Category: Uncategorized

Common Patent Misconceptions – Myth #5 – Provisional Applications

Posted on by Debbie Malek

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #5: Even if my invention is in an early stage of development, I can still file a “quick and dirty” U.S. provisional application

A U.S. provisional patent application can be filed as a “place holder” to secure an early priority date and allows you to disclose or discuss your invention with potential investors.  A provisional application needs to be converted into a full application by the one-year mark and has to be filed individually in each country you are interested in.

Despite the fact that the formality requirements for U.S. provisional patent applications are fairly relaxed in comparison to non-provisional applications, there are still a number of good practices that inventors should keep in mind. In this article, we will explore some reasons why inventors should NOT cut corners when filing provisional patent applications.

Quality of the Provisional Application Drafted

One often hears that a provisional patent application can be as simple as sending the photograph of an idea scribbled on a napkin to the United States Patent and Trademark Office (“USPTO”). While these may still serve as stopgaps at the USPTO, their robustness and efficacy as patent applications are largely problematic.

It is generally an accepted good practice in the industry to file provisional patent applications to be as much like formal applications as possible. When inventors choose to file their provisional patent applications themselves (oftentimes by submitting presentations or academic papers), they might include language that could limit the invention, or generally set themselves up for obstacles down the road.

Enabling Disclosure in Provisional Applications

Another aspect to keep in mind is the fact that provisional applications must still provide an enabling disclosure. That is, they are held to the same standard as non-provisional applications for being able to adequately teach the invention they protect. This is in fact a key requirement in all jurisdictions. For example, section 27(3) of Canada’s Patent Act states that the “specification of an invention must correctly and fully describe the invention and its operation or use as contemplated by the inventor.”

A provisional application which only spells out an idea, but does not teach how to properly implement it, may run into problems later on, including at the formalization stage. Patent Examiners may also assign later claim dates to concepts that did not appear in the provisional application, and only appeared later in its formalization. This is why it is a good practice to ensure that that provisional application describes the invention as fully as possible.

Conversion to Formal Applications

As the provisional applications must be converted into regular applications before the 12-month time period runs out, another important point to remember is that a very rudimentary provisional patent application may be much more difficult to convert into a full patent application than a provisional application that is well-drafted. The rudimentary provisional will undoubtedly require more time, effort and money than if the starting point was a robust provisional patent application drafted by a patent professional. So while the photograph of a napkin with an idea on it may seem appealing initially, it can end up costing inventors a lot more down the road.

At a very minimum, a provisional patent application should be a robust detailed description of the invention. It should teach those skilled in the relevant art how to implement and practice the invention. The description should also describe the invention as fully as possible so that a meaningful set of claims may be drawn from it at the formalization stage, if not at the provisional stage.

Patents are not cheap, but they can turn out to be your business’s biggest assets, so it is worth investing in them and drafting them properly from the start. It is equally important to remember that patent law isn’t simple. It is one of the most complex areas of the law, with numerous potential pitfalls if you aren’t careful. That’s why hiring a professional from the start, who is trained and experienced in navigating the intricacies of patent law, can end up saving inventors a great deal of time, money and trouble in the long run.

If you have an idea that you are considering patenting, please feel free to reach out to MBM for a free consultation.

T: 613-567-0762
E: patents@mbm.com

Author: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

The Impact of CIPO’s New Guidance on the Prosecution of Patent Applications Directed to Diagnostic Methods

Posted on by Debbie Malek

The Federal Court in Choueifaty v. Canada (Attorney General), 2020 FC 837 decision found that CIPO’s problem and solution framed “purposive construction” was inconsistent with the principles set forth by the Supreme Court of Canada (for more background information, please see our previous article). The CIPO has now issued examination guidance in light of this decision. The updated guidance will be applied effective immediately to applications currently in prosecution as well as those presently before the Patent Appeal Board.

We believe that the impact of this change in CIPO’s practice with respect to claim construction will positively impact the prosecution of many diagnostic method patent applications. In particular, a number of claims which were found to be directed to non-statutory subject matter when incorrectly construed using the problem solution approach may now be found to be directed to statutory subject matter when construed correctly using purposive construction.

To illustrate this impact, the following claim (from the examples included in CIPO’s notice) has been construed using CIPO’s incorrect problem solution approach and the correct purposive construction approach.

