Newsletter of AIPPI-Canada

Bulletin du Groupe Canadien de l’AIPPI

JANUARY 2009

JANVIER 2009

In This Issue:

• AIPPI-Canada 2008 Annual General Meeting

• Canadian IP Law Update

• News from CIPO

• A Word from the Editor

• Future Events

AIPPI-Canada’s outgoing President (and now immediate Past President) Michel Sofia (left) and the new President of AIPPI-Canada, Warren Sprigings

On December 5, 2008, AIPPI-Canada held its annual meeting in Toronto hosted at the offices of Heenan Blaikie LLP.

President’s report

In this report, Michel Sofia spoke of the success of AIPPI in Boston where many resolutions were passed. He encouraged members of AIPPI to attend sessions addressing the questions posed by AIPPI.

A brief break in proceedings at the annual meeting of AIPPI-Canada.

Currently, there is a push from Zurich to increase membership of AIPPI. In addition, there may be a movement toward contemplating annual conferences.

Michel concluded by saying that despite how busy it has been, and that it has been an honour and a lot of fun to have been President of AIPPI-Canada for the past two years. AIPPI is important to our profession, and addresses current and anticipated future issues including professional practise. He thanked members of council for their support during his term as presidency, and he looks forward to continuing to work as Past President.

Treasurer’s report

AIPPI-Canada is solvent. This should help AIPPI-Canada to fund its share of the 2014 AIPPI Congress in Toronto. The provisional financial report does not yet include the cost of the AIPPI-Canada reception in Boston.

AIPPI-Canada has been able to hold its membership rates for the last 3 terms. However, costs to AIPPI-Canada from Zurich have been going up slightly and last year jumped by 30%.  Despite this, AIPPI-Canada has kept the same membership rates for 2009.

The 2009 council of AIPPI-Canada (from left to right): Don MacOdrum (2007-2008 Past President), France Cote (Treasurer), William Mayo, Michel Sofia (Past President), Warren Sprigings (President), Bruce Morgan (Secretary), Alfred Macchione and Fred Barbieri. Absent from the picture was Steven Garland (Vice-President).

Nominations Committee report

This committee consists of the 3 immediate past presidents. Don MacOdrum provided this report. The nominations for council which were all endorsed at the meeting were: Warren Sprigings for President; Steve Garland for Vice-President; Bruce Morgan for Secretary; France Cote for Treasurer; and 3 members of council - Alfred Macchione, William Mayo, and Fred Barbieri. The council representatives as passed are shown in the picture to the right.

Catching up shortly before the technical programme begins.

Membership Report

In 2008 AIPPI-Canada had approximately 143 dues paying members and 7 long term members (i.e. dues free). These numbers are probably higher now due to 10-12 people who registered directly through the Boston Congress.

Approximately 160 renewal notices have been sent out and a large percentage of renewals are expected. There are currently 3 classes of membership: (1) firm or personal membership; (2) under 35 category; and (3) corporate membership. In 2009 there will be an ExCo meeting for members of the executive and a parallel forum for all members.

Additional Topics Discussed

• The Toronto 2014 Congress group has been working with the Toronto Convention Centre and Toronto tourism. The exact dates of that Congress have yet to be fixed. The group had a meeting in Boston with Bureau and will benefit from the Bureau’s timeline and the experience from Boston congress.

• Don MacOdrum is a member of the programme committee of AIPPI charged with developing topics for proposal at future meetings. The committee would welcome suggestions for questions appropriate to study, but that input should be provided as soon as possible.

• Warren Sprigings described his mandate as being to increase membership and ensure the significance of AIPPI to its Canadian membership ideally by increased participation.

Canadian IP Law Update

Sanofi-Synthelabo Canada Inc. v. Apotex Inc.

In November 2008, the Supreme Court of Canada released its decision in Sanofi-Synthelabo Canada Inc. v. Apotex Inc. In that case, the Supreme Court of Canada considered for the first time, the contentious area of Canadian patent law known as selection patents. The Court unanimously dismissed the appeal and upheld the decision of the Federal Court of Appeal upholding the decision of the Federal Court that Apotex’s allegations of non-infringement and invalidity were not justified.

An opportunity for some conversation during a break from business at the AIPPI-Canada annual meeting.

