The 2005 Annual Meeting of AIPPI-Canada will be held on Wednesday
October 12 at Mont Tremblant, Quebec.
 

http://www.ipic.ca/english/general/2005meeting.cfm
 

L'assemblée annuelle 2005 de l'AIPPI-Canada se tiendra mercredi le
12 octobre à Mont Tremblant, Québec.
 

http://www.ipic.ca/french/general/2005meeting.cfm

 

In this issue:            

President's Report                                                                          

This Forum was attended by about 450 people from 68 countries, including several from Canada.

AIPPI Exco 2005

Under the procedures of AIPPI, much of the work of AIPPI is the responsibility of the Executive Committee (Exco) comprised of delegates from all of the National Groups.  The business of Exco had three broad aspects:  (1) review of financial and other business aspects of AIPPI; (2) consideration of the questions which had been the subject of  Working Committees; (3) consideration of questions raised by certain Special Committees of AIPPI. There also was a meeting of the Council of Presidents which I attended as President of the Canadian Group.

Representing the Canadian Group at the Exco were all of the members of Council – Donald MacOdrum, Michel Sofia, Steve Garland, Warren Sprigings, France Côté, Bruce Morgan and Rose-Marie Perry.  In addition, Alex Macklin Q.C. was present as co-chair of Q180, Joan Clark Q.C. and Robert Mitchell were present as Members of Honour.

(1)   Business and Financial Matters

The Treasurer General of AIPPI is Jacques Legèr, one of our own members, and the financial statements and budget were clearly presented and approved by the Exco.  These are available to members on the AIPPI.org website.

There was an extensive discussion at the Council of Presidents meeting and briefly at the Exco meeting that a salaried Executive Director is considered necessary but there has been difficulty obtaining a suitable person at the salary and job description so far offered.  It was the strong view of the Council of Presidents and the Exco that a good candidate for Executive Director should be obtained even if that required as increase in salary and/or and adjustment of the job description to give more authority consistent with AIPPI prior direction.

An amendment of Rule 26.3 of the Regulations of AIPPI relating to payment of subscriptions was adopted providing that new members joining the Association shall pay a full year’s subscription for the year in which they join if they join before the date of the annual Exco or Congress of that year, but no subscription shall be due from a member joining after that date.  Since the major part of our Canadian fees are based on the fees we must remit to Zurich, this amendment is material to our own fees.

Costs of publications are significant and as an interim measure, it was decided that the 2006 membership list would not be sent to members in writing, but will be available to members in pdf form on the AIPPI.org website.

The Working Questions for consideration at the Congress in Gottenburg in 2006 were suggested before the Exco meeting and were discussed in a preliminary way with small committees.  The questions are:

We will be recruiting members of our Canadian Group to assist in preparing the response with respect to these questions.  We have appointed the following members of Council to co-ordinate the preparation of these responses.

Working Questions

On each of these questions reports were submitted by about 36 national groups, including excellent reports from the Canadian group.  These reports and the summary reports are available on the AIPPI.org website.

There was discussion of each of these questions for a whole day by the working committee for each question, each comprising at least one member from each interested national group, and for a half day each by the whole Exco.  Resolutions were adopted for each and these resolutions are annexed to this report.  Further discussion of these topics will be presented at our own annual meeting, at which these questions are the topics for the technical sessions of our meeting (the US group is doing the same at its annual meeting on October 7).

I might note that with regard to Q186, the resolution is a compromise.  In many civil law countries these are criminal law sanctions for all types of intellectual property, including patent infringement and it was their view that punitive issues should only be the subject of criminal law.  On the other hand, in several other countries, including Canada, criminal sanctions are less expensive and they do permit punitive damages in exceptional cases for flagrant acts of infringement.  Some states, such as India and Brazil were strongly of the view that there should be no resolution against punitive damages for criminal sanctions as they do not work in those countries and they are trying to persuade their governments to provide for claims for punitive damages.  So this resolution was a compromise to endorse additional damages (they hesitated to use the term “punitive damages”) where necessary to deter deliberate infringement.

