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Archive for the ‘Intellectual Property’ Columns

Cloud Computing Advantage Under Canada’s Anti-Spam Law

The communications prohibitions in Canada’s sweeping Anti-Spam Legislation (CASL) prohibit, unless exempt, a person from sending a “commercial electronic message” without the consent of the recipient. On January 15, 2015, further prohibitions relating to the installation of computer programs came into force.

CASL imposes significant compliance hurdles for traditional software providers due to its regulation of programs “installed” on a computer system. However CASL does not appear to regulate software-as-a-service to the same extent, and so CASL appears to favour the cloud-computing service business model and supports the expanded adoption of cloud computing in Canada.

Broadly, the software prohibitions in . . . [more]

Posted in: Intellectual Property

Patent Utility Update in Canada – Clarity May Not Be Explicitly Promised

In the past five years, the Canadian Federal Court has invalidated several patents based on an arguably “technical” deficiency – the “Promise/utility” requirement.

The most recent trend however suggests an increasing reluctance to both find an “elevated Promise”, and require a patentee to meet such a Promise. Instead the Federal Court of Appeal in late 2014 reinforced a “pro-patentee” approach by applying the “rule in favour of saving an invention rather than invalidating it” and is now consistently holding that Promises must be “explicit” ie. supported by clear and unambiguous . . . [more]

Posted in: Intellectual Property

Liability and Remedies – Bifurcation in IP Cases

Bifurcation, or the splitting and deferring of the resolution of issues, is common in intellectual property proceedings. If a case is bifurcated, the issue of liability is determined first, followed by the remedies, but only if necessary.

In the example of a patent case, the first part of the proceeding would focus on the validity and infringement of the patent to determine whether the defendant has infringed the patent. If there is infringement, in the second part, the amount of monetary relief is then determined.

The Rule

The Federal Courts Rules, applicable in the Federal Court where most IP cases . . . [more]

Posted in: Intellectual Property

Start of the Electronic Age?

In late January, the Federal Courts Rules were amended to permit the maintenance of court files in electronic form. The changes to the Rules, for the first time, removed the requirement that the official court docket for a proceeding be kept in “paper”. These changes open the door to improved electronic service and filing of court documents in the Federal Court.

Justice Brown’s comments regarding the Ontario Court, seem applicable, “Consign our paper-based document management system to the scrap heap of history and equip this Court with a modern, electronic document system.”

The changes to the Federal Court Rules . . . [more]

Posted in: Intellectual Property

Not Just the Best Policy, but Now the Law: The Impact of the Duty of Honest Contractual Performance on Intellectual Property License Agreements

The Supreme Court of Canada recently decided a contractual dispute, Bhasin v. Hrynew, involving businesses selling educational savings plans (ESPs). In doing so, the Court recognized a duty of honest contractual performance. While the Bhasin decision did not concern intellectual property, the Court’s ruling has implications for all contracts, including intellectual property (IP) licensing agreements.

Previously, Canadian law was divided as to whether parties to a contract were required to discharge their contractual obligations honestly or whether the duty of good faith only applied to specific types of contracts, e.g. employment agreements. The Supreme Court’s ruling in Bhasin recognizes . . . [more]

Posted in: Intellectual Property

Overhaul of Intellectual Property Legislation

In a series of initiatives, legislation addressing intellectual property is being amended. The Patent Act, the Trade-marks Act, the Copyright Act, the Industrial Design Act and the Plant Breeders’ Rights Act have been amended or are about to be amended. While most of the changes are procedural rather than substantive, the changes will likely have a lasting effect on Canada’s role in the international intellectual property system.

Many of the changes effect the filing requirements in Canada to standardize or integrate the process with international systems. For example, for trademarks, the Madrid Protocol allows an international trademark . . . [more]

Posted in: Intellectual Property

Who Is the Inventor?

Enthusiastic entrepreneurs consult with patent agents about the protection of their new product. Often a successful team for an entrepreneurial business includes someone with technical skills, someone with marketing skills, someone providing business direction as well, of course, with one of more persons providing financial backing. Often all want to be named as inventors on a patent application. A key question which comes up is to identify who are the inventors.

That question was answered by the Federal Court in Drexan Energy Systems Inc. v. Canada (Commissioner of Patents) 2014 FC 887, a case where four people worked together on . . . [more]

Posted in: Intellectual Property

Re-Litigation by a Patentee With a Different Party – Has the Federal Court Been Consistent in Its Approach?

Over the past few years the pharmaceutical marketplace has seen an increase in patent “re-litigation” (where a patentee is involved in a second case against another generic). Following the Federal Court of Appeal’s warning to losing brands that they must put their best foot forward in case1[1], and at the same time, arguably permissive attitude regarding new generics in case2, the Federal Court continues to grapple with how to fairly deal with re-litigation. One notable hurdle is the unusual procedural regime of the Notice of Compliance (“NOC”) Regulations. NOC proceedings are designed to result in merely preliminary type . . . [more]

Posted in: Intellectual Property

Missing or Wrong Inventors?

Occasionally, patent applications are filed or issued identifying the wrong inventors, or the allegedly wrong inventors. This can arise due to inadvertence at the time of filing or from disputes between inventors, claimed inventors and owners of the intellectual property.

All patent applications must identify the inventor or inventors of the invention being claimed. This is typically done in the petition for the patent or equivalent under the international Patent Cooperation Treaty rules at the time of filing.

The identity of the inventors is important because ownership of the patent flows from the inventors, usually through an employment arrangement or . . . [more]

Posted in: Intellectual Property

Guidance on Neighbouring Rights

Neighbouring rights rarely get much judicial review so the case of Re: Sound v. Fitness Industry Council of Canada 2014 FCA 48 gives some insight as to this regime.

Neighbouring rights[1], rights near to copyright, in this context are rights to “equitable remuneration” in published sound recordings (performers and makers) for the performance in public or the communication to the public by telecommunication in Canada of their recordings under Section 19 of the Copyright Act, R.S.C. 1985, c. C-42. Re:Sound is a not-for-profit collective society authorized under the Act to administer the performance rights of performers and . . . [more]

Posted in: Intellectual Property

3D Printing and Intellectual Property

Last month, Home Depot announced they would start selling 3D printers in some of their stores. This seems like the next step in the consumerization of technology that began as exclusively for high end users such as automotive manufacturers and architects but is now becoming useable for almost anyone. Even the Toronto Public Library has 3D printers “even for beginners to use.” What effect will the increasing use of 3D printing technology by consumers have on intellectual property and what effect will intellectual property have on the technology?

3D printing is generally a term for additive printing where material is . . . [more]

Posted in: Intellectual Property

World Wide Injunction Orders Editing of Google Search Results

What is a Court to do when faced with repeated breaches of Court orders by a virtual entity? In the case, Equustek Solutions Inc. v. Jack, 2014 BCSC 1063, the decision of the BC Supreme Court was to order an innocent third party, Google Inc., to remove the wrongdoer’s website from further search results – anywhere.

The case has far reaching implications on the ability to enforce injunctions on wrongdoers in cyberspace, on the role of innocent third parties such as Google, and on the possibility of the Court process being used as an avenue for censorship. The decision has . . . [more]

Posted in: Intellectual Property