The Canadian Intellectual Property Office (“CIPO”) has recently published two notices for patent examiners relating to patent interpretation[i], and in particular computer-related/business method type patents. These notices were released following a 2011 Federal Court of Appeal decision – CIPO v Amazon, 2011 FCA 328 (“Amazon”). In Amazon the FCA instructed the patent office on how to evaluate a patent application to determine the threshold issue of whether it covers patentable subject matter. The FCA held that patent claims must first be purposively construed before one can evaluate whether the claimed subject matter covers acceptable (ie. patentable) subject matter. . . . [more]

Last month, the United States Supreme Court held in Kirtsaeng v. John Wiley & Sons that it was non-infringing of copyright to import books into the United States that had been legally purchased elsewhere. The decision upheld the “first sale doctrine,” a concept that says once a publisher sells a copy of a work to a member of the public, the buyer is free to do sell or dispose of the copy as they wish. In Canada, the situation is less clear.

The defendant in the United States proceeding, Mr. Kirtsaeng was a student at Cornell University who bought foreign . . . [more]

The impacts of privacy sensitivities continue to expand and affect all manner of technology and other transactions transactions. 

Canada and the United States have a long healthy and constructive relationship in providing assistance to the law enforcement agencies of each country in the investigation of cross boarder criminal activity. Canada has, with the United States and with other countries a series of mutual cooperation arrangements (including Mutual Law Assistance Treaties or MLATs) in place between Canadian and U.S. law enforcement by which criminal and terrorist conduct can be investigated and relevant information exchanged.

Such international cooperation is routine and rarely . . . [more]

There is an obvious inherent tension between competition principles and intellectual property (“IP”), including patents. A recent Competition Bureau inquiry into alleged market manipulation by Alcon provides a good illustration of how these principles can intersect.

By their very nature patents may be considered exclusionary and anti-competitive. The Competition Act (s. 32) specifically empowers the court to prevent use of a patent only if it “unduly” lessens competition. Otherwise there must be “something more” than the mere exercise of patent rights to be anti-competitive. The Competition Bureau has provided enforcement guidelines to evaluate when IP rights may be used in . . . [more]

CIRA, the Canadian Internet Registration Authority, manages the registration of domain names ending in “ca”. It has created a set of rules and procedures, called the Canadian Dispute Resolution Process (or CDRP), for resolving some of the disputes that arise over domain names, particularly cybersquatting. Everyone who registers a dot-CA domain name agrees to abide by CIRA’s rules and procedures.

In a couple of recent dot-CA domain name disputes, the outcome has turned on the timing of the formation of the party complaining about a domain name. It is important that before bringing a domain name dispute that you investigate . . . [more]

The Internet has transformed society in so many ways. Even the ways we find information and the sources we rely upon have been fundamentally transformed. It appears our legal systems need to adapt to this new reality.

In R. v. McKay, 2013 ABPC 13 (CanLII) the Alberta Provincial Court had the occasion to consider these issues in the context of a charge under the Criminal Code. The accused had been pulled over, a breathalyzer was applied and then he was taken to the police station. At the police station he was given a toll free number, to the Yellow . . . [more]

Copyright assignments are often back-dated or retroactive. A Federal Court decision – Harmony Consulting Ltd. V. G.A. Foss Transport Ltd., 2011 FC 340, aff’d 2012 FCA 226 – demonstrates the dangers of such assignments, and two (2) questions anyone relying on such an assignment should ask. . . . [more]

The Canadian generic pharmaceutical industry has recently been successful in invalidating several brand name drug patents on the basis of “The Promise” doctrine. Eli Lilly would like to put an end to this, using Canada’s international treaty obligations under NAFTA.

Can you see the difference?

In the mid 2000s one could start to see Canadian patent cases “turning” somewhat. Before this, the general sense was that a mere scintilla of utility was enough to obtain a patent. However, if the patentee made an explicit and unequivocal “Promise” of a certain use or result, recent cases have held the patentee to . . . [more]

The Federal Court, where most intellectual property litigation takes place has a system for determining costs that differs in many respects from that of the Ontario Court system.

Costs in the Federal Court are generally determined based on a number of discretionary factors, set out in Rule 400 of the Federal Courts Rules, and a table of fixed amounts for steps in the litigation. Judges and Prothonotaries can also order costs on a lump sum basis.

The Tariff

Unlike in the Ontario Courts, the Federal Court Rules include a tariff, Tariff B, which allocates a range of ‘units’ for . . . [more]

Industrial design protection is an often overlooked form of protection that is a poor cousin of Copyright. For historical reasons Canadian law prejudices against certain authors who create designs which can be applied to useful articles. By virtue of Section 64(2) of the Copyright Act, RSC 1985, c C-42, if more than 50 copies of the articles are made by or at the direction of the owner of the copyright in the design then substantial copyright and moral rights protection is lost. Protection may be available under the Industrial Design Act, RSC 1985, c I-9 (IDA), a registry . . . [more]

This column was written by Dominique T. Hussey, L.E. Trent Horne and Edward (Ted) Yoo

In a unanimous decision, the Supreme Court of Canada has provided valuable guidance to patent agents and litigators as to how Canadian patents will be read and enforced (Teva Canada Limited v Pfizer Canada Inc, 2012 SCC 60).

The subject matter of the patent needs no introduction. Sildenafil is the active ingredient in VIAGRA, one of the world's best known pharmaceutical products. There is no mystery or uncertainty as to the reason VIAGRA is prescribed.

Pfizer’s patent, however, was not as . . . [more]

As the Federal Court continues to interpret and apply the 2008 Sanofi SCC obviousness test (Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 (“Sanofi”)), one important step – defining the “inventive concept” – has not always been defined consistently. Inventive concept appears to have taken predominance over claim construction. Inventive concept is a pivotal issue for the court. It sets the bar for exactly what has to be obvious to try – ie. “self-evident” to work. As would be expected, a more complex/advanced inventive concept means an invention is more difficult to invalidate for obviousness. Equally, a . . . [more]