On the issue of selection patents, the Court held that for a valid selection to be made: (a) there must be a substantial advantage to be secured or disadvantage to be avoided by the use of the selected members; (b) the whole of the selected member must possess the advantage in question; and (c) the selection must be in respect of a quality of a special character peculiar to the selected group.

The Court endorsed the test for anticipation in Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 at 297 (F.C.A.), but went on to adopt, as a refinement of the Beloit approach the test set out by the House of Lords in Synthon BV v. Smithkline Beecham plc, [2005] UKHL 59 involving both a disclosure requirement and an enablement requirement. For there to be disclosure of a selection patent by a genus patent the special advantages of the selection must be understood by the skilled person reading the genus patent without resort to trial and error experimentation. On the question of enablement the Court enumerated four factors:

1. Enablement is to be assessed having regard to the prior patent specification as a whole;

2. The skilled person may use his or her common general knowledge to supplement information contained in the prior patent;

3. The prior patent must provide enough information to allow the subsequently claimed invention to be performed without undue burden; and

4. Obvious errors or omissions in the prior patent will not prevent enablement if reasonable skill and knowledge in the art could readily correct the error or find what was omitted.

When assessing what was undue burden, Justice Rothstein noted that the nature of the invention is important when considering what was an undue burden.

The Court found that a more “expansive and flexible approach” to obviousness was needed in Canada.  The well-known Beloit test was not intended to be a “statutory prescription”.  Relevant surrounding circumstances should be considered; circumstances may include the history of the invention and the actions of the inventors leading up to the invention. The Court ultimately adopted the four-step approach described in Pozzoli SPA v. BDMO SA, and first implemented by Lord Oliver in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd:

1. Identify the person skilled in the art and the relevant common general knowledge of that person;

2. The inventive concept of the claim at issue should be identified;

3. The inventive concept must be differentiated from the relevant prior art; and

4. The court must ask whether those differences would have been obvious to the person skilled in the art.

The Court added that the “obvious to try” test may be a relevant factor. Considerations when determining if an invention was “obvious to try” include:

1. Is it more or less self-evident that what is being tried out ought to work?

2. What is the extent, nature, and amount of effort required to achieve the invention?

3. Is there motivation provided in the prior art to find the solution addressed by the patent.

The Court also considered the argument that the doctrine of selection patents permits a patent holder to “evergreen” an invention by providing an illegitimate extension to the monopoly of the genus patent. The Court rejected this argument for two reasons: (1) as a selection patent may be obtained by a party that is not the inventor or owner of the original genus patent, the evergreening argument would not apply in all cases; and (2) selection patents encourage improvements by selection.

News from CIPO

• New Practice Notice in TM Opposition comes into effect on March 31, 2009. The Trade-marks Opposition Board will be changing its practice as of March 31, 2009. The changes to the new practise notice will address extensions of time, encouragement of settlement and mediation early in the process, and the scheduling of hearings.

• The Patent Branch to begin consultation on a proposed Practice Notice on "Unity of Invention".  From February 3, 2009 to March 5, 2009, CIPO will receive input on this proposal.

• The Patent Branch begins a second consultation on the first package of proposed amendments to the Patent Rules. CIPO received comments on the “Proposed Amendments to the Patent Rules”. Further comments will be accepted by CIPO regarding inventorship and ownership from January 27, 2009 to February 26, 2009.

A Word from the Editor

This issue of Reflexions, issue no. 18, comes after a two year hiatus in AIPPI-Canada’s newsletter. New issues are planned for publication every 4 months. Suggestions for content or notices are welcome and can be submitted electronically to the editor, Michael Crinson at mcrinson@dimock.com. When proposing content or notices please bear in mind the objective of AIPPI which is to improve and promote the protection of intellectual property on both an international and national basis. It pursues this objective by working for the development, expansion and improvement of international and regional treaties and agreements and also of national laws relating to intellectual property.

February 18-19, 2009

FORPIQ

Montreal, Canada

October 10-15, 2009

AIPPI ExCo and Forum

Buenos Aires, Argentina

October 3-6, 2010

AIPPI Congress

Paris, France

Fall, 2014

AIPPI Congress

Toronto, Canada