The resolutions for Q187 and Q188 were less affected by a split in legal systems.

Special Committees

There are several “Special Committees” of AIPPI.  Some are essentially standing committees on issues requiring on-going review; others are directed to specific issues.  At the Exco, there were interesting reports and some resolutions relating to some of these issues.  I will highlight some of those which may be of interest to members of our group.

Q109 - PCT

A resolution relating to restoration of right of priority was passed.  Some jurisdictions allow rectification of a failure to claim priority where the failure was unintentional.  Some require that it additionally be shown that due care was taken.  The PCT assembly had given indication that it was going to amend the PCT rules to permit a late priority (if not more than 2 months late) and the resolution was to express AIPPI’s submission as to the appropriate standard.

The resolution as adopted, after the preambles, said:

Q114 – Biotechnology

A resolution was presented and adopted relating to the patentability of inventions based on stem cells.  There had been prior AIPPI resolutions supporting the patentability of inventions relating to living organisms and other biological material.  The resolution adopted provided, inter alia:

Q132 - Computer software, information networks, artificial intelligence and integrated circuits

             The Q132 Committee presented a report arising out of the recent vote by the European Parliament rejecting a draft directive on software-related inventions comparing the situations in the United States, Japan and EPO with AIPPI resolutions.

Q153 - Hague Conference on Private International Law

             It was reported that more ambitious goals for wide-ranging a treaty on jurisdiction and recognition of judgments had now been limited to a draft convention on these issues only in relation to agreements between businesses (‘B2B’).

            Details of the draft convention are on the website www.hcch.net.

            It was noted that while it did not address infringement and validity of IP issues generally, it could be applicable to such issues for copyright, and related rights which were specifically addressed and also for other IP when raised as a preliminary matter or as a defence.

Q165 - Optional Protocol to the EPC with regard to litigation concerning European Patents

            A report was presented regarding the status of the European Patent Litigation Agreement (EPLA).  It appears there is a deadlock right now.  Details are provided in the Q165 Committee report which will be posted on the AIPPI.org website.

Q180 - Content and relevance of industrial applicability and/or utility as requirements for patentability

            A report of the Q180 Committee was supplied and a presentation was made to the Exco.  Although the SPLT seems to be deadlocked, the committee felt there is still a need for harmonization in this area.

            The purpose is to distinguish patentability from a non-patentable subject matter.  It should not depend upon the particular technical field.

            There is felt to be a need to discuss this further.  It is expected that there will be a questionnaire and possibility a resolution will be presented to the Congress in Gothenburg.

            The Committee looked at the practical difference in result in countries requiring “utility” and those requiring “industrial applicability” and found while there are different approaches, the end result could be similar for different reasons.  The Committee proposed for consideration a new requirement not using either language, but instead referring to “applicable in practice” in light of the following definition:

            More detail on this will be on the website.  Alex Macklin Q.C. of our group is co-chair of this Committee.

Other Questions

There were numerous other reports of special committees which I understand will be posted on the AIPPI.org website.

Privilege – Privilege for Communications with IP Advisors

            AIPPI in 2005 passed a resolution (sponsored by the committee in respect of Q163) that countries recognize privilege for attorney-client communications should recognize privilege for communications with patent and trade mark agents.

             It was reported that a proposal led by the Australian group has been made by AIPPI to WIPO for a convention on this issue.  This proposal arose from the decision in Australia in Pfizer v. Eli Lilly which held that Australian legislation which gave privilege to patent agents only applied to Australian patent agents and that communication with UK patent agents were required to be produced.

             It was proposed that the treaty provide in substance:

            It was suggested during the discussion by the Exco that ‘privilege’ should be specifically referred to in the language of the treaty as negotiations with WIPO proceed.

