REFLEXIONS               

ONLINE NEWSLETTER OF AIPPI-CANADA   No. 1 - April 2002
BULLETIN EN LIGNE DU GROUPE CANADIEN DE L'AIPPI - Avril 2002

Word from the Editor/ Mot de l'Éditeur

    Dear Colleagues:

    With this first issue of our online REFLEXIONS, we are starting a periodic e-publication of the newsletter which we previously published in hard copies, and which was abandoned due to high cost and the ready accessibility of  Internet to virtually all our members. We intend to publish this newsletter several times per year, however, the frequency and the contents of the publication will largely depend on you, the members of AIPPI-Canada. 

    In short, in order to achieve a good publication, we need the collaboration of our members, who are hereby asked to submit to us, by e-mail, articles on IP that they have written or may write in the future, news items in intellectual property protection, interesting jurisprudence in which they may have been involved, international IP developments, and so on. Contributions from the international AIPPI community are also welcome. We promise that every item submitted will be considered for publication in REFLEXIONS or placement on the page "Other Publications" of our website.

    We believe that an exchange of information between AIPPI members in this manner will benefit all of us, and we look forward to your participation in this endeavour. Please send your contributions to me, your Web Editor, at: aippi.canada@sympatico.ca .

George Primak

    Chers Collègues,

    Nous recommençons la publication de REFLEXIONS, mais cette fois en ligne, sur le site Internet de l'AIPPI-Canada. Notre but, c'est de publier ce bulletin plusieurs fois par année, mais le nombre et la qualité de nos publications dépendra beaucoup de votre collaboration, chers membres de l'AIPPI.

     Nous vous demandons donc de nous soumettre par courriel, des articles que vous avez écrit ou écrirez à l'avenir sur la protection de la propriété intellectuelle, des informations que vous obtiendrez à ce sujet et qui pourront intéresser nos membres, des observations sur la jurisprudence canadienne et internationale, etc. Nous sommes persuadés qu'un tel échange de connaissances au moyen de notre bulletin, sera bénéfique à tous nos membres. Veuillez faire vos soumissions à moi, votre éditeur, à l'adresse: aippi.canada@sympatico.ca .

Georges Primak

Special Feature

     We are pleased to offer you a special feature in this first issue of our online newsletter.
It is the UPDATE ON PATENTS - LEGISLATIVE CHANGES AND CASE LAW  IN 2001 by Donald H. MacOdrum of Lang Michener, who is also the Secretary of AIPPI-Canada.

    This is a somewhat updated version of a paper Don first presented at The Law Society of Upper Canada's seminar on January 17, 2002.

Dutch Industries Decision

    The decision of the Federal Court of Canada in Dutch Industries Ltd. v. Canada (Commissioner of Patents),
2001 FCT 879, is one of the most notable and controversial decisions of 2001, as mentioned in Don MacOdrum's UPDATE. It has been discussed at length with the Commissioner of Patents at the last General Meeting of AIPPI-Canada on November 2, 2001. Pursuant to this decision, the Federal Court of Canada has invalidated a Canadian patent because, through error, maintenance fees were paid as a "small entity" when they should have been paid as a "large entity".

     This seems to be a rather unfair decision, when compared, for example, to the United States where the "small entity" status also exists. In the U.S., paying the wrong amount is not all that uncommon. The USPTO now has a fairly relaxed set of rules (37 CFR 1.27 and 1.28) for taking care of past errors. Of course, knowingly paying a small entity fee when a large entity one is due, is also grounds for invalidation of the patent in the U.S., but there is no such draconian penalty in cases of an innocent or accidental error. Canada should adopt a similar practice.

    The perverse effect of the Dutch Industries decision is that it penalizes only small entities, namely individual inventors or small businesses, leaving large businesses untouched. Hopefully, it will be reversed on appeal. 

    Un premier commentaire sur les conséquences de cette décision a été préparé par Garabed Nahabedian, Laurent Carrière et Barry Gamache du cabinet ROBIC. Il est intitulé: UN MONTANT INSUFFISANT D'ANNUITÉS PEUT ENTRAÎNER LA PÉREMPTION D'UN BREVET, et nous le publions ici pour votre information.

