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Archive for the ‘Intellectual Property’ Columns

Competition and Tech Patents

On March 31st, the Canadian Competition Bureau released new Intellectual Property Enforcement Guidelines (IPEGs). These guidelines directed to explain the Bureau’s approach to enforcing competition law with respect to intellectual property, particularly patents.

Patents are an exclusionary right; the owner has the right to exclude others from practicing the claimed invention (see Section 42 of the Patent Act) as an incentive for innovation and new technology. This exclusivity can, in some circumstances, run counter to the goals of competition law to maintain vigorous rivalry among firms. The courts have looked to “something more” than merely exercising or . . . [more]

Posted in: Intellectual Property

Software as a Service Is a Good?

There has been a revolution in how software is delivered to customers. Traditionally software was licensed in a physical form. The customer traditionally received a copy of the computer program in a tangible form (disk or downloaded) and installed the software on its computer and operated the software in that manner. This also meant that the customer had to obtain and either install updates from time to time directly, or by virtue of automatic updates installed by the software supplier.

The revolution is a change to the business model. The new model has the software supplier maintain the software on . . . [more]

Posted in: Intellectual Property

Administrative Breaches and Patent Validity

The Federal Court recently held, in Apotex Inc. v. Pfizer Inc. et al., 2016 FC 136, that there was no legal basis to invalidate an issued patent due to non-patent of an administrative fee while the application was pending. This result arose regarding a patent where an incorrect final fee was paid many years earlier during the patent pendency.

Through out the patent process, multiple fees are required by specific deadlines. These fees include annual maintenance fees, examination fees, and final fees at the time the application is granted. The Patent Act and Patent Rules set out requirements . . . [more]

Posted in: Intellectual Property

Report From USGPhA 2016 Annual Meeting: Increasing Complexity of Generics Industry – No Longer Just Generics

The annual US Generic Pharmaceutical Association meeting in February, despite being held in Orlando, was generally not a sunny affair. Instead the central theme focused on “warning” signs that require attention from industry players in their dealings with stakeholders including Congress, FDA and the public. An “Uber-like” disruption is coming in healthcare. At the same time, Biosimilars continue to represent both uncharted successes and challenges. Regulatory approval and physician/patient education are key concerns. The standard message of “generics are the solution to increasing costs, not the cause”, and the need for a global business model, were recurring themes.

A few . . . [more]

Posted in: Intellectual Property

Not So Fast, Not So Much – Data Protection for Cell Tower Traffic Data

In the context of criminal investigations police in Canada may obtain “tower dump” production orders. These are orders requiring the applicable cellular telecommunications providers to disclose all records of cellular traffic through a particular cell tower over a specified time period. In R. v. Rogers and Telus, 2016 ONSC 70, Justice Sproat noted that “Every year such orders require cellular providers to produce the names and addresses of hundreds of thousands, if not millions, of subscribers; who they called; who called them; their location at the time; and the duration of the call. These orders may also require that . . . [more]

Posted in: Intellectual Property

Summary Resolution of Intellectual Property Cases

If you have decided to go to court to assert your rights, or someone has taken you to court, there are several summary options, short of a conventional trial, that may save time and money yet still get the result you are interested in.

In 2009 the Federal Courts Rules were amended to expand the availability of summary judgment and summary trial options. The number of proceedings that have used or are using these provisions has expanded in recent years, perhaps in part as a response to greater discussion of summary options in the superior courts and by the Supreme . . . [more]

Posted in: Intellectual Property

Bypassing a Subscription Paywall Violates Technological Protection Measure Provisions in Copyright Act, Negates Fair Dealing Defence

An Ontario court recently ruled in 395804 Ontario Limited c.o.b. as Blacklock’s Reporter v. Canadian Vintners Association and Dan Paszkowski that circumventing a subscription paywall to access a news article violates the technological protection measure (TPM) provisions in Canada’s Copyright Act, and negates the fair dealing defence to copyright infringement available under Canadian law.

The plaintiff, Blacklock, published a subscription-based newsletter which used a paywall to restrict access to paying subscribers. The defendants (collectively the “CVA”), sought a copy of an article from the plaintiff’s website. The CVA obtained a copy of the article by obtaining another subscriber’s assistance, . . . [more]

Posted in: Intellectual Property

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