            This resolution is of particular interest in Canada since IPIC is currently negotiating with the government to obtain approval for such privilege for communications with patent anfd trade mark agents.

General Comments

            As is evident from the foregoing and from the additional information available on the website as to the work of AIPPI, there is a tremendous amount of time and effort being expended on keeping up on IP developments around the world, making submissions and debating issues with a view to improving IP.  Our Canadian Group is a part of that work and it is our hope that we can expand that participation.

Best regards,
Donald H. MacOdrum
President - AIPPI Canadian Group

Annual Meeting of AIPPI - Canada                                                 

This year's annual meeting of our association will be held at Fairmont Tremblant on Wednesday, October 12, 2005. It will be held in conjunction with the IPIC Annual Meeting and Symposium which will follow on October 13-15.

The program will start in the afternoon by the welcoming remarks of our President at 2 pm, followed by panel discussions on the following three subjects:

1. Punitive damages as a contentious issue of IP rights

2. Limitations on exclusive IP rights by competition law

3. Conflicts between trade-mark protection and free speech

These are the same subjects that have just been discussed at the Berlin Executive Committee meeting and they will be further expounded particularly with reference to the Canadian situation.

The meeting will be followed in the evening by a reception and dinner.

By now all AIPPI-Canada members should have received their invitation to this event and we look forward to meeting many of you at Mont Tremblant.

Assemblée annuelle de l'AIPPI-Canada                                           

Cette année l'assemblée annuelle de notre association sera tenue à Fairmont Tremblant, mercredi le 12 octobre 2005. Elle se tiendra conjointement avec l'assemblée annuelle et le symposium de l'IPIC qui suivront les 13-15 octobre.

Le programme technique commencera l'après-midi du 12 octobre avec le discours de bienvenue par notre Président a 14 heures, suivi par une discussion des trois sujets suivants:

1. Les dommages intérêts punitifs: question controversée des droits de propriété intellectuelle

2. Les limitations des droits exclusifs de propriété intellectuelle par le droit de la concurrence

3. Les conflits entre les droits de marques et la liberté d'expression

Ce sont les mêmes sujets qui ont été discutés à la réunion du Comité Exécutif à Berlin et ils seront examinés d'avantage particulièrement en relation avec la situation canadienne.

Le soir il y aura une réception et un dîner.

Tous nos membres devraient avoir déjà reçu leur invitation pour cette assemblée et nous vous attendons nombreux à Mont Tremblant.

PCT in Canada                                                                               

CIPO Takes Final ISA/IPEA Step

CIPO took the final step in its progression to international recognition as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) when it issued its first International Report on Patentability Opinion (IPRP) in early July. This follows by less than a year the first International Search Report (ISR) and Written Opinion (WO) issued by Canada last October. It did so on the strength of acquiring status as an ISA/IPEA under the Patent Cooperation Treaty (PCT) on July 26, 2004.

http://strategis.ic.gc.ca/sc_mrksv/cipo/new/news_updates-e.html#1
 

A new schedule of fees applicable from October 1, 2005 provides a small decrease in the International Filing Fee and is as follows (in Canadian $):

1. Transmittal Fee (Rule 14) :  $ 300.00
2. International Filing Fee:       $1340.00
3. International Search Fee:    $1600.00
    For each sheet over 30:      $    14.00

Preliminary Examination
4. Handling Fee (Rule 57.2(a)):  $ 213.00
5. Preliminary Exam. Fee:          $ 800.00

L'OPIC passe à l'étape finale du processus d'ACRI/ACEPI

L'OPIC est parvenu à la dernière étape du processus vers la reconnaissance de son statut international d'administration chargée de la recherche internationale (ACRI) et d'administration chargée de l'examen préliminaire international (ACEPI), en délivrant en début juillet son premier rapport international sur la brevetabilité (RIB). Cet événement intervient un peu moins d'un an après la délivrance du premier rapport de recherche internationale (RRI) et de la première opinion écrite (OE) au Canada, en octobre dernier. L'OPIC a agit ainsi afin d'obtenir son statut d'ACRI/ACEPI en vertu du Traité de coopération en matière de brevets (PCT), le 26 juillet 2004.

