1. by including the declaration in an application as originally filed, provided that the subsequent application is filed within the above-noted six-month period;
2. by amending an application to include the declaration, provided that the amendment is made within the six-month period;
3. by filing a separate declaration in respect of an application at any time within the six-month period.

The Trade-marks Act does not require that the number of the earlier application be included in the priority claim.   Nonetheless, the Office has determined that this information should be available to the public.  Therefore where a priority declaration does not include the number of the earlier application, the Office will require the applicant to either provide the Office with the number or submit a certified copy of the earlier application.

If an error is made with respect to the date or country of filing of the earlier application, the error may be corrected at any time within the six-month priority period. After this period,  no amendment will be permitted to the date or country indicated in the declaration on the basis that such an amendment would be inconsistent with the Act.

If an error is made with respect to the number of the earlier application, such error may be corrected at any time before registration of the mark.

Finally, there is no requirement that the specific wares or services in respect of which priority is claimed by identified in the priority declaration.  The Office deems it to be sufficient if the declaration indicates that the priority application was filed for use in association with the same kind of wares or services.   If, however, an applicant chooses to limit the priority declaration to wares only or to services only, changes to these limitations may only be made within the six month priority period.  After the expiry of the six-month period, no amendment to remove any such limitation will be permitted since it would be considered to be the making of a new priority declaration outside of the time limits permitted by the Act.

The US Court ruled that business methods are eligible subject matter under US patent law but declined to accept the US Federal Circuit’s machine-transformation test as the exclusive test for the Section 101 determination.

To summarize, the US Supreme Court decision has the following implications :

a) business methods are patentable subject matter;

b) software is patentable subject matter; and

c) the Federal Circuit’s “machine-or-transformation” test is not the definitive.

While this decision means that it will likely be less difficult to procure software patents, we strongly recommended having claims in your patent application that cover computer systems and/or servers if you have a software aspect to your invention.

Most of the Supreme Court’s opinion (16 pages) is supported by 5 votes, and other parts are supported by only 4 votes.

The following language is supported by a majority of the US Supreme Court:

“Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

“And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method pat-ents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.”

To read the full opinion, click here:

http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

Please do not hesitate to contact us should you have any questions about the Bilski decision.

The use of trade-mark symbols is not mandatory in Canada, however it is strongly recommended as these symbols provide public notice that you are using a word(s) or design as a trade-mark, or that you have registered your trade-mark.

Keystroke shortcuts for these symbols are as follows:

To create the Trade-mark symbol ™,  hold the Alt key and type 0153.

To create the Registered symbol ®, hold the Alt key and type 0174.

For further information on proper trade-mark symbol use, please do not hesitate to contact us.

The proposed practice notice appears to have been drafted in response to the Opposition Board decision in Allergan Inc. v. Lancôme Parfums and Beauté & Cie, 64 C.P.R. (4th) 147, which has been interpreted by some as imposing the requirement that a mark must have been used abroad “as of the date of filing in Canada” in order for a Section 16(2) claim to be valid.  However, in the Allergan case the applicant did not file any evidence of use whatsoever,  nor were there any arguments filed with respect to this issue.   The Hearing Officer simply stated that the material date for considering Section 30 grounds of opposition is the filing date of the application.  Therefore, the matter has not been fully analyzed by either the Trademarks Opposition Board or the Federal Court, and the relevant sections of the Act make no mention that foreign use as of the Canadian filing date is a requirement.

If  an Applicant asserts “use and registration abroad” in the original application, it follows that use of the mark must have commenced as of the Canadian filing date.  However, if a Section 16(2) claim is added after filing, or if the applicant asserts a foreign application rather than a registration (and must therefore “perfect” the claim by filing proof that the application proceeded to registration abroad), then arguably use of the mark may occur after the Canadian filing date, or in other words at the time that the foreign “registration” is asserted.

FICPI and IPIC were amongst those who submitted comments with respect to the proposed practice notice.

Effective March 11, 2010, the Trade-marks Office will only grant a single 6-month extension of time to respond to an Office Action.   This means that all issues raised by the Office will now have to be  addressed in timely manner or else there is a risk that the application may be refused.

The new Practice Notice outlines some exceptions to the new rule, including cases where a confusing mark has been cited and the applicant has commenced either expungement or opposition proceedings against the cited mark, or where the applicant has relied upon a foreign application and it has not yet matured to registration.

For further information about the new Practice Notice or any other trade-mark matter, please contact us.

The affiliation between the two IP boutique firms will ensure not only the continued high level of service you have come to expect from both firms, but will also allow us to increase our service offerings for our clients.

BRION RAFFOUL is a patent boutique firm with a combined experience of 35 years in the field of patents and industrial designs. With four principals specializing in various technologies from hi-tech and mechanical to chemistry and biotech, BRION RAFFOUL is well placed to provide assistance with respect to all of your clients’ patent and industrial design matters.

PAULA CLANCY is a trademark lawyer and agent with 15 years of experience in trademarks and corporate/commercial law. A recipient of the Ottawa Business Journal’s Top Forty Under 40 award which recognizes an elite group of business people under the age of 40 who are committed to business excellence, professional expertise and community giving, PAULA brings a wealth of professionalism, experience, and knowledge to her clients as well as a commitment to excellent client service.