Claim:

1. A method of diagnosing whether a human subject is at risk for developing cancer, comprising:

a. measuring the level of X in a biological sample from the subject; and

b. comparing said level to the level of a non-cancerous reference sample, wherein an increase in the level of X relative to said reference indicates the subject is at risk for cancer.

Under CIPO’s Incorrect Problem-Solution Claim Construction:

The typical problem CIPO would have identified for this type of claim under the problem-solution approach is a data analysis problem (i.e. relating the level of X to cancer risk). The solution to the problem CIPO would likely have identified would have been a correlation between cancer risk and the level of X and accordingly the steps related to measuring the level of X and comparing the level would have been regarded as non-essential. As such, the only element CIPO would have identified as essential would be the correlation between cancer risk. Such a correlation step is a disembodied idea and therefore the CIPO would have found that the claim is directed to non-statutory subject matter.

Under Purposive Construction:

There is no language in the claim indicating that any of the steps are optional. Accordingly, all the steps (including the steps related to measuring X and comparing the level of X) are essential.

As the essential elements are not limited to a disembodied idea, CIPO would find that the claim is directed to statutory subject matter.

Given this change in CIPO’s practice, we recommend reassessing any cases directed to diagnostic methods that were impacted by CIPO’s incorrect problem-solution claim construction methodology.

Please feel free to reach out to MBM if you need help regarding reassessing any cases directed to diagnostic methods.

For more information please contact:

Kay Palmer, Ph.D., Senior Patent Agent
T: 613-801-0452
E: kpalmer@mbm.com

Claire Palmer, Ph.D., Senior Patent Agent
T: 613-801-0450
E: cpalmer@mbm.com

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Enforcing Copyright Outside the Courtroom – The New Notice Regimes

Posted on by Debbie Malek

With the ever-increasing presence of social media, including websites like YouTube where content can generate income, copyright infringement is escalating at alarming rates. Unfortunately, it is no secret that the cost of enforcing copyright through the courts is expensive. To mitigate these costs, this article will provide some tips on how to enforce copyright outside the courtroom.

Enforcing Copyright

The traditional pre-litigation enforcement tool is a demand letter. However, consideration should also be given to the Copyright Act ‘Notice and Notice Regime’ and where applicable, the social media platform(s) internal notice systems.

Traditional Pre-Litigation Demand Letters

Obviously, the stronger the identity of a right is explained in a demand letter the more likely the letter will have an effect. Fortunately, obtaining a copyright registration is extremely quick and relatively inexpensive. As such, consideration should be given to whether to register a copyright before the delivery of a demand letter.

Pre-Litigation Notice Letters

To avoid litigation, the federal government and social media platforms have created an alternate pathway to enforce copyright and settle disputes.

Notice and Notice Regime

To deal with growing copyright infringement that occurs via intermediaries without initiating litigation, the federal government added section 41.25, to the Copyright Act, which sets up the Notice and Notice Regime.

The Notice and Notice Regime is a voluntary-industry based system in which copyright owners can notify an intermediary, including social media platforms, that they are hosting copyright infringing material. The social media platform would then notify the copyright violator, usually by forwarding the letter they have received. Additionally, intermediaries are obligated to retain records about the alleged copyright infringement for six months after the notice is issued. Intermediaries commonly include internet service providers (ISPs).

Automatic Forwarding

Unfortunately, the original system was subject to abuse as social media platforms tended to forward all copyright notices they received in order to limit their liability. Copyright trolls and other nefarious entities would bulk mail, and email, standardized letters to social media platforms, which they would forward to the alleged infringers. These letters were used to effectively extort settlement money from alleged infringers.

To prevent this abuse, the federal government amended section 41.25 (3) of the Copyright Act to prohibit these notices from containing:

  • An offer to settle the claimed infringement;
  • A request or demand, made in relation to the claimed infringement, for payment or for personal information;
  • A reference, including by way of hyperlink, to such an offer, request or demand; and
  • Any other information that may be prescribed by regulation.

If a notice containing any of the above is sent to an intermediary, they are no longer obligated to forward the notice or maintain any records of it. However, in practice, social media companies often still forward these notices without reviewing them. Therefore, it is important to determine the actual source of the notice and its content.