Changes at PCT - Plus ça change .....

    PCT is trying to modify the time limits for entering the national phase by eliminating the 20-month term provided under PCT Article 22(1) and replacing it by a single 30-month term from the priority date. This change has taken place as of April 1, 2002 (April fool's day).

    Canada has adapted its regulations to satisfy this requirement. Notice to that effect is provided at: http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_reg_noticeafter-e.html 
et en français : http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_reg_noticeafter-f.html

    About 80% of PCT member states have done the same http://www.wipo.int/pct/en/index.html ,
however, 24 countries (exception states) have given a notification that such modification is not compatible with their national laws and at this time they will retain the old provisions of PCT Article 22(1).

    These countries are: (AU) Australia, (BG) Bulgaria, (BR) Brazil, (CH) Switzerland, (CN) China, (DK) Denmark, (EE) Estonia, (FI) Finland, (GB) United Kingdom, (HR) Croatia, (HU) Hungary, (IL) Israel, (JP) Japan, (KR) Republic of Korea, (LU) Luxembourg, (NO) Norway, (SW) Sweden, (SG) Singapore, (SK) Slovakia, (TZ) United Republic of Tanzania, (UG) Uganda, (YU) Yugoslavia, (ZA) South Africa and (ZM) Zambia.

    It should be noted that in the above list, the countries that belong to the European Patent Convention, namely CH, DK, FI, GB, LU and SE are included in the new time limit if they are designated as part of the Regional EP group, rather than separately. Since this is the normal way of designating these states, one can say that only 18 PCT member states have, in practice, undermined this change, at least for the time being. And they include some biggies, such as Brazil, China, Japan and Korea, which can hardly be excluded when filing a PCT application. Until these countries amend their laws and join the rest of the PCT states in accepting this modification to Article 22(1), the situation at PCT will remain essentially the same as before for the vast majority of applicants, and no fooling.

Chapter II of PCT

    The International Preliminary Examination Procedure (IPER) under Chapter II of PCT has been "rationalized" by the EPO due to the increase of the workload at the European Patent Office. This means that unless the applicant specifically requests Detailed International Preliminary Examination at the time of submitting his Demand, no substantive examination will be carried out by the PTO. In the event a rationalized IPER is produced by the EPO, two thirds of the international examination fee will be refunded to the applicant at the time such IPER is transmitted. 

    This is supposed to be "an interim measure", until EPO settles its workload problems. However, as many such interim programs, one expects that it may get worse before it gets better. Maybe Canada should be looking for an alternative ISA/IPEA, such as the USPTO, in addition to EPO.

Festo awaiting ruling from the U.S. Supreme Court

    As most of you know, the decision of the Federal Circuit in Festo Corp. v. Shoketsu Kinzoku Kabushiki Co., Ltd., No. 95-1066 (Nov. 29, 2000), held that if a patentee amended a claim during prosecution, he would later be precluded from asserting the doctrine of equivalents. This decision was called by some "the death of the doctrine of equivalents". The decision can be summarized as follows:

    1.    An amendment that narrows the scope of a claim for any reason, will give rise to prosecution history estoppel with respect to the amended element in the claim.

    2.    Voluntary and unexplained claim amendments fall within "any reason".

    3.    When the so amended claim falls within the prosecution history estoppel, no equivalents are then available for the amended claim element.

    The full text of the decision can be found at:

 http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/95-1066.html   

    The U.S. Supreme Court has recently completed its appeal hearings of the Festo decision and should render its judgment before the end of this term, namely by June 2002.  In the oral arguments presented in court, a number of justices mentioned the amicus brief filed by IEEE-USA or the "foreseeable bar" it proposed. For those interested in the brief, it can be found at:

    http://www.ieeeusa.org/forum/POLICY/2001/01aug31festo.pdf

We shall inform you of the Supreme Court's decision when it is out.

