Smart & Biggar updates

Cloud computing: overview of IP issues
Smart & Biggar
  • Intellectual Property
  • Canada
  • 11 January 2021

Cloud computing has increasingly become a dominant model for computer and IT service, with the majority of businesses worldwide using computing resources and storing data in the Cloud. However, despite the ease of use and convenience of cloud computing, moving data and services into the Cloud raises several legal issues for both cloud computing providers and users. This article highlights some of the issues and questions relating to IP rights raised by cloud computing.

What to expect from Canada's new examination guidelines for patentable subject matter – interview
Smart & Biggar
  • Intellectual Property
  • Canada
  • 21 December 2020

The Canadian Intellectual Property Office (CIPO) recently released new guidelines on patentable subject matter and a set of examples applying these new guidelines. This video summarises the main changes introduced and examines how CIPO will deem computer-implemented inventions to be patentable under the new guidelines. It also offers advice to applicants of computer-implemented inventions to increase their chances of overcoming patentable subject matter objections in Canada.

Trademarks Office to allow expedited examination for COVID-19-related goods and services
Smart & Biggar
  • Intellectual Property
  • Canada
  • 21 December 2020

On 14 December 2020, for the first time in more than a decade, the Trademarks Office announced that it will grant requests for the expedited examination of trademark applications. However, expedited examination will be limited to applications where the goods or services are for the prevention or treatment of COVID-19. This is a notable change in practice, since there is currently a significant backlog facing trademark applications in Canada, with delays in examination of approximately two years from filing.

Why Canadian trademark owners should consider whether international registration is right for them
Smart & Biggar
  • Intellectual Property
  • Canada
  • 14 December 2020

Until 2019 most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside Canada. They had to file separate applications in each country of interest, except in the few areas where a regional application was available (eg, the European Union). Now there is a new option available to Canadian brands and businesses looking to expand and protect their trademarks beyond Canada's borders: international registration.

Innovators challenge final PMPRB Guidelines in new Federal Court application
Smart & Biggar
  • Healthcare & Life Sciences
  • Canada
  • 09 December 2020

Innovative Medicines Canada and numerous research-based pharmaceutical companies recently commenced an application for judicial review of the final Patented Medicine Prices Review Board Guidelines. The guidelines aim to operationalise amendments to the Patented Medicines Regulations scheduled to come into force on 1 January 2021.

Innovators challenge final PMPRB Guidelines in new Federal Court application
Smart & Biggar
  • Intellectual Property
  • Canada
  • 07 December 2020

Innovative Medicines Canada and a number of research-based pharmaceutical companies recently commenced an application for judicial review of the final Patented Medicine Prices Review Board Guidelines. The guidelines aim to operationalise amendments to the Patented Medicines Regulations scheduled to come into force on 1 January 2021.

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.

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.

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.

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.

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.

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.

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