Intellectual Property Weekly Abstracts Alert - Week Of April 2, 2012

Profession:Borden Ladner Gervais LLP

Edited by Chantal Saunders and Beverley Moore


Security for Costs Order Upheld

Fraser v. Janes Family Foods Ltd.

The Prothonotary ordered that security for costs be paid into Court. The Federal Court upheld that decision, with the Plaintiffs arguing they were impecunious. A copy of the Federal Court decision can be found here. A copy of our summary can be found here. The Plaintiffs appealed to the Federal Court of Appeal (FCA), arguing, inter alia, that the rule (s. 416(a)) providing that security for costs may be granted if the plaintiff is resident outside Canada is contrary to the North American Free Trade Agreement (NAFTA) and the Agreement on Trade-Related aspects of Intellectual Property Rights (TRIPS).

The FCA held that it is not clear that the treatment of United States nationals under the rule is different than treatment of Canadian nationals who are not "ordinarily resident" in Canada. However, the FCA held it was not necessary to resolve this issue, as following previous case-law, an international treaty cannot be used to override the clear words used in a statute by Parliament. The rule provides the discretion to award security for costs in certain situations and construing NAFTA and TRIPS to preempt this discretion would give these treaties an effect they cannot have.

The FCA also commented on the Appellant's conduct in the United States regarding sanctions that had been ordered; citing this as another reason the Prothonotary was correct in his original decision. Finally, the Court dealt with the Appellants arguments that they were impecunious. The FCA held that the factual findings were open to the Prothonotary based on the evidence, and that he had made no errors as to the standard of proof required. Thus, the FCA held that there was no error in the Motion Judge's refusal to intervene in the Prothonotary's decision.


Patent Application Allowed on the Basis of Sound Prediction, Rejection as to Overbreadth Overturned

Commissioner's Decision No. 1319

The application relates to genetically engineered transgenic animal models. The application was rejected for overbreadth as the claims refer to mutants that were not specifically exemplified. The final action also raised the issue of utility. The Commissioner of Patents overturned the rejection and recommended that the claims be allowed.

Regarding overbreadth, the Patent Appeal Board (PAB) considered the references cited in the...

To continue reading