.00 (2020) per class (type) of application. This fee will increase to $336.60 in 2021. For a further breakdown of other types of fees, see a list at the Canada Intellectual Property Office’s Website.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


The length of time from the filing of an application through to registration is currently around 18 months, assuming there are no issues with the application and there are no major objections. From the date of filing, it is currently taking the Canadian Intellectual Property Office between 11-12 months to examine an application.

 

The Registrar will not consider requests for expedited examination because “the advancement of an application out of routine order creates a favoured position at the expense of all other applicants” (Trademarks Examination Manual).

 

Once a trademark application has been approved, it takes 4-6 weeks for the application to appear in the Canadian Trademarks Journal for the two month opposition period. Assuming that no oppositions are filed, the trademark application will then proceed to allowance in about 3 to 4 months.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


If there is no opposition to the application or if the opposition is unsuccessful, your application will be allowed. The Registrar of Trademarks will send your lawyer or trademark agent a Certificate of Registration which shows proof of registration of your trademark in Canada.


See my answer on how a trademark can be opposed.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


There is a two month period during which other people can oppose a Trademark application advertised in the Journal. This phase is called "opposition".


If someone does "oppose" your application, your lawyer or trademark agent will be notified by mail. During the "opposition", the Trademarks Opposition Board (TMOB) will conduct oral hearings and hear evidence before making a decision. During these proceedings, both parties may present evidence to support their respective cases. Additionally, an investigator may be hired to gather this evidence.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


The Trademarks Journal is the official publication which lists every application that has been approved for advertisement in Canada.


If the pre-publication search does not show any new objections to clients' application, trademark application will be advertised in the Trademarks Journal


You can review my answer about "pre-publication search" here.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


Before advertisement in the Trademarks Journal can take place - an inclusion into a list of all previously approved trademarks - the Registrar of Trademarks will conduct a second search to ensure that, again, no one has registered, or applied for registration of, a trademark that would be in conflict with the one an applicant is seeking to register.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


When the application is received, an examiner will conduct a search to make sure that your proposed trademark will not be confused with anyone else’s trademark and that your mark can be registered according to the Trademarks Act and Trademarks Regulations.


If the examiner finds a problem with an application, the Registrar of Trademarks will contact your trademark agent and he or she will have a chance to respond to the problems. The examiner may request a disclaimer at this point. A disclaimer is a statement that a certain part of your trademark is not exclusively yours. It is still possible to use the disclaimed part of your mark, but you will have no rights to it.


If there is a problem with your trademark application and if your response to the problem does not satisfy the examiner, the application will be refused. Your lawyer can appeal this decision to the Federal Court of Canada. If you fail to respond to the Registrar of Trademarks by the required date, it will become abandoned.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


First, your application must be filed with the Office of the Registrar of Trademarks at the Canadian Intellectual Property Office. When the application is received by the Registrar of Trademarks, they will check it to make sure it is complete. If it is not, they will notify your trademark agent to ask for any missing information.


If the application is complete, and you have included the correct fee, the Registrar will open a file and issue a filing date and an application number. Your trademark agent should keep a record of this number and refer to it in all correspondence with the Registrar. Your trademark agent should receive the filing receipt within two or three weeks. In addition, the Registrar will enter your application as pending in the Canadian Trademarks Database as well as other databases maintained by external companies.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


There are six main steps in the application process and it will usually take one to two years to complete a trademark registration. The six steps are:

 

  1. Filing the Application - submitting a complete application package;
  2. Examination - thorough review by the Canadian Trademark Office;
  3. Pre-publication Search - second search to ensure no conflict exists with other trademarks previously registered;
  4. Publication / Advertisement - inclusion into a list of all previously approved trademarks;
  5. Opposition - a two month period allowing others to oppose a trademark application;
  6. Allowance and Final Registration - receipt of the Certificate of Registration as a proof of the trademark ownership.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


A trademark application that has the following will receive a filing date and an application number:

  • An implicit or explicit indication that registration of a trademark is being sought;
  • the name and contact information of the applicant; 
  • a representation or description of the trademark (such as a drawing); 
  • the goods or services that the trademark is associated with; and
  • the application fee.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


Here is a handy guide provided by the Canadian Trademark Office on the Trademark process in Canada. Trademarks are a federally regulated area of law.


Answered: 2 months ago
#intellectual-property-law
Asked: 2 months ago


Dominic Alfred

IP and Technology Lawyer, Alfred Law


The Scientific Research and Experimental Development (SR&ED) Program is a federal program that uses tax incentives to encourage Canadian businesses of all sizes and in all sectors to conduct research and development (R&D) in Canada.


The program is administered by the Canada Revenue Agency (CRA).These tax incentives come in three forms:


  • income tax deduction
  • investment tax credit (ITC), and
  • in certain circumstances, a refund.


According to the CRA, the SR&ED Program provides more than $3 billion in tax incentives to over 20,000 applicants annually, making it the single largest federal program that supports business R&D in Canada.


Answered: 2 months ago
#intellectual-property-law
Asked: 3 months ago

Can naming our eSports organization similar to a retail store result in copyright issues?

I am apart of an eSports organization called "5 Below". There is also an American store called "Five Below". We were wondering if this would be an issue in regards to the copyright?


Samuel Michaels

Founder & Lawyer, SM Legal


In order to avoid issues between yourselves and a similarly branded store, the most straightforward solution would likely be to trademark your organization's name in Canada and also the United States, if you plan to operate there.


Answered: 3 months ago
#intellectual-property-law#british-columbia
Asked: 3 months ago

How can I change the copyright owner of my book, without filing a court order?

I have co-authored a book and used a pseudo name for the book. I realized that my real information should have been given so I went online to make the changes. Instead and without knowing it, I created a second copyright… (Read more)


Samuel Michaels

Founder & Lawyer, SM Legal


Thank you for your question. I can recommend the following local resources for your situation: 1) Intellectual Property Services http://dir.gov.bc.ca/gtds.cgi?show=Branch&organizationCode=MTIC&organizationalUnitCode=LBS-IP 2) Click Law http://www.clicklaw.bc.ca/solveproblems/search?so=r&f=1097 Unfortunately, I don't know of any British Columbia clinics offering Intellectual Property law-related services. However, in Ontario, Osgoode Law School has an IP Clinic that provides legal advice in some situations. I am not sure if they provide services nationally. Their website is: http://www.iposgoode.ca/ccr-ip-osgoode-innovation-clinic/ I hope this information proves helpful.


Answered: 3 months ago