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Archive for the ‘Intellectual Property’ Columns

Mandatory Breach Notification Across Canada

By Order in Council 2018-0369 on March 26, 2018, mandatory breach notification under the federal Personal Information Protection and Electronic Documents Act (PIPEDA), comes in force November 1, 2018 for to all entities subject to its jurisdiction.

The PIPEDA rules follow Alberta’s leadership, which has had mandatory breach notification for 8 years. In Canada, provincial health privacy laws in Ontario, New Brunswick and Newfoundland and Labrador also contain reporting requirements. Most US states have mandatory breach notification requirements. It is recognized that notification of the affected individuals is a key factor in mitigation of risk in instances of cyber . . . [more]

Posted in: Intellectual Property

Number Three Million

In the first days of April, the Canadian Patent Office announced that it had allocated patent application number three million. This was the one millionth patent application since the ‘New Act’ Patent Act came into force in 1989.

Over the last several years, approximately 35,000 patent applications have been filed per year in Canada. The years with the highest annual filings were 2006 and 2008 when approximately 42,000 patent applications were filed.

The numbering for patent applications was restarted to two million starting when the ‘New Act’ came into force in October 1, 1989 for patent applications filed after that . . . [more]

Posted in: Intellectual Property

Five Ways to Make Law School More Rigorous and Engaging

Next year will be year 30 since I graduated from law school. It will also mark 15 years since I began teaching law. What is perhaps most remarkably similar about both experiences is how little curriculum design and teaching methods have changed over the course of this time. Sad to say (and even harder to admit) is that law school is often neither rigorous in its methods nor very engaging the content it offers.

The format of a typical course, from a student perspective, is to read through a punishing amount of turgid prose found in judicial decisions, passively listen . . . [more]

Posted in: Intellectual Property, Legal Education

Cyber Security – Spear Phishing Covered Under Insurance Policy Where Code Manipulated

Increasingly insureds faced with cyber fraud losses are going to the courts to interpret their policies. In The Brick Warehouse LP v. Chubb Insurance Company of Canada, 2017 ABQB 413, and in Taylor & Lieberman v. Federal Insurance Company, 2017 WL 929211 (March 9, 2017 9th Cir.), fraudulent emails, as part of a social engineering attack, were sent to company employees who acted on them transferring money from the insured’s account. In both cases courts held that coverage under the Fund Transfer Fraud policy was denied as the victim knew or consented to the instructions given to its bank . . . [more]

Posted in: Intellectual Property

Patent Term Adjustments Come to Canada

Patents granted in Canada based on patent applications filed in the last couple of decades have been given terms of exclusivity of twenty years. The twenty year term starts from the date the patent application was filed in Canada, even if it takes several years to be examined and granted by the patent office or if the underlying products take time to be approved by the regulatory agencies.

That has now changed as part of compromises made during the negotiations for CETA, the trade agreement with Europe. Amendments to the Patent Act and implementing regulations came into force in September . . . [more]

Posted in: Intellectual Property

The Saga of the Canada’s “Making Available Right” in Three Acts

Act One

Our opening scene begins with the internet wreaking havoc on a peaceful copyright countryside where copying and performing are distinct activities that never mix. The internet is changing the way works are distributed for consumption so that now they can be both performed (e.g. streamed) and copied (i.e. downloads) online. Moreover, pre-internet language of one of the performance rights – the telecommunication right – is broad enough to include both activities. The more foreboding menace is that the internet has facilitated widespread piracy through peer to peer networks (P2P). Partly because of the ambiguous nature of these rights . . . [more]

Posted in: Intellectual Property

Electrical Infrastructure Standards Updated to Meet Cyber Security Threat

A quote famously attributed to then FBI Director, Robert Mueller, in March 2012 advised that: “There are only two types of companies: those that have been hacked, and those that will be”.

With the rapid increase in the current plague of cyber attacks, a key issue for regulators continues to be the protection of critical infrastructure. In recent years, various US regulatory agencies have established (and periodically update) standards to improve the ability to detect, mitigate and respond to the increasing cyber security threats to critical infrastructure. Canadian regulatory agencies and industry participants, particularly in sectors where there are cross . . . [more]

Posted in: Intellectual Property

Trade Secrets – the Other Intellectual Property

Alongside the traditional forms of registerable intellectual property managed by intellectual property offices, patents, trademarks, copyright and industrial designs (and integrated circuit topographies), one of the most valuable forms of intellectual property for many businesses is trade secrets.

Trade secrets encompass almost anything of a confidential nature that can provide a competitive advantage. Trade secrets include know how, processes, customer/supplier lists, formulas, processes and methods. Trade secrets are not registered with any government authorities but can be maintained indefinitely.

To be preserved, trade secrets have to be kept confidential, This is typically done through a combination of physical, technological and . . . [more]

Posted in: Intellectual Property

The Dickensian World of Music

The pittance received by most musicians through modern distribution formats is hardly news. Records sales have long tanked and online streaming – the trending means of music consumption – is famous (see here and here for example) for paying out a fraction of a penny per listen. By one US estimate, it takes over 172,000 plays per month for an artist to make a living wage. The upshot is that you need to go big or go home – or at least tour a lot. In what follows, I will explain the financial side of the business in Canada, . . . [more]

Posted in: Intellectual Property

Copyright in Seismic Data

The seismic industry is of considerable significance to Canada’s oil and gas business. In Geophysical Service Incorporated v Encana Corporation, 2016 ABQB 230 the Alberta Court of Queen’s Bench had an opportunity to assess both claims to copyright in seismic data and the power of certain regulatory boards to release copies of such data to the public.

The Court of Queen’s Bench found seismic data was protectable under Copyright law but also found that the conduct of the applicable boards under the legislative schemes authorized their conduct and legitimized their dealing with the copyright works. The decision pertaining to . . . [more]

Posted in: Intellectual Property

Canada’s Patented Medicines Board Leans Heavily on Its Consumer Protection Mandate, and Uses “The Ends Justify the Means” Approach to Lower the Price of an Orphan Drug

The Patented Medicines Prices Review Board (“Board”) recently concluded a 7 year saga regarding its evaluation of the price for Soliris – Alexion’s admittedly breakthrough drug for rare blood disorders. This is the first Board decision dealing with an orphan drug. The Decision aptly illustrates that using the traditional statutory/regulatory framework for patented medicines pricing to evaluate Soliris (which has gained notoriety as the world’s most expensive drug) may be like fitting a square peg into a round hole. The Soliris story provides a rare glimpse into the inner workings of the quasi-judicial price regulating body. Notable highlights include: the . . . [more]

Posted in: Intellectual Property

Inventive Concept and Obviousness

One of the most difficult concepts to define in patent law is the inventiveness or obviousness of an invention. To be valid, a patent must have claims directed to an invention that is non-obvious – i.e. is inventive.

Determining whether an invention obvious, at what point in time, to whom, and with what level of effort, all raise complicated evidentiary and legal issues that often have to be analyzed as part of patentability and validity opinions or at trial.

In 2008, the Supreme Court directly addressed the obviousness analysis by describing a four part analysis (Apotex Inc. v. Sanofi-Synthelabo . . . [more]

Posted in: Intellectual Property