Trademark Cases

FCA dismisses Appeal; Refuses to Strike Paragraphs from Statement of Claim
Beyond the Rack Enterprises v. Michael Kors et al.

The Federal Court of Appeal (FCA) upheld the decision of the trial judge dismissing a motion brought by Beyond the Rack to strike paragraphs from Michael Kors’ Statement of Claim. The trial decision can be found here and our summary of it can be found here.

The FCA held that the trial judge had applied a de novo standard of review and agreed with the Prothonotary’s decision not to strike the impugned paragraphs.  Furthermore, the FCA upheld the Judge’s decision that there was no abuse of process in the impugned paragraphs as they did not lack an evidential basis. The FCA held that there was a heavy burden borne by a party seeking to strike a claim prior to discovery. Thus the Appeal was dismissed.

Decisions of the Commissioner of Patents

Commissioner of Patents Reverses Examiner’s Refusal to Allow Patent on Basis of Sound Prediction and Desired Result Arguments
Decision 1303 Re: Application No. 592,567

The Application was rejected by the Examiner under section 2 of the Patent Act for containing claims for which the utility could not soundly be predicted and under section 34(2) for containing claims directed to a desired result. The Commissioner held that the rejection should be reversed.

The Commissioner considered the test for sound prediction and held that there was both a factual basis and a sound line of reasoning in this case and that they were found in the disclosure of the patent. Thus, it could not agree with the Examiner’s position that the claims did not comply with section 2 of the Patent Act. The Commissioner then went on to consider a claim not objected to by the Examiner on this basis and found that it could not be soundly predicted as it did not have the promised utility across the entire scope. In considering that the argument that the patent claimed a desired result, the Commissioner held that the Examiner requiring the parameters to be “good enough to give an infallible result” was setting the bar too high. Routine uninventive experimentation is permitted. Thus, based on the disclosure there were no grounds for finding that a person of skill in the art would not be able to make the compositions achieve the results.  The patent was then sent to be considered under section 43 of the Patent Act.

Application for Reissue Denied
Decision No. 1333 re: Patent 2,241,368

The Commissioner concurred with the findings of the Reissue Board and held that the patent did not meet the requirements under subsection 47(1) of the Patent Act as it was not inoperative or defective. Furthermore, the Commissioner held that the patentee failed to provide sufficient subjective evidence that the proposed claims were intended to be part of the original patent. Thus, no new patent was to be issued and the patent would remain in its original granted form. The Commissioner held that stating that the claims are defective for claiming less than the patentee intended is an acceptable defect. However, the patentee must explain how the error arose, which led to the original patent being defective, or inoperative.

The Commissioner held that an application for reissue cannot be amended other than to correct an obvious typographical error. If the facts are incorrect, then the only remedy is to file a new application, including any prescribed fees, within four years of the issue date of the original patent. Furthermore, a patentee can not obtain protection for claims with the same scope as those deliberately cancelled during prosecution. The only evidence of intent regarding the error of not including the newly sought claims, was a US patent. However, those claims were introduced into the US prosecution only after the Canadian issue date. Thus there is no substantiation for the position that similar claims were intended to be part of the original Canadian patent. In addition, the Commissioner held that a failure to file a divisional application is not a direct error or defect pertaining to the original patent document. It is a second patent. Thus, it provides no evidence as to the intent regarding the original patent. Section 47(3) does not provide a remedy to allow for a reissue to include unfiled divisional claims without meeting the requirement of section 47(1). Thus, the application for reissue was denied.

Other Industry News

Health Canada has published a Notice - New requirements for submitting administrative drug submissions to Health Canada.

Health Canada has published a Notice - Publication of information about certain Clinical Trial Applications authorized by Health Canada.

Health Canada has also published a Notice - Validation rules for regulatory transactions submitted to Health Canada in the electronic Common Technical Document (eCTD) format (updated in June 2015).


Beverley Moore

Adrian J. Howard

Chantal Saunders


Intellectual Property