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Archive for the ‘Intellectual Property’ Columns

Wishing You Happy Holidays … if Canada’s Anti-Spam Law Permits

The holiday season is an important season to focus on good will and the profound messages that the holidays celebrate. Many organizations use the holiday season to communicate with clients and associates to share that sentiment. For example, an organization may wish to invite individuals to a holiday-themed party, or simply send a seasonal greeting. What many organizations may not have considered is whether these benign-seeming messages will attract seven-figure liability.

Canada’s Anti-Spam Law, more commonly known as CASL, generally provides that a sender must obtain the consent of a recipient before sending a “commercial electronic message,” or “CEM,” to . . . [more]

Posted in: Intellectual Property

Does Double Patenting Need New Rules?

Patents have been described as a quid pro quo – in return for disclosure of the invention, the inventor gets a time limited exclusive period to practice the invention. There are a number of rules and restrictions that restrict the ability to extend patent rights – i.e. get more than the patent owner bargained for, including ‘double patenting’ but some of the earlier concerns about extending patent protection through double patenting no longer apply under our current Patent Act which requires that patents and any divisional patents expire on the same day.

Double patenting is a restriction on getting multiple . . . [more]

Posted in: Intellectual Property

Seven Principles to Follow When Contemplating Comparative Advertising in Canada

While comparative advertising is common Canada, that does not mean that Canadian laws allow a “free for all” approach. Competitors who feel that their business has been hurt by a comparative advertisement can complain to the appropriate regulator (e.g. the Competition Bureau, Health Canada, the Canadian Food and Inspection Agency), file a trade dispute with Advertising Standards Canada, or initiate a lawsuit in the appropriate Canadian court. The legal and public relations consequences can be significant.

The Canadian case law on comparative advertising is often complex, contradictory and should be examined carefully when reviewing a proposed comparative advertising concept before . . . [more]

Posted in: Intellectual Property

9th Circuit Confirms Duties for Posting DMCA Takedown Complaints

As Canada begins to settle in with the new “notice and notice” provisions under the Copyright Act (Canada) which came into force January 2, 2015 copyright owners in Canada still need to address infringing content posted on websites hosted in the United States.

Lenz v. Universal Music Corp., Nos. 13-16106, 13-16107, 2015 WL 5315388 (9th Circuit Sept. 14, 2015) adds additional work by a copyright owner before they can use the US notice and takedown remedy.


In the 1990s the debate was whether internet intermediaries, such as ISPs, should be liable for infringements made on their servers . . . [more]

Posted in: Intellectual Property

Interlocutory Injunctions in the Federal Court

For the first time in recent memory, the Federal Court has issued an interlocutory injunction in an intellectual property proceeding. In April, the Federal Court of Appeal upheld the injunction issued to Rickett Benckiser LLC.

The standard test for issuing an injunction is set by the Supreme Court of Canada in RJR MacDonald which requires the moving party establish:

  • a serious issue to be tried;
  • irreparable harm will result to the moving party if the relief is not granted; and
  • the balance of convenience favours the moving party.

Of these three parts to the test, finding ‘irreparable harm’ is typically . . . [more]

Posted in: Intellectual Property

Federal Court of Canada Issues New Case Management Practice Notice Affecting IP Litigation

The Federal Court recently issued a practice notice entitled Notice to the Parties and to the Profession – Case Management: Increased Proportionality in Complex Litigation before the Federal Court. The notice affects all complex litigation before the Court, including intellectual property matters. The notice is designed to achieve increased proportionality in Federal Court proceedings, and introduce efficiencies which should save litigants both time and money. The changes should also make it easier for an action to reach trial within two (2) years from the filing of the Statement of Claim, an objective communicated in a previous notice from the . . . [more]

Posted in: Intellectual Property

Privilege for Patent and Trademark Agents

As a result of Bill C-59, when passed, clients will enjoy a statutory privilege in their client communications with Canadian patent and trademark agents.

This will provide Canadian clients who use patent and trademark agents, whether or not also lawyers, more secure protection of their confidential communications. In Canada the law had been that non-lawyer patent agents or trademark agents do not benefit from professional legal privilege. As to patent agents see Lumonics Research Ltd. v. Gould et al. (1983), 70 C.P.R. (2d) 11 (FCA). As to trademark agents see Visa International Service Assn. v. Visa Travel International Ltd. (1983), . . . [more]

Posted in: Intellectual Property

Reviewing CIPO’s Procedural Decisions – Federal Court’s Judicial Anxiety to Uphold Patents

In conducting the public function of granting Patents, CIPO’s actions are often called into question in private disputes, as well as by individual applicants. Although the “high stakes” of patent litigation may often create novel arguments to invalidate a particular patent, broader policy consequences ultimately arise as to how to temper CIPO’s independent administrative functions with the ability of third parties to raise administrative noncompliance as a ground of patent invalidity. The court’s predilection to review, at the request of individual applicants, administrative type decisions regarding fees, may be contrasted with judicial reluctance to revisit CIPO’s actions once a patent . . . [more]

Posted in: Intellectual Property

Privilege for Patent and Trademark Agents

More changes are coming to intellectual property legislation as part of the latest federal budget announcements. Changes have been announced for the Patent Act, the Trade-marks Act, the Copyright Act and the Industrial Design Act.

These changes follow an overhaul of the intellectual property legislation last year (see previous article) to make Canada’s legislation more consistent with international treaties. The implementing regulations from last year’s changes are still being developed with implementation not expected until late 2016.

The latest changes were announced in the Budget in April 2015 and the specific proposed amendments included in . . . [more]

Posted in: Intellectual Property

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