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Archive for the ‘Intellectual Property’ Columns

An Exciting Time in Canadian Competition Bureau Policy – Substantive Guidance on Reverse Payment Patent Settlement Agreements May Be Imminent?

As part of the Canadian Competition Bureau’s revisions to its IP Enforcement Guidelines, some stakeholders have requested guidance on “new” issues of concern in the Competition Law area – including reverse payment patent settlement agreements. Prior to publication of the first Draft Update of the Guidelines (“Phase 1 Update”)[1], the Bureau held a Workshop to consider issues regarding competition and the pharmaceutical industry[2]. Having regard to the high cost of pharmaceuticals ($34.5 billion in 2013), and the recent decisions of the US Supreme Court and European Commission finding that reverse payments are “valid targets for antitrust . . . [more]

Posted in: Intellectual Property

Intellectual Property Cases in the Federal Court: The Judicial Officers

The Federal Court has a primary role in hearing intellectual property proceedings in Canada (See Where Should You Launch Your Intellectual Property Case?). Changes to the composition of the Federal Court, including the number of judges and prothonotaries, have a significant effect on the enforcement of intellectual property in Canada. Several changes are being made to the role of the prothonotaries as well new appointments for judges in the Federal Court.

These changes affect the Court’s ability to manage its workload. The Federal Court has a Practice Notice indicating that where possible, the Court will endeavour to have the . . . [more]

Posted in: Intellectual Property

Can Screamin’ Eagles Co-Exist?

In Canada parties should understand that rights in marks can arise through use of the mark in commerce even without registration. This complicates clearance of marks and is a reason for doing clearance searches to identify any prior users before the adoption of a mark.

What happens when a user of a mark for one category of goods begins to use that mark in another category of goods – in which a second party has a registered mark. Can those uses survive, continue and co-exist when such conduct occurs over a long period of time?

Canada’s Federal Court addressed this . . . [more]

Posted in: Intellectual Property

Do You Think That Patent Is Invalid?

You or your client may come across a patent or patent application and be aware of prior art or have other reasons to believe it is invalid. The patent may have shown up in a patent search, such as a freedom to operate search or be listed in a demand letter sent by the competitor.

Depending on the situation, the competitive situation, and the budget, there are several ways to challenge the validity of a Canadian patent application or issued patent. I recommend involving a patent agent and/or patent lawyer to assist with determining which, if any, option is best . . . [more]

Posted in: Intellectual Property

Norwich Orders and Copyright Trolls

The decision of the Federal Court in Voltage Pictures LLC v. John Doe and Jane Doe, 2014 FC 161, provides insight into the collision of Norwich Orders, means used to identify unknown infringers, and the growing business model of copyright trolls giving rise for the Courts to be more mindful of playing a role in potentially abusive behaviour of the trolls.

The development of this business model has troubled the Courts in the United States and the United Kingdom. In Voltage Pictures the Federal Court sought to address this trend in Canada quoting from Judge Guzman in TCYK, LLC . . . [more]

Posted in: Intellectual Property

First Canadian Antibody Decision of Federal Court Significant for What It Does Not Say

It has been 15 years since the last brand v brand challenge of a biologic patent in Canada. In 2000, Amgen’s recombinant EPO patent (for EPREX, which stimulates red blood cells to treat anaemia) was found valid and infringed by Hoffman’s RECORMON product.[1] In January 2014 the Federal Court once again upheld the validity of certain claims of Abbott’s psoriasis antibody patent that were challenged by Janssen[2].

The Abbott v Janssen decision (“Decision”) provides a somewhat typical patent validity analysis. Mr. Justice Hughes favoured certain Abbott experts who found that Abbott’s discovery of a “very sticky” antibody . . . [more]

Posted in: Intellectual Property

Defining Copyright Infringement

The Supreme Court recently addressed the approach to assessment of copyright infringement in the case of Cinar Corporation v. Robinson, 2013 SCC 73 (CanLII) and thereby provided some important guidance to courts facing similar difficult determinations. 

As a basic principle the public domain provides the rich soil from which new works can be created. The Court reaffirmed that the role of copyright provides “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator” and that copyright does not provide a monopoly over . . . [more]

Posted in: Intellectual Property

Where Should You Launch Your Intellectual Property Case?

When deciding, with your client, to bring an intellectual property lawsuit in Canada, one question that will need to be answered is what court should be used? In many instances, both the Federal Court and the provincial courts have concurrent jurisdiction but depending on the specific causes of action, your choice may be limited to one of the courts and other facts may influence your choice.

Jurisdiction

The provincial ‘superior’ courts have inherent jurisdiction over all causes of action that have not been explicitly provided elsewhere. The Federal Court, in contrast is purely a statutory creation (see the Federal Courts . . . [more]

Posted in: Intellectual Property

Don’t Ignore That Notice!

The case Medos Services Corporation v. Ridout and Maybee LLP 2013 FC 1006 is an example of what happens when the owner of a registered trade-mark ignores a Section 45 notice. 

As a basic premise a registered trade-mark must be used in order to maintain those rights and a procedure exists under Section 45 of the Trade-Marks Act to weed out dead wood from the Register. Upon receipt of such a notice the registered owner has 3 months to provide an affidavit or statutory declaration showing, with respect to each of the wares or services specified in the registration, whether . . . [more]

Posted in: Columns, Intellectual Property

Quebec Court Warns Against “Fishing Expeditions” – Denies U.S. Letters Rogatory (“LR”) Request in Contentious Omega-3 U.S. Patent Litigation

The Defendant in a US patent litigation matter (Aker Biomarine AS, (“Aker”)) recently fell short of meeting the threshold requirements for obtaining permission to conduct a deposition and obtain documents from third parties in Quebec (the University of Sherbrooke and a Quebec Research Center). The US Plaintiff/patentee Neptune Technologies & Bioressources Inc. (“Neptune”) successfully opposed the overly broad Letters Rogatory Request. This recent case provides a clear illustration for US clients of what can easily go wrong when LR Requests are not initially vetted by Canadian counsel – before the US court issues the LR. In a broader context, this . . . [more]

Posted in: Intellectual Property

Punitive Damages and Patent Cases

The patent infringement action between Bell Helicopters and Eurocopter has been a topic of discussion among patent lawyers since the trial decision was released in January 2012. The Federal Court of Appeal recently dismissed the appeal and cross-appeal (Bell Helicopter Textron Canada Limitée v. Eurocopter, 2013 FCA 219) in a lengthy decision covering many hot topics in Canadian patent law.

While the decision has a number of interesting issues, including utility and sound prediction, I will focus on the award of punitive damages.

In general, punitive damages may be awarded when the defendant’s conduct is “in exceptional . . . [more]

Posted in: Intellectual Property

Interesting Example of the Long Shadow of the SCC’s Findings in a “Summary” NOC Case on the Court of Appeal’s Upholding of Sanofi’s Plavix Patent

The FCA has recently adopted an interventionist approach in the area of patent validity in Sanofi-Aventis v Apotex 2013 FCA 186 (“Sanofi 2013”). The FCA overturned the trial court’s findings that Sanofi’s clopidogrel patent was invalid for inutility and obviousness. First, the trial judge was found to have erred in law in his construction of the patent by “reading in” a Promise that the FCA says was not there. Secondly, the trial judge appears to have erred in failing to properly apply the facts to the Sanofi SCC legal test for obviousness, and asked the critical wrong question in determining . . . [more]

Posted in: Intellectual Property