The Federal Court recently released the first decision in which the scope of Section 53.1 of the Patent Act – the so-called 'file wrapper estoppel' provision – was considered. The court's decision suggests that, notwithstanding the clear language of the provision, foreign prosecution histories may be admissible for the purposes of claim construction in certain extraordinary circumstances.
The availability of an accounting of profits in Canada as a remedy for patent infringement can offer significant benefits to patentees, including in cases involving infringing goods sourced from Canada that are being sold elsewhere. The availability of such a remedy and a number of other factors, including the ability to expedite proceedings and the lower cost of litigation, make Canada an attractive jurisdiction for patentees from the United States and elsewhere to litigate patent infringement matters.
The Federal Court of Appeal recently affirmed a Federal Court decision concerning a costs award from the liability phase of a patent infringement action between the Dow Chemical Company and NOVA Chemicals Corporation. The awarded lump-sum payment of C$6.5 million appears to be the largest reported award that the Federal Court has ever granted in an action for patent infringement.
The Federal Court of Canada has issued a notice to the profession clarifying an issue that frequently arises in patent litigation. It confirms that patent litigants intending to rely at trial on testing conducted for the purpose of the litigation must provide the adverse party with advance notice of the testing and an opportunity to attend.
The Federal Court recently reinforced its position regarding trademarks comprised of colour applied to the visible surface of objects. The case related to two trademark applications filed by Imperial Tobacco Products Limited, which were opposed by JTI-Macdonald TM Corp on several grounds, including that neither design was distinctive in view of third-party tobacco products sold in arguably orange-coloured packaging.
The Federal Court of Appeals has further narrowed the criteria applicable to obtaining official mark protection. The appeal court held that an official mark can be registered only by a public authority that is under the control of a Canadian government. However, this does not exclude a foreign public authority that is subject to such control.
An official mark is a form of intellectual property unique to Canada. Pursuant to Section 9(1)(n)(iii) of the Trademarks Act, a public authority can request that the registrar of trademarks give public notice of any badge, crest, emblem or mark adopted and used by the public authority in Canada as an official mark for wares or services.