Internal Notice System

Virtually all social media platforms have developed their own copyright notice systems and policies to deal with and notify alleged copyright violators. However, YouTube and other social media platforms send out many different types of notices. Each different type of notice can result in different consequences. Thus, it is important to identify not only: (a) who is sending the notice (e.g. a lawyer, social media platform or alleged copyright holder); but also (b) what type of notice is being sent. Only after knowing both, who the sender is and what type of notice it is, can a recipient better understand the proper actions to take.

It is important to remember that regardless how far a copyright holder is along the notice path, copyright holders can still initiate legal action separately and independently at any time. The copyright holder always has the option to initiate legal proceedings.

If you are considering sending a cease and desist letter relating to intellectual property infringement, or if you have received such a letter, please feel free to reach out to MBM for a free consultation. Also, stay tuned for a separate article discussing specifically YouTube’s internal controls for IP infringement.

For more information, please contact:

T: 613-567-0762
E: general@mbm.com

Authors: Osman Ismaili, Patent Associate & Maxwell Wong, Associate Lawyer

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

High Stakes: Protecting Your Cannabis Intellectual Property

Posted on by Debbie Malek

It has been almost two years since the federal legalization of cannabis, and Canada’s legal cannabis market is quickly blossoming into a massive industry. The market is constantly growing with many US states (e.g., Illinois) and Europe embracing regulatory change. Market research predicts that the global legal cannabis market could reach CAD $100 billion by 2027[1].

While medical cannabis has traditionally been a source of intellectual property (IP), legalization is sure to bring an influx of applications in the coming years. Therefore, understanding and deploying your IP toolbox to its fullest potential is the best means of ensuring strong protection of your IP assets. This article will briefly discuss some of the tools that cannabis businesses should consider when creating a robust IP moat around their products and services.

Patents in the cannabis industry can include novel or modified active ingredients, methods for the isolation of novel cannabinoids, novel formulations of active ingredients, genetically modified cells, and the use of compositions comprising cannabinoids for treatment.

In addition to patents, Plant Breeders Rights (PBRs) are an excellent complement and can be used to protect new cannabis plant varieties. PBRs are a form of intellectual property that specifically protects new plant varieties and offers exclusivity in terms of the sale, production, reproduction, import and export of the variety. This protection can be further extended beyond Canada by filing an international application.

While higher life forms are not patentable subject matter in Canada[2], genetically modified cells and methods of producing such cells are patentable[3]. New plant varieties that have been produced by traditional breeding methods are not patentable and as a result, are only eligible for protection under PBR. As such, businesses should take advantage of both regimes by obtaining a patent to protect genetically modified cells and PBRs to extend protection to the resulting plant variety.

In order to be granted protection under PBRs, the variety must meet the following criteria:

  • New: the variety may not have been sold longer than 1 year in Canada and 4 years outside Canada;
  • Distinct: the variety must be distinguishable from varieties whose existence was common knowledge on the date of filing;
  • Stable: the variety must express a stable set of characteristics throughout propagation; and
  • Uniform: the variety must exhibit characteristics that are consistent between plants within the variety.

Industrial designs are another useful tool in your IP arsenal and can be used to protect the three-dimensional features of a shape and configuration, as well as the two-dimensional features (patterns and ornaments) of finished products intended to be sold (e.g., cannabis cigarettes). Once granted, an industrial design offers protection for up to 15 years. Businesses should also be aware that Health Canada has strict regulations surrounding the packaging design for cannabis products.

Trademark registration is another available tool cannabis businesses should employ to protect their brand. It is important to be mindful that, for example, cannabis products or any related service cannot be promoted by depiction of a person, character, or animal, whether real or fictional. For additional information, check out our recent article about how to properly protect your cannabis-related trademarks. Canadian businesses should also be aware that American companies might choose to register their trademarks in Canada due to some difficulty in obtaining a cannabis-related trademark in the US.

Utilizing and deploying the proper tools in your IP toolbox is the best way to maximize the value of your cannabis business. Consult a professional at MBM to discuss how to best protect your IP portfolio.

For more information, please contact:

Poonam Tauh, Partner, Patent Agent
T: 403-800-9018
E: ptauh@mbm.com

Co-author: Carl Farah, Law Student

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

[1] https://www.grandviewresearch.com/press-release/global-legal-marijuana-market

[2] Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76.
[3] Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34.

