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Archive for the ‘Intellectual Property’ Columns

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

Fixing Our Broken Copyright System

Copyright law seeks to regulate creativity. Nowhere is this regulation more apparent, or specific for that matter, than at the level of setting tariffs for copyright uses as set by the Copyright Board and administered by collective societies. As illustrated most recently in the Access Copyright v. York University decision, this system of collective administration is horribly broken. It is time to get creative about how we regulate creativity.

This is how copyright works. Authors (and their intermediaries) are compensated for their creations through a tradeable commodity known as copyright. The ability of some authors to make a living depends . . . [more]

Posted in: Intellectual Property

Summer of Consultations

Almost all aspects of intellectual property law are the subject of public consultations this summer and fall. Intellectual property lawyers and their clients were busy reviewing the upcoming changes, providing important comments and planning for their implementation. There are lots of changes to be aware of for clients building, maintaining or monitoring intellectual property rights.


A full replacement of the Patent Rules (link) was proposed to implement the Patent Law Treaty which standardizes some procedural requirements of the patent process. The Patent Rules provide the regulatory implementation details for the Patent Act and define most of the . . . [more]

Posted in: Intellectual Property

Europe’s Data Protection Reform Raises the Bar

With the advent of computer databases in the early 1970s, there was a general uneasiness about the power of the state becoming overbearing. The concern about individual privacy centred on the potential for governments to collect and process a vast amount of information about its citizens on a scale only imagined in sci-fi before. Appropriate safeguards were enacted, even if legal uncertainty over government department’s power to share data with each other became the major obstacle in completing e-government projects. (The Indian Supreme Court’s finding of privacy as fundamental right in response to the government’s compulsory biometric identity card system . . . [more]

Posted in: Intellectual Property, Legal Information

Statutory Interpretation as Policy Development

Most lawyers and judges would cringe at the notion that courts develop policy when they interpret statutes. The legal profession indoctrinates that the role of the legislature is to enact policy through legislation and that it is for the courts to apply that law to resolve individual disputes. You would never hear a lawyer make an explicit appeal to policy when submitting statutory interpretation arguments before courts. Rather they invoke the intention of the legislature as the authority for their position. That the legal profession indulges in the fiction of a true or certain legislative intent in most cases speaks, . . . [more]

Posted in: Intellectual Property

Cyber Security – When Social Engineering Fraud Is Not Covered Under Your Insurance Policy

We live in an age of escalating cyber security threats. Many intrusion threats are social engineering attacks, which seek to gain entry to an organization’s computer systems via its personnel and not a hack to the computer systems. While not technical in nature these attacks can effect substantial harm on an organization and need to be taken as seriously as the technical attacks.

A classic risk mitigation step on every organizations checklist is to implement thoughtful internal controls with appropriate checks and balances to seek to prevent fraud.

Another classic risk mitigation steps on every organizations cyber perils checklist is . . . [more]

Posted in: Intellectual Property

Personal Liability Under Canada’s Anti-Spam Law

Under Canada’s Anti-Spam Law (“CASL”) not only may a corporation that fails to comply be liable to pay a monetary penalty but personal liability may also arise. Section 31 provides that “An officer, director, agent or mandatary of a corporation that commits a violation is liable for the violation if they directed, authorized, assented to, acquiesced in or participated in the commission of the violation, whether or not the corporation is proceeded against”.

An example of application of Section 31 is the case of Mr. Halazon and TCC reported by the Canadian Radio-television and Telecommunications Commission (“CRTC”) in June . . . [more]

Posted in: Intellectual Property

Patent Pleading Particulars

In patent infringement litigation, sufficient particulars of how an infringer infringes a patent must be included in a patentee’s pleading. How much detail is required? In a recent Federal Court decision, the court struck the statement of claim and dismissed the case because not enough details of how the defendant infringed each of the asserted claims. In Mostar Directional Technologies Inc. v Drill-Tek Corporation et al., 2017 FC 575, on a motion to strike brought by a defendant, the Prothonotary struck the pleading and dismissed the case on the basis the statement of claim pleaded no material facts . . . [more]

Posted in: Intellectual Property