http://strategis.ic.gc.ca/sc_mrksv/cipo/new/news_updates-f.html#1
 

Un nouveau barême de taxes s'applique à partir du 1er octobre 2005 qui réduit un peu la taxe internationale, natamment:

1. Taxe de transmission (Règle 14):      300.00  $
2. Taxe de dépôt internationale:          1340.00  $
3. Taxe de recherche internationale:    1600.00  $
    Chaque feuille au delà de 30:              14.00  $

Examen préliminaire
4. Taxe de traitement (Règle 57.2(a)):  213.00  $
5. Taxe d'examen préliminaire:             800.00  $

Editor's comment

I had a rather interesting experience with a PCT application handled by CIPO, which I would like to share with our members. The application had 20 claims, two of which were independent, relating to a product and a process of making the same, and the rest were dependent claims.

The International Search Report (ISR) produced 9 references, 7 of which were U.S. patents, and two articles. No European or Japanese references were cited, although a number of them were included in the "Patent Family" column. This is quite different from the ISRs that were previously made by the EPO and where the majority of primary references were usually European and Japanese.

Out of the cited references, two were cited under category "Y" (document of particular relevance; the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art) and 7 references were cited under category "A" (document defining the general state of the art which is not considered to be of particular relevance). The first reference "D1" cited under "Y" was applied against 10 claims, whereas the second reference "D2" cited under "Y" was applied against only 2 claims. The remaining references, cited under "A",  were indicated to be relevant with respect to various other dependent claims.

In the Written Opinion of the International Searching Authority (WO), the Examiner went in great detail into features that documents D1 and D2 disclosed or taught "by way of reasonably inferred disclosure" and how this applied to the claims that were found "obvious". The Examiner admitted that document D1 did not disclose one of the essential components in the combination of elements forming the product and the process of the invention and he cited D2 which disclosed such a component, despite the fact that the applicant already stated in the text of the application that such components per se were well known.

Surprisingly, also, the Examiner went on to discuss in great detail all the other references cited under "A" and how they applied to the various claims.

The Examiner concluded that "In light of both documents, it is clear that a person sufficiently skilled in the art, when presented by both the cited prior art and the problem raised by the applicant,...would be lead directly and unambiguously to the same solution as proposed by the applicant. Consequently, claims 1 to 4, 7, 9, 10, 11, 13 and 16 are deemed to be invalid due to a lack of inventive step. As for the subject matter of remaining dependent claims, none of the limitations recited in these claims can be considered to represent, either by themselves or in combination, inventive, i.e. patentable subject matter, as evidenced by prior art documents D3 to D7."

The Examiner then went on to provide additional observations of formal nature, finding some claims "unclear", some referring to "a desired result" and some "ambiguous".

All in all, a rather devastating WO.

Since the corresponding U.S. application was already previously filed, I communicated the references cited in the ISR to the U.S. Examiner by way of a supplemental IDS. Shortly thereafter, I received the first Office Action from the U.S. Examiner. It is interesting that none of the references applied so strongly in the WO were considered as pertinent by the U.S. Examiner. Furthermore, the U.S. Examiner made no formal objections at all against the claims, such as were made in the WO. The U.S. Examiner rejected some claims as obvious on a combination of completely different references and found a number of other claims to be acceptable. After submission of an argument, the U.S. Examiner withdrew his objections and allowed the application essentially as initially filed, with only a minor correction in claim 1.

By way of general comment, I think that the Canadian Examiner who wrote the WO tried too hard to show how good his is. I have had a lot of experience with PCT applications that were handled by the EPO, and when a reference was cited under category "A" it was never then applied in the comments as a relevant reference against the claims, since in this category it is considered "not to be of particular relevance". The Canadian Examiner, however, discussed and applied these references as if they were cited under category "Y". Moreover, the category "Y" references should be consistent with each other. One such reference should not apply against 10 claims and another against only two claims.