 

Federal Court Finds CIPO Examination Practice Out of Line with Supreme Court Precedents

Posted on by Debbie Malek

The Federal Court in a recent decision found a wide-reaching examination practice respecting purposive construction that was introduced by The Canadian Intellectual Property Office (CIPO) 7 years ago, to be against principles of purposive construction set forth by the Supreme Court and damaging to the prosecution of patents in several technology areas.

CIPO issued practice notice PN2013-02 entitled “Examination Practice Respecting Purposive Construction” on March 8, 2013 that instructed Examiners to frame their purposive construction of the claims through a problem and solution lens. In particular, it was CIPO’s position in this practice notice that “identification of the problem and the solution provided by the invention informs the purposive construction of the claims” and that only those elements that solved the identified problem were essential.

A second practice notice (PN2013-03) entitled Examination Practice Respecting Computer-Implemented Inventions was also issued that detailed using the problem and solution framed “purposive construction” for the examination of applications directed to computer implemented methods.

Two subsequent practice notices (PN2015-01 and PN2015-02) were also issued that detailed using the problem and solution framed “purposive construction” for the examination of applications directed to medical uses and medical diagnostic methods.

These CIPO practices significantly and negatively impacted prosecution in many areas of technology including computer implement methods, personalized medicine, diagnostics and biotechnology. In fact, to date, there have been 31 Patent Appeal Board decisions that referenced practice notice PN2013-02, ten of which included statutory subject matter objections. Of these ten, seven were refused outright.

There were also 84 Patent Appeal Board decisions that referenced practice notice PN2013-03 and 8 Patent Appeal Board decisions that reference practice notice PN2015-01.

The Federal Court in the recent Choueifaty v. Canada (Attorney General) decision (2020 FC 837) turned their eyes to CIPO’s practice of using the problem and the solution approach to inform purposive construction of the claims. This decision specifically reviewed Patent Appeal Board decision 1478 that specifically referenced PN 2013-03. Although Choueifaty v. Canada does not specifically reference the practice notices, the Court referenced the Manual of Patent of Practice 13.05.02 which incorporated the content of practice notice PN2013-02. The Court found:

[31] It is evident on a reading of the MOPOP that the Commissioner, notwithstanding stating that the patent claims are to be construed in a purposive manner, does not intend or direct patent examiners to follow the teachings of Free World Trust and Whirlpool. …

[37] The Appellant submits, and I agree, that using the problem-solution approach to claims construction is akin to using the “substance of the invention” approach discredited by the Supreme Court of Canada in Free World Trust at para 46. …

[40] For these reasons, I find that the Commissioner erred in determining the essential elements of the claimed invention by using the problem-solution approach, rather than the approach Whirlpool directs be used. (Emphasis added)

MBM welcomes this decision from the Federal Court that affirms our longstanding position that CIPO’s problem and solution framed “purposive construction” was inconsistent with the principles set forth by the Supreme Court of Canada.

For more information please contact:

Kay Palmer, Ph.D., Senior Patent Agent
T: 613-801-0452
E: kpalmer@mbm.com

Claire Palmer, Ph.D., Senior Patent Agent
T: 613-801-0450
E: cpalmer@mbm.com

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Common Patent Misconceptions – Myth #4 – Disclosures

Posted on by Debbie Malek

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #4: Even if I publicly disclose my invention, I can still get a patent application filed by the 12-month mark from the disclosure, without any repercussions.

This myth is only partly true with an important caveat. Yes, Canada, the US, and a few other countries offer a special type of grace period for inventors who have made a public disclosure of their invention. The inventors have until 12 months from the date of their public disclosure to file for patent protection within each of those countries. “Within each of those countries” is very important to remember, which means that if an invention is publicly disclosed anywhere in the world and protection is intended to be sought, for example, in both Canada and the US, then both a Canadian national filing and a US national filing must take place before the 12-month period expires.

Public disclosure is where you have disclosed your invention to anyone who is not bound by a non-disclosure or confidentiality agreement to keep your invention a secret. Does this mean that there is still a risk in publicly disclosing an invention before officially filing your patent? Yes, there is a risk that you might not get your patent in some major jurisdictions that do not offer the one-year grace period from the date of public disclosure.