Changes to Australian Patent Law

    As of April 1, 2002, Australia has made significant changes to its patent law by making it more like the U.S. law. This shouldn't bother Canadians too much, since we are very familiar with the U.S. patent system. An overview of the Australian changes, reported by Davies Collison Cave, can be found at:

http://www.davies.com.au/pdf/Changes%20to%20Patent%20Law.pdf

    It is, however, surprising that with all these changes to the Australian Patent Law coming into effect on the same day as the changes at PCT, Australia could not make proper adjustments to its PCT regulations and remains one of the exception states mentioned above.

Trademarks

    Changes that expand the International Trademark Classification came into force on January 1, 2002. This 8th Edition of the Nice ICGS provides the elimination of previous "catch all" service class 42 ("services that cannot be placed in other classes)" and replacement thereof by four new service classes:

Class 42 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 43 - Services for providing food and drink; temporary accommodation.

Class 44 - Medical services; veterinary services; hygienic and beauty care for human beings and animals; agriculture, horticulture and forestry services.

Class 45 - Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

    In new Class 45, the meaning of "personal and social services rendered by others to meet the needs of individuals" is rather difficult to understand. I presume it comprises things like escort services, massage parlours and the like. 

     China has topped for the second year in a row the number of trademark registrations issued by any country. More that 270,000 trademarks were registered in China in 2001. By comparison, there were just over 16,000 trademark registrations in Canada for the year 2000 (the last year for which statistics are available). One can conclude from this that there is a lot of commerce going on in China.

Costs

    Europe

    As a matter of interest, I am giving below the charges made by European associates for paying the sixth annuity for an issued European patent that was validated in seven countries and also in Norway which is not part of EPO. These charges are given here in Canadian dollars for comparison purposes.

France: $ 300; Germany: $ 325; Greece: $ 280; Italy: $ 340; Netherlands: $ 450; Spain: $ 310; U.K.: $ 320 and Norway: $ 320.

It is interesting to note that all these charges fall within the range of $ 280 and $ 340, except Netherlands which is way higher. I have no idea why.

    Peru

    Peru is of interest to Canadians because it is a big mining country and a number of Canadian mining companies have properties or operations there and regularly take out Peruvian patents. In the past, when filing a patent application in Peru, the Patent Office there made separate charges for things like the Examiner's fee, claims over 10 and claiming priority. As of February 18, 2002, however, the Peruvian Patent Office has consolidated all such charges into a single fee of S/. 1395 (U.S. $ 400) when priority is not claimed and S/. 2821 (U.S. $ 810) when priority is claimed. Publication fees must still be paid separately, if requested.

    It is interesting to note that this consolidated fee more than doubles for merely claiming priority from a foreign application. In addition, of course, when priority is claimed, it is necessary to submit a certified translation of the home application, which leads to additional costs. since Peru is not a member of the PCT, it is probably best to file in Peru soon after filing the original application without claiming priority, thereby saving the client a fair amount of money.

Interesting Patents

    Here is an interesting patent issued on a government funded invention: U.S. Patent No. 5,235,618
    System for measuring metabolic gas emissions from animals

A system is disclosed which measures the flux of metabolic gas emissions from cattle or other animals. The system does not require that the animals be confined to a chamber or stall. An animal whose metabolic gas emissions are to be measured is first fed a permeation tube (a metal tube with a gas permeable plastic disk in one end). Inside the tube is a tracer that is physiologically inert. The permeation tube is filled with pressurized liquid tracer which slowly permeates (in gaseous form) through the plastic disk. In order to measure rumen-produced metabolic gases, a sample container, such as an evacuated container or an inflatable collar is placed on the animal. A small diameter sample tube is attached from the sample container to a halter and terminates somewhere near the animal's mouth. When the animal breathes, it exhales metabolic gases as well as the tracer. A sample of air containing both the metabolic gases and the tracer gas is then collected through the sample tube. Since the permeation rate of the tracer is known and constant, the ratio of the flux of a given metabolic gas to the flux of the tracer gas is equal to the ratio of the mixing ratios of the respective gases in the air sample that is collected. The rate of flux of metabolic gas from the animal's rumen is thus readily calculated by measuring the metabolic gas and tracer mixing ratios in the sample thus collected.