The Examiner also misconstrued the whole gist of the invention. When, for example, is "a person sufficiently skilled in the art" and when not sufficiently skilled? Also, "the problem raised by the applicant" is part of the invention and could not have been presented to "a person sufficiently skilled in the art" out of the blue. It is often the realization of the problem that makes the solution possible, and this problem was not posed in either of the cited references. This was much better understood by the U.S. Examiner than the Canadian PCT Examiner.

It was also very rare, if ever, that the EPO examiners so strongly objected to the form of the claims. I have had over 30 years experience in drafting claims, and here comes an examiner who finds them "unclear", "ambiguous" etc. The claims were certainly not so bad, since the U.S. Examiner made none of these objections.

I think that the Canadian examiners should ease-up in their WOs, since in some countries to which the PCT application may be extended, their comments may be taken too seriously and the Canadian applicants may pay a heavy price for such harsh opinions. Fortunately, this is not likely to happen in the United States and the EPO, where the examiners will look at the application in their own independent way.

I invite others to share their experiences on the Canadian PCT prosecution in the future issues of this newsletter.

News from the United States                                                               

CAFC Decision in Phillips v. AWH Corp., 2005 WL 1620331 (Fed. Cir. July 12, 2005)

In this interesting decision the U.S. Court of Appeals for the Federal Circuit appears to have settled the widespread debate concerning the priority of sources to be consulted during claim construction, the Federal Circuit held that courts should first look to the intrinsic evidence related to the patent, e.g., the language of the claims, the specification and the prosecution history, before turning to dictionaries. 

The decision can be found at: http://www.fedcir.gov/opinions/03-1269.pdf

Also, a good commentary can be found at: http://www.kilpatrickstockton.com/publications/legal-alert.aspx?ID=36

USPTO Contracts International Patent Application Searches to Commercial Firms

The United States Patent and Trademark Office (USPTO) announced that it has awarded contracts to Landon IP, Inc., and IP Data Miner Inc., to participate in a Patent Cooperation Treaty (PCT) search pilot program. This pilot will determine whether searches by commercial entities can maintain the accuracy and quality standards for searches conducted by the USPTO during the patent examination process while remaining cost effective.

This year, USPTO expects to receive over 45,000 requests to search and/or examine international applications. USPTO's patent examiners currently do this in addition to the 350,000 U.S. applications the agency receives each year. By outsourcing some of the processing of international applications, the USPTO can focus on reducing the backlog of pending national applications, thus increasing productivity and enhancing quality. Efficient and high quality government operations are cornerstones of the President's Management Agenda and guiding principles for this effort.

The PCT, an international agreement to which the United States is a party, simplifies filing patent applications in its 128 member states. The USPTO is one of many authorized offices that searches and examines international patent applications filed under the PCT. An international application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT-related search and examination reports to help them determine if an application meets basic patent criteria, such as novelty and non-obviousness, before committing to the high cost of translating and filing an application in one or more PCT countries.

The USPTO is also exploring contracting out some of its PCT-related work, on a pilot basis, to other established government intellectual property offices that currently perform PCT-related searches/examinations. This pilot is expected to begin next month.

Information concerning the existing pilot program is available at:
http://www.uspto.gov/web/offices/ac/comp/proc/pctsearch/pctsearchhom.html

News from Mexico                                                                        

Trademark Decision in Yakira LLC v. Clara Navarro López

Our colleague Jacques Léger received an interesting letter regarding the above Mexican decision and he was good enough to send it to me for inclusion into our newsletter. Here it is:

Dear Jacques:

It is an old story – the owner of a popular brand moves into a new market, only to find that an opportunist has beaten them to the trademark office.  Anticipating this problem, the drafters of the Mexican Industrial Property Law (LPI) provided, in Article 151.II, that a trademark registration may be cancelled if it “is identical or confusingly similar to another that has been used...abroad prior to the filing date of the application in respect of the registered mark...”  A recent appellate decision has rescued this provision from a hypertechnical construction that threatened to significantly curtail the protection afforded to foreign trademark owners in Mexico.