In fact, while only a handful of jurisdictions allow for this one-year grace period, most other jurisdictions around the world do not, and require “absolute novelty” (which essentially means there must not be any sort of public disclosure before the filing date of the application). “Absolute novelty” requiring countries include Europe and Asia, two massive markets which a company certainly may not want to miss out on, depending on the type of invention and their market expansion goals.

It is also very important to note that the grace period works a little differently in Canada compared to the US, because of US provisional patent applications. In the US, if an invention was publicly disclosed on January 1, 2019, then a US national filing must occur by January 1, 2020 (1 year after). This first US filing could be a provisional application, which is essentially a temporary, informal application. Subsequently, one more year after that, by January 1, 2021, the US provisional application needs to be converted to a regular, full US application.

Meanwhile, in Canada, there is no equivalent to a US provisional application and as a result, only full applications can be filed in Canada and must be filed within the 12-months period from the date of disclosure. This means that, if an invention was disclosed (anywhere in the world) on January 1, 2019, and if a US provisional patent application was filed on December 31, 2019, a full Canadian application must still be filed by January 1, 2020 (only 1 year after disclosure). In Canada, a formal Canadian application is the only national application that can be filed once a public disclosure has been made.

You may be thinking that the US system essentially allows applicants to file a US formal application almost two years after a public disclosure, and the Canadian system provides only one year for a Canadian application – and you are absolutely correct. It is important to remember this significant difference between US and Canadian patent law.

While a US provisional application could still be used as a priority document for a later Canadian filing, the Canadian application must be filed within 12 months from the date of public disclosure.

If you have an idea that you feel may be patentable and you are considering disclosing it in any way, please feel free to reach out to MBM for a free consultation.

For more information, please contact:

T: 613-567-0762
E: patents@mbm.com

Author: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Grey Market Goods – Coty and Costco Battle it Out in Québec

Posted on by Debbie Malek

The Québec Court refuses to force Costco to disclose where it obtained genuine goods but offers a practical solution to track down the source of the goods.

Grey marketing typically consists of a retailer purchasing genuine branded products abroad for less than offered to them from a local distributor. Grey marketing is generally problematic for international brand owners, who may end up competing against their own products thereby losing control of how the brand is represented to customers.

On June 22, 2020, the Québec Superior Court, in Coty Inc. c. Costco Wholesale Canada Ltd.[1], issued a decision regarding Coty’s request for a Norwich Order asking the Court to compel Costco to disclose the identity of the supplier who sold it genuine Coty cosmetic products.

Norwich Orders are an extraordinary pre-trial discovery measure that allows the holder of a right to compel an innocent third party to disclose the identity of wrongdoers in order to commence legal proceedings against them.

Coty argued that Costco had obtained Coty products from distributors who had breached their exclusive distribution agreements and as such, Costco ought to reveal the identity of these distributors. However, Costco answered that the doctrine of exhaustion should prevail in that the intellectual property rights (trademark/copyright) embodied in a tangible object are “exhausted” after it undergoes its first sale. The Court agreed with Costco and further noted that Costco’s expectation of privacy should be upheld and there was no evidence that Costco had purchased illegal goods.

The Court refused to issue the Norwich Order. Intriguingly, the Court offered a solution to discover the identity of the alleged foreign distributor(s) who were purported to be in violation of selling outside their territorial limits by implementing a tracking system to determine the origin of the products sold by Costco instead of seeking to compel the disclosure of this information.

In conclusion, this decision further exemplifies the degree to which Norwich Orders are extraordinary measures that should only be granted when there is sufficient evidence to substantiate allegations of wrongdoing.

 

For more information please contact:
Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613-801-1099
E: smiller@mbm.com

Co-Author: Carl Farah, Law Student

 
This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation

[1] 2020 QCCS 1898.

 

New Federal Court Decision Provides for Greater Protection of Combination Drugs Under CETA

Posted on by Debbie Malek

In 2017, the Canada-European Union Comprehensive Economic and Trade Agreement (CETA) came into force. CETA covers virtually all sectors and aspects of trade and aims to increase bilateral trade and investment between Canada and the EU. In order to comply with this agreement, Canada enacted the CETA Implementation Act (CIA) which provided for, among other things, the introduction of the Certificate of Supplementary Protection (CSP) to the Patent Act. CSPs offer up to two years of additional protection to patentees for the medicinal ingredient or the combination of medicinal ingredients in a drug and is meant to compensate for time spent researching and obtaining regulatory approvals. In order to receive a CSP, the drug must be approved by Health Canada via a Notice of Compliance (NOC).

