Smart & Biggar updates

Effectively using experts in IP litigation part two: practice
Smart & Biggar
  • Intellectual Property
  • Canada
  • 30 November 2020

In IP litigation, the outcome of many high-stakes cases has turned on expert testimony. It is therefore important for litigators to spend time and effort to properly identify, select and prepare expert witnesses. Effective experts may need to construe complex claims through the eyes of a person skilled in the art, assess the state of common general knowledge, conduct tests to show infringement or conduct surveys to assess reputation or likelihood of confusion. This article explores the practical aspects of expert testimony.

Few significant changes made in final PMPRB guidelines
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 25 November 2020

The Patented Medicine Prices Review Board recently published the final version of its guidelines which operationalise the amendments to the Patented Medicines Regulations scheduled to come into force on 1 January 2021. This article provides a brief summary of the final framework for the price review process and highlights changes relative to the June 2020 draft guidelines.

Federal Court orders minister of health to issue NOC to Fresenius Kabi for biosimilar
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 25 November 2020

Justice Manson of the Federal Court recently ordered the minister of health to issue a notice of compliance to Fresenius Kabi for IDACIO (adalimumab), a biosimilar of AbbVie's HUMIRA. The minister of health had completed its review of Fresenius Kabi's new drug submission for IDACIO; the only outstanding issue was whether Fresenius Kabi had addressed the patents listed on the Patent Register in respect of HUMIRA.

Few significant changes made in final PMPRB guidelines
Smart & Biggar
  • Intellectual Property
  • Canada
  • 23 November 2020

The Patented Medicine Prices Review Board recently published the final version of its guidelines which operationalise the amendments to the Patented Medicines Regulations scheduled to come into force on 1 January 2021. This article provides a brief summary of the final framework for the price review process and highlights changes relative to the June 2020 draft guidelines.

Federal Court orders minister of health to issue NOC to Fresenius Kabi for biosimilar
Smart & Biggar
  • Intellectual Property
  • Canada
  • 23 November 2020

Justice Manson of the Federal Court recently ordered the minister of health to issue a notice of compliance to Fresenius Kabi for IDACIO (adalimumab), a biosimilar of AbbVie's HUMIRA. The minister of health had completed its review of Fresenius Kabi's new drug submission for IDACIO; the only outstanding issue was whether Fresenius Kabi had addressed the patents listed on the Patent Register in respect of HUMIRA.

CIPO's new guidelines on patentable subject matter explained
Smart & Biggar
  • Intellectual Property
  • Canada
  • 16 November 2020

The Canadian Intellectual Property Office (CIPO) recently released new guidelines on patentable subject matter and examples applying the new guidelines to computer-implemented inventions, medical diagnostic methods and medical uses. The recency of CIPO's new guidelines and examples necessarily means that there is uncertainty in how the new guidelines will be applied in practice and over time. This article explains the main changes.

Canadian courts show trend of awarding higher costs in IP litigation
Smart & Biggar
  • Intellectual Property
  • Canada
  • 16 November 2020

Canada's evolving costs regime in the IP litigation context raises important considerations for litigants. It is becoming more common, arguably the norm, for IP litigants in both the federal and provincial courts to recover significant costs awards. These enhanced cost consequences may amplify the significance of the strategic decisions that are made during the course of litigation, including, for example, whether to seek settlement and the appropriate time to do so.

CADTH harmonises drug reimbursement review process
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 11 November 2020

The Canadian Agency for Drugs and Technologies in Health (CADTH) recently announced the launch of new Procedures for CADTH Drug Reimbursement Reviews, which harmonise procedures under the CADTH's drug reimbursement review pathways. This article outlines the procedure's main highlights.

Health Canada issues interim order respecting drug shortages relating to COVID-19
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 11 November 2020

The minister of health recently approved the Interim Order Respecting the Prevention and Alleviation of Shortages of Drugs in Relation to COVID-19, which introduces new tools to address drug shortages, or the risk of drug shortages, that may be caused or exacerbated by the COVID-19 pandemic. This article examines some of the interim order's main features.

Final PMPRB guidelines released
Smart & Biggar
  • Intellectual Property
  • Canada
  • 09 November 2020

The Patented Medicine Prices Review Board (PMPRB) recently released the final guidelines operationalising the amended Patented Medicines Regulations. The guidelines describe the price review methodology that will apply to medicines from 1 January 2021, when the amended regulations come into force. The PMPRB has also released its October 2020 Newsletter, which includes an overview of final changes as well as next steps, outreach and engagement opportunities.