In Yakira LLC v. Clara Navarro López, Yakira, a sportwear company from in New Jersey, petitioned for cancellation of Ms. López’s registration for the mark 1972 ECKO & Design (shown below at left), based on its prior use in the United States and other foreign countries of the marks ECKO, ECKO UNLTD., various other ECKO trademarks, and the Rhinoceros Design mark depicted below at right:

The Mexican Instutite of Industrial Property (IMPI) denied the cancellation petition on the ground that the mark was used abroad not by the petitioner, Yakira, but by its U.S. licensee, Ecko Unlimited, Inc.  IMPI cited LPI Article 141, which states that the use of a mark by a licensee inures to the benefit of the licensor if the license agreement is recorded with IMPI.  The Institute reasoned that since the license between Yakira and Ecko Unlimited was not recorded, Yakira had, legally speaking, no use of the marks in question and no basis for its cancellation claim.  As additional support, IMPI cited Article 131, which provides for cancellation of a mark if it is not used for three consecutive years by “the owner or registered licensee,” and Article 136, which states that a trademark license “shall be registered with [IMPI] in order to be binding on third parties.”   

Yakira appealed, and the Federal Court of Fiscal and Administrative Justice reversed IMPI’s decision.  Ms. López then appealed to the Collegiate Circuit Court, arguing that IMPI’s interpretation of the Industrial Property Law was correct. 

In a decision dated May 25, 2005 (Fourth Collegiate Court for Administrative Matters of the Fourth Circuit, Case No. D.A. 157/2005), the Collegiate Circuit Court dismissed Ms. López’s appeal, holding that the provisions of the Industrial Property Law relating to the recordal of trademark licenses referred only to the use of a mark by a Mexican licensee.  To hold otherwise “would constitute an invasion of foreign law with respect to acts taking place outside of Mexican jurisdiction.”  The court further stated that “use”, for purposes of Article 151.II, meant “authorized use” in the broadest sense, and not “authorized use by a licensee registered in Mexico.” 

The decision of the Collegiate Circuit Court represents a victory for common sense, as well as for the interests of foreign trademark owners doing business in Mexico.  Although the decision is technically binding only on the parties to the case, it is hoped that in light of the decision, and a similar decision issued by the Federal Court of Fiscal and Administrative Justice in a parallel proceeding (Yakira LLC v. Ecko Function de México, S.A. de C.V., Case No. 4663/04-17-02-1, Second Regional Metropolitan Chamber, Federal Court of Fiscal and Administrative Justice, April 5, 2005), IMPI will retreat from its flawed construction of the statute in future cases.

Sincerely yours,

John Murphy
Arochi, Marroquin & Lindner, S.C.
Insurgentes Sur No. 1605 Piso 20
Col. San José Insurgentes
03900, Mexico. D.F.

European Practice                                                                         

EUROPEAN PATENT UPDATE (Information received from Societa Italiana Brevetti)

EPO MAKES EXTENDED EUROPEAN SEARCH REPORT COMPULSORY AS FROM 1 JULY

As from 1 July 2005, the European Patent Office has definitively adopted and made compulsory the Extended European Search Report - and amended its fees accordingly.

Under the amended Rule 44a(1) of the European Patent Convention, the Extended European Search Report (EESR) is compulsory for all European patent applications filed on or after 1 July 2005, and for international applications for which a supplementary European search report is drawn up, which were filed on or after 1 July 2005, and subsequently entered the European phase.

