Patentability

The View Ahead for Software Patent Applications: USPTO Releases Update to Guidance on Patent Subject Matter Eligibility

This article is cross-posted with permission from Bereskin & Parr. The United States Patent and Trademarks Office (USPTO) has released an updated set of Eligibility Examination Guidelines to provide guidance to examiners on when to reject claimed inventions as ineligible abstract ideas. These guidelines give a sense of what computer-implemented subject matter the USPTO considers […]

Means for Invalidating a Patent: Lessons from the Eon Corp v. AT&T Decision

This article is cross-posted with permission from Bereskin & Parr. It is very important to provide adequate disclosure when using “means-plus-function” claims in a U.S. patent, particularly in the field of software. “Means-plus-function” claims include elements that are defined in a functional (as opposed to structural) manner, such as “means for tying a shoe”, and […]

IP Year in Review 2014 - The Perpetual Motion of IP Law

Giuseppina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Osgoode Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.   2014 was another exciting year in intellectual property (IP) law. […]

US Decision Baaa-d for Inventions Replicating Nature

In Re Roslin Institute, the U.S. Court of Appeals delivered a potential setback to the biotechnology industry when it confirmed that inventions which are identical to those found in nature cannot be patented. Specifically, it denied patent protection to products of the somatic cloning process invented by Campbell and Wilmut, which included Dolly the Sheep. Since Dolly possesses identical […]

Apotex Successfully Invalidates Patent on Nexium

AstraZeneca has been selling Nexium in Canada for 13 years.  It is prescribed to treat ulcers, gastroesophageal reflux disease (GERD) and related diseases. The active ingredient in Nexium is esomeprazole, one of the enantiomers of omeprazole.  Omeprazole is also prescribed to treat these same diseases. Canadian patent no. 2,139,653 (the 653 patent) claims esomeprazole with […]

Alice Corp., Software Patents, and Lighting the Rabbit Hole of Abstract Ideas

It’s often hard to recognize the evolving nature of legal regimes amidst the fast-paced and so-called revolutionary social and technological changes facilitated by digital and networked technologies. Laws, norms, and conventions developed over centuries are being problematized and rethought as new social, technological, and economic realities emerge. Computer software, a technology that’s mainstream adoption is […]

The Hard Decision about Software Patents

On Monday, March 31st, the United States Supreme Court began hearing oral arguments in the case of Alice Corporation Pty Ltd v CLS Bank International. Many hope that this ruling will help bring clarity to the patentability of software and business processes under US patent law.

Intellectual Property Rights in Non-Genetically Engineered Plant Species

In the past, Monsanto has been successful in defending the company's patents concerning the genes and modified cells present in genetically modified (GM) plants in both the United States and in Canada. Are Monsanto's new products going to be a hot topic of debate? Likely yes, but maybe not for the reasons you would expect.

Would a Keyboard by Any Other Name Feel as Sweet? BlackBerry Sues Ryan Seacrest’s Typo

BlackBerry is suing Ryan Seacrest’s iPhone keyboard case company Typo for patent infringement. The suit – which also alleges trade dress infringement, dilution, unfair business practices and unjust enrichment – has garnered headlines in Canada and the US.

China’s Bitter Medicine for Gilead: SIPO Cancels Viread Patent

Last August, China's State Intellectual Property Office (SIPO) invalidated the core patent for Gilead Sciences' flagship drug Viread (as was reported by IPR Daily and a number of other news sources).  This landmark ruling comes on the heels of recent changes to China's compulsory licensing scheme for pharmaceutical products.  This quick-step of legislative reform followed by the […]