On July 10, 2020, the Federal Court issued a decision in a judicial review on the Minister of Health’s (the “Minister”) refusal to issue a CSP to ViiV Healthcare ULC (“ViiV”) in respect of Canadian Patent No. 2,606,282 (the “282 patent”) and the drug JULUCA®. JULUCA® is a combination drug containing medicinal ingredients dolutegravir and rilpivirine. The 282 patent is listed on the Patent register with respect to JULUCA®. The 282 patent, has claims directed only to dolutegravir, but does not have claims directed at the combination of dolutegravir and rilpivirine.

At issue in this judicial review, was whether the Minister had reasonably interpreted the Patent Act and the CSP Regulations (CSPR) in a manner that was consistent with CETA. The Minister was of the position that a CSP could not be granted because the 282 Patent does not pertain to the combination of the medicinal ingredients contained in JULUCA®. In taking this position, the Minister relied primarily on the Regulatory Impact Analysis Statement (RIAS) for the CSPR and the CSP’s Guidance Document. ViiV took the position that CETA’s intellectual property provisions were intended to provide protection for single medicinal ingredients or combinations of medicinal ingredients in new drug products. In addition, ViiV contended that the Minister’s interpretation would incentivize drug manufacturer’s to continue to make separate products instead of innovating fixed-dose combination therapies. The Court held that the Minister had unreasonably considered ViiV’s submission since the CIA required that the CSP legislation be interpreted in a manner that was consistent with CETA and that the sole reliance of the Minister on the CSPR RIAS and associated Guidance Document was not adequate, as neither CSPR RIAS nor the Guidance document has legislative force. As such, the Court granted the judicial review and remitted the matter to the Minister for redetermination.

In conclusion, this decision, if not appealed by the Minister would expand the scope of combination drugs eligible for CSP protection. In addition, this decision exemplifies the importance of harmonious interpretation of Canada’s international obligations and the statutory language with respect to IP protection in Canada.

For more information, please contact:

Poonam Tauh, Partner, Patent Agent
T: 403-800-9018
E: ptauh@mbm.com

Co-author: Carl Farah, Law Student

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Almost 2 Years Post-Cannabis Legalization – A Comparative View of the Budding Industry Across Canada

Posted on by Debbie Malek

For budding cannabis enterprises in Canada, navigating the legal and regulatory regimes pose unique challenges. This article will briefly discuss the federal cannabis framework and delve into the various provincial frameworks adopted across Canada for the recreational sale of cannabis.

The Cannabis Act (the “Act”) came into force on October 17, 2018, and legalized the sale, distribution and consumption of recreational cannabis across Canada. Exactly one year later, the second wave of cannabis legalization introduced Cannabis 2.0 products to the marketplace. Cannabis 2.0 products include edibles, topicals, vape pens and beverages. The Act gives the Canadian federal government the power to regulate the cultivation, processing and sale tracking of cannabis. It sets the minimum age of consumption at 18 years old and allows for the possession of up to 30 g of cannabis per individual. In concert with the provinces, the federal government has the authority to regulate road safety, impaired driving, regulatory compliance and taxation. The federal government is also responsible for establishing regulations surrounding the branding, labelling and marketing of cannabis.

In response to the Act, each province has also adopted its own framework for recreational cannabis. The provinces are permitted to strengthen, but not weaken, the federal legislation and are responsible for regulating the age of consumption, retail sales, possession limits, advertisements and home cultivation, amongst other aspects. Here, we present an overview of the regulatory schemes for recreational cannabis of each province.

