The Federal Court has published for consultation in the Canada Gazette, proposed amendments to the Federal Courts Rules relating to the costs regime. The proposed changes include: i) separate sections for actions, applications, motion and appeals; ii) only three columns (instead of five currently); iii) additional assessable items; and iv) an overall increase of about 25% to costs awarded under the tariff. The changes also include replacing “Prothonotary” with “Associate Judge” in the Rules. Continue reading Costs
Appointments
Michael Crinson of Crinson Law LLP was appointed an Associate Judge of the Federal Court today. Appointments were also made today to the Superior Court of Ontario and the Superior Court of Quebec. Continue reading Appointments
Fees
CIPO has issued a reminder that many fees have changed as of January 1st with most fees increasing by about 3%. They have also published a consultation in the Canada Gazette for a 25% fee increase for next January as well as expanding the definition of ‘small entity’.
Happy New Year
Thank you for another year with IPPractice. In 2022, I sent out 480,000 emails to over 2200 subscribers. I have included reports on about 180 IP-related decisions and over 330 new IP-proceedings. My top post was announcing the new Patent Rules and the most popular decision was Benjamin Moore & Co. v. Attorney General Of Canada, 2022 FC 923. Happy New Year! Continue reading Happy New Year
Trademarks
One new and one amended trademark practice notice were published today. A new notice clarifies the practice before CIPO as an Office of Origin when the Registrar of Trademarks is unable to certify an application for international registration (AIR) under the Madrid Protocol or one is withdrawn. An updated notice is directed to exclusionary wording in statements of goods or services.
USPTO patents agents
The USPTO is requesting Canadian patent agents who are registered to practice before the USPTO under 37 CFR §§ 11.6(c) to confirm their intentions to remain registered, CPATA status, and contact information. Miles Steininger has a helpful summary of the request and required response. The USPTO has set a deadline of January 6, 2023 to respond.
Copyright
An Order in Council has fixed December 30th as the day on which Division 16 of Part 5 of the Budget Implementation Act, 2022, No. 1 comes into force to extend certain terms of copyright protection from 50 years to 70 years after the life of the author. Continue reading Copyright
TMOB
CIPO has announced a consultation on Trademark Opposition Board procedures, including costs awards, confidentiality and case management. Continue reading TMOB
US Supreme Court
Earlier today, the US Supreme Court agreed to take up Jack Daniel’s Properties, Inc. v. VIP Products LLC on “whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims”. The defendant sells a “Bad Spaniels” squeaky dog toy.
Supreme Court
Today, the Supreme Court issued its decision in Nova Chemicals Corp. v. Dow Chemical Co., 2022 SCC 43 regarding the quantification of an accounting of profits as a result of patent infringement. The majority dismissed the appeal with a focus on the ‘non-infringing option’: “a non-infringing option helps courts isolate the profits causally attributable to the invention from the profits which arose at the same time the infringing product was used or sold, but which are not causally attributable to the invention.” The majority also upheld springboard profits, saying, “a portion of such post-expiry profits may be causally attributable to infringement of the invention.” Continue reading Supreme Court