The Extended European Search Report

In practice, the adoption of the EESR means that the usual search report will be accompanied by an opinion on whether or not the application and the invention to which it relates meet the requirements of the European Patent Convention. In particular, the opinion will consist either of an anticipation of the first examination communication, wherein all the objections to patentability are addressed, or of a positive statement which would allow the application to proceed to grant. There is no time limit set for the applicant to reply. The advantage is that the applicant may use the opinion on patentability as the basis for an informed decision on whether to pursue the application further or not.

Effect on EPO Fees

As an effect of the introduction of the EESR, more examination work takes place in the earlier search phase and less in later the examination phase: this is reflected in the European Patent Office's new fees. The new search fee for European and international applications filed on or after 1 July 2005 is now 960 euro (up from 690 euro). The new examination fee for European and international applications for which a supplementary European search report is drawn up and which were filed on or after 1 July 2005, the fee is 1,280 euro (down from 1,420).

I have also received from French associates Brevalex an interesting article on the European grant and opposition procedure and I am pleased to provide a link to it below:
http://www.brevalex.com/public.divers.news.detailactualite.screen?p_id=32
 

Also, another very interesting article by the same firm and author regarding European appeal procedure:
http://www.brevalex.com/public.divers.news.detailactualite.screen?p_id=33
 

News from Japan                                                                            
 

Japan's intellectual property laws have recently been again revised and the revisions will enter into force on November 1, 2005. They are summarized in the following write-up produced by ASAMURA.
 

http://www.asamura.jp/recentip/e_main_points_of_recent_revisions-part2.html
 

By the way, Japan is ranked as the No.1 country in the number of patent applications filed annually. In 2004, there were 423,081 patent applications filed in Japan (JPO), which is about 22% of the total patent applications filed worldwide, the highest number of all countries.

As a comparison, there were about 370,000 and 178,600 patent applications filed in the USPTO and EPO respectively in the same year.
 

Infringement and Remedies to Patent Rights in Korea                  

Here is a good review of the above subject under the Korean Patent Law system:
 

http://eng.nampat.co.kr/newsletter/newsview.asp?fname=20031061023.xml
 

By the way, in Korea they follow a procedure in patent prosecution similar to that followed in the United States, namely there is a first Office Action, then if the application is not allowed, a final Office Action, after which if the application is still not allowed it can only be continued by way of re-examination or appeal to a tribunal.

In 2004, about 100,000 patent applications were processed in this manner of which in the first stage (first OA), about 20% were allowed, about 75% were rejected and about 5% were abandoned or withdrawn. In the second stage (final OA), about 60% of the remaining applications were allowed, about 35% were rejected and about 5% were abandoned or withdrawn.

News from South Africa                                                                 

News from Australia                                                                       
 

In Grant V. Commissioner of Patents, the Australian Federal Court has rejected an asset protection method patent having the following claim:

"An asset protection method for protecting an asset owned by an owner, the method comprising the steps of:
(a) establishing a trust having a trustee,
(b) the owner making a gift of a sum of money to the trust,
(c) the trustee making a loan of said sum of money from the trust to the owner, and
(d) the trustee securing the loan by taking a charge for said sum of money over the asset"

http://www.davies.com.au/pdfs/DBW%20grant%20article%2008_05(1).pdf

Editor's note: I wonder if such a claim would be acceptable in Canada?

Word From the Editor - Mot de l'éditeur                                        

I wish to thank all those who have contributed to the publication of this online newsletter by providing their  suggestions of materials to be used. In particular, I thank Jacques Léger who often emails me references to news items, articles and the like.

Please send us your comments and materials that could be included in future issues of the newsletter at the editor's address: mailto:aippi.canada@sympatico.ca

Grand merci à tous ceux qui ont contribué à la publication de ce numéro de Réflexions en nous soumettant des articles et suggestions. En particulier, je remercie Jacques Léger pour ses envois réguliers. Nous sommes toujours prêts à recevoir les contributions de nos membres à l'adresse de l'éditeur: mailto:aippi.canada@sympatico.ca

George Primak
Editor-éditeur