 

The Maritimes

St. John’s, NL will famously be remembered as the location of the first legal sale of recreational cannabis in Canada. The Maritime Provinces have mostly adopted a legislative monopoly for the retail of recreational cannabis with the exception of Newfoundland and Labrador, which has chosen to implement a mixture of the public and private models. New Brunswick has announced that due to disappointing sales numbers, it will accept takeover bids for its retail operations.[1] The province hopes this switch to private retail will energize the private sector and maximize benefits for taxpayers. To order cannabis online in Nova Scotia, consumers must first visit a brick-and-mortar store and obtain an online access code by showing valid proof of age. This age verification measure is intended to prevent minors from browsing the website. In light of the recent illnesses associated with vaping, Nova Scotia has banned the sale of flavored cannabis vaping products.[2] Newfoundland and Labrador has taken a stricter approach to cannabis vaping products by banning their sale entirely.[3]

 

The Territories

Both the Northwest Territories and Nunavut have implemented a legislative monopoly of the retail sale of recreational cannabis while the Yukon has opted for a mix of the public and private model. The Yukon is in the process of selling its provincially owned physical stores to the private sector but plans to retain online store.[4] The Nunavut crown corporation operates entirely from within the provincial government via a special revolving fund that sees its profits transferred back to the government at the end of each year. This approach ensures that the profits of legalization are directly put to work for the taxpayers. Interestingly, there are no physical stores in Nunavut and customers must rely on two territory approved agents for online purchases.

 

Ontario

Ontario had initially planned to implement a government monopoly, which would have established online and physical points-of-sale. This plan was abandoned, and it was decided to instead let the private sector run the brick-and-motor stores. These last-minute changes meant that stores were not ready by legalization and customers had to rely exclusively on the online store. The Alcohol and Gaming Commission of Ontario (AGCO) is the regulator in charge of licensing private retailers throughout the province. In response to a slow rollout of retail stores, the province has cancelled its lottery system for awarding licenses and will instead open up applications and issue up to 20 store authorizations per month. Private retailers must apply and obtain a Retail Operator License and a Retail Store Authorization from the AGCO. The Ontario Cannabis Store, which runs the online store, is the exclusive wholesaler to private retailers. As of this article, roughly 500 applications have been submitted to the AGCO.

 

Quebec

Quebec decided to implement a legislated monopoly on the sale of recreational cannabis. The Cannabis Regulation Act explicitly authorizes the Société Québécoise du cannabis (SQDC), a subsidiary of the Société des alcools du Québec (SAQ), as the sole entity in charge of regulating recreational cannabis sales. It was decided to increase the minimum age of consumption to 21, the highest in the country.[5] Quebec has also banned the home cultivation of cannabis plants for personal use. To protect children from the risk of inadvertent consumption, the Quebec government has decided to ban cannabis chocolates, sweets, and desserts.[6] In the face of a dramatic increase in vaping-associated lung illnesses south of the border, Quebec has banned cannabis vaping products.[7]

 

The Prairies

Both Manitoba and Saskatchewan have adopted a private model for the recreational sale of cannabis while Alberta opted for a public and private model. To the surprise of many, Alberta has become the poster child of a successful recreational cannabis rollout; boasting nearly 500 licensed retailers.[8] Alberta is also home to Aurora Cannabis which owns and operates an 800,000 square foot growing facility, one of the largest in Canada.[9] Edmonton will soon be home to the largest manufacturing plant in Canada for the production of cannabis gummies.[10] Saskatchewan and Ontario are currently the only two provinces that allow private retailers to deliver cannabis directly to consumers.

 

British Columbia

British Columbia (BC) has adopted a public and private model for the sale of recreational cannabis whereby the provincially run Crown corporation operates online and physical points of sale and the licensed private retailers operate physical stores. Interestingly, British Columbia was allegedly, Canada’s largest illicit market of recreational cannabis prior to legalization. Commentators who were hoping that BC’s large illicit market would translate into a strong retail presence were surprised when BC posted one of the worst sales records amongst the provinces one year into legalization.[11] Indeed, it appears that a substantial portion of the current dispensaries throughout the province operate without a license.[12] In order to protect the youth from vaping, the province has recently passed new regulations which prohibit nicotine-cannabis vaping products.[13]

 

Conclusion

Table 1 below provides a quick glance at the differences in the regulatory frameworks adopted by each province. It is still too early to tell which provinces will come out on top and which will have to tweak their regulatory frameworks to reflect emerging trends and public policy. Market stabilization could take many years and while the illicit market will not disappear overnight, it is important that federal and provincial governments apply pressure to squeeze it out. Moving forward, it will be important for the provinces to reflect on whether their chosen regulatory frameworks are actually achieving their intended objectives. Navigating these regulatory regimes can be daunting. Instead of taking this journey alone, we recommend you contact one of the legal professionals at MBM. Interested businesses should also check out our recent article that details how to protect your cannabis related trademark.