Final PMPRB guidelines released
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 04 November 2020

The Patented Medicine Prices Review Board (PMPRB) recently released the final guidelines operationalising the amended Patented Medicines Regulations. The guidelines describe the price review methodology that will apply to medicines from 1 January 2021, when the amended regulations come into force. The PMPRB has also released its October 2020 Newsletter, which includes an overview of final changes as well as next steps, outreach and engagement opportunities.

New interim order for COVID-19 drugs has wide-reaching impact
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 04 November 2020

The minister of health recently approved the Interim Order Respecting the Importation, Sale and Advertising of Drugs for Use in Relation to COVID-19. Once approved by the governor in council, the interim order will be valid for only one year from the day on which it was signed by the minister, and product authorisations issued under the interim order will be valid only while the interim order is in effect.

Late PCT national phase entry in Canada as of right will soon come to an end
Smart & Biggar
  • Intellectual Property
  • Canada
  • 26 October 2020

Substantial amendments to the Patent Act and new Patent Rules came into force in October 2019. A significant change concerns the deadline for entering the Canadian national phase of a Patent Cooperation Treaty application. Under the new provisions, if an application enters the national phase more than 30 months from the earliest priority date, a reinstatement fee must be paid and the applicant must submit a request that its rights be reinstated and a statement that the failure to meet the deadline was unintentional.

Federal Court of Appeal affirms largest reported Canadian patent infringement award in history
Smart & Biggar
  • Intellectual Property
  • Canada
  • 26 October 2020

In previous Federal Court decisions, the court ordered Nova Chemicals Corporation to pay the Dow Chemical Company approximately C$650 million as a result of Nova's infringement of Dow's patent on novel polyethylene blends. This was the largest reported Canadian patent infringement award in history. The Federal Court of Appeal has now issued its judgment and reasons on the appeal.

French language requirements in Quebec: an introduction
Smart & Biggar
  • Intellectual Property
  • Canada
  • 19 October 2020

The Charter of the French Language gives the French language the status of an official language in Quebec, thus making its use mandatory in all spheres of public life in the province, including commerce and business. An exception to this rule is the 'recognised trademark' exception, which provides that recognised trademarks need not be translated into French unless a French version of the mark is registered.

Why you should designate Canada – and a Canadian agent – in your next Madrid application
Smart & Biggar
  • Intellectual Property
  • Canada
  • 19 October 2020

A little over one year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada. This article explores some of the key reasons why international brand owners should consider designating Canada in international trademark applications and outlines the importance of appointing a Canadian agent to monitor and oversee international applications designating Canada.

Federal Court rejects problem-solution approach, opening field for computer-implemented inventions
Smart & Biggar
  • Intellectual Property
  • Canada
  • 05 October 2020

In a significant decision, the Federal Court has rejected the Canadian Intellectual Property Office's (CIPO's) approach to examining computer-implemented inventions. This decision could significantly affect how CIPO assesses patent-eligible subject matter and have important implications for the patentability of diagnostic methods.

Federal Court of Appeal does not disturb lower court's finding of use for hotel services
Smart & Biggar
  • Intellectual Property
  • Canada
  • 05 October 2020

In a highly anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate use of a trademark in Canada in association with hotel services in the absence of a brick-and-mortar hotel. While the decision is not the first to analyse the Internet's impact on use of a trademark, this case provides important guidance to brand and trademark owners which offer services to consumers in Canada without a physical brick-and-mortar location.

8 important life sciences IP issues for innovators doing business in Canada
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 30 September 2020

The US-Canada border is the longest border between any two countries and US goods and services trade with Canada totalled an estimated US$718.5 billion in 2018, possibly the largest bilateral trade volume between two individual countries. Given the extensive integration of the Canadian and US economies, US life sciences companies can expect to have Canadian business interests. This article highlights eight life sciences IP issues of importance for innovators doing business in Canada.

Not all pun and games: Federal Court not amused with cannabis company's brand parody
Smart & Biggar
  • Intellectual Property
  • Canada
  • 28 September 2020

A recent Federal Court decision illustrates the danger of adopting a mark or name inspired by a famous or well-known brand, even when confusion is unlikely. The decision is a cautionary tale, particularly for those in burgeoning industries, such as Canada's cannabis industry, which may wish to piggyback on an established brand's goodwill and reputation.

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