  

For more information, please contact:

T: 613-567-0762
E: patents@mbm.com

Authors: Osman Ismaili, Patent Associate, and Carl Farah, Law Student

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.
[1] https://www.cbc.ca/news/canada/new-brunswick/cannabis-pot-new-brunswick-companies-1.5424992
[2] https://www.cbc.ca/news/canada/nova-scotia/cannabis-vape-health-flavour-ban-1.5387308
[3] https://financialpost.com/cannabis/cannabis-health/newfoundland-labrador-bans-sales-of-cannabis-vapes
[4] https://www.cbc.ca/news/canada/north/cannabis-retail-stores-yukon-1.5478599
[5] https://www.cbc.ca/news/canada/montreal/legal-age-cannabis-edibles-1.5399211
[6] https://www.cbc.ca/news/canada/montreal/cannabis-regulations-quebec-legal-1.5223723
[7] https://financialpost.com/cannabis/cannabis-health/newfoundland-labrador-bans-sales-of-cannabis-vapes
[8] https://aglc.ca/cannabis/retail-cannabis/cannabis-licensee-search
[9] https://www.cbc.ca/news/canada/edmonton/aurora-sky-cannabis-airport-1.4856279
[10] https://edmontonjournal.com/news/local-news/edmonton-set-to-be-home-to-largest-cannabis-gummy-facility-in-canada
[11] Statistics Canada, The Retail Cannabis Market in Canada: A Portrait of the First Year, Catalogue no. 11‑621‑M (Ottawa: Statistics Canada, 19 June 2020).
[12] https://www.cbc.ca/news/canada/british-columbia/cannabis-pot-shops-illegal-vancouver-1.5616877
[13] https://www.cbc.ca/news/canada/british-columbia/vaping-laws-update-bc-1.5656157

Green Tech Patents – How Canadian Government is Helping the Process

Posted on by Debbie Malek

With the world beginning to reopen following the COVID-19 pandemic, many of us may be feeling a new mindfulness when it comes to the environment and the effects that our civilization has had on it.

Similarly, with many inventors focusing on technologies that either help resolve or mitigate environmental impacts, or conserve the natural environment and resources that are present, perhaps it is a good time to turn our attention towards the intersection of patent rights and the environment.

Several jurisdictions around the world have implemented special legislative provisions that incentivize the patenting of inventions that are geared to help, or preserve, the natural environment. In this article, we’ll take a look at how Canada has implemented such provisions.

Canada’s Patent Rules provide a mechanism for advancing examination for “green technologies”. Examination is the process by which an application for a patent is scrutinized by an Examiner at a patent office, in order to determine whether the application meets the necessary criteria to issue as a patent. The examination process can typically take 2 to 5 years. In select cases it can be shorter, while in others much longer. Therefore, being able to take advantage of an advanced examination process can allow for inventors or companies to possess the enforceable right much sooner.

Rule 84 (1) of the Patent Rules states:

In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application on the request of

(b) the applicant, if the applicant files with the Commissioner a statement indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.

According to the Organization for Economic Co-operation and Development (OECD), Canada saw a 16% increase in the number of environmental technology patents filed between the years 2000 and 2011. While this increase is definitely good news, Canada is still lagging far behind many other countries, such as the UK, which experienced an increase of 63%; Mexico, which experienced an increase of 149%; Brazil, which experienced an increase of 185%; and China, which experienced an increase of a whopping 1040%, all during the same timeframe.

The Canadian Intellectual Property Office (CIPO) states that in order to take advantage of the advanced examination process, applicants need to submit a letter that includes:

1. a request for an advanced examination;

2. a statement indicating that the application relates to technology that if commercialized would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources; and

3. an early laid open date (only if the request is made before the application has been opened to public inspection, usually 18 months after the filing date).

Typically, once the request for advanced examination of a green technology is processed, the first office action can be expected within 3 months. It is important to remember however, that if time extensions to reply are requested or if the prosecution process is abandoned, the application will be removed from the expedited process and returned to the regular process.

If you have created or invented something relating to the environment or green technologies which you feel may be patentable, please feel free to reach out to MBM for a free consultation.

T: 613-567-0762
E: patents@mbm.com

Authors: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.
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