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Archive for the ‘Intellectual Property’ Columns

Federal Court Provides Guidance on Computer-Implemented Inventions

In a recent decision, the Federal Court was asked to instruct the Canadian patent office on the proper framework for assessing whether inventions are patentable subject matter. The court held that the three part test proposed by the Intellectual Property Institute of Canada (IPIC) that includes asking whether the construed claim as a whole consists only of a mere scientific principle or abstract theory that should be rejected as unpatentable, or a patentable practical application that may employ a scientific principle of abstract theorem.

This decision, Benjamin Moore & Co. v. Canada (Attorney General), 2022 FC 923, arose . . . [more]

Posted in: Intellectual Property

Retailer Settles CASL Violation Allegations for $200,000

On December 6, 2021, Gap Inc. (Gap) entered into an undertaking under Canada’s Anti Spam Law (CASL) to address allegations that it violated CASL.[1]

The undertaking resolves the allegations against Gap and its subsidiaries Banana Republic and Old Navy. Alleged were that Gap (and its subsidiaries) had sent commercial electronic messages without the consent of the recipients. A further allegation was that the messages did not include an unsubscribe mechanism that could be readily performed.

The terms of the undertaking require Gap to commit to updating its compliance program addressing the sending of commercial electronic messages. Elements of a . . . [more]

Posted in: Intellectual Property

Indemnity Claims in Federal Court IP Disputes

As a statutory court, the Federal Court only has the jurisdiction provided to it under federal legislation, which includes shared and exclusive jurisdiction in the area of intellectual property. In 2020, the Federal Court of Appeal concluded that the court has jurisdiction to handle contractual issues touching on intellectual property. A recent reported decision has applied this to indemnity claims against third parties.

When determining liability for infringement of patent, trademark and copyright, the intention of the defendant is typically not relevant. A party that uses an infringing product may still be liable for patent infringement even if they merely . . . [more]

Posted in: Intellectual Property

And Now the Driverless Keyboard

We appear to have crossed another great divide in artificial intelligence. It is not just the constant shuffle of driverless cars in my Silicon Valley neighborhood on their endless driving lessons. Nor is it the machine learning gains in diagnostic accuracy that exceed those so expertly trained in radiology and dermatology. Those are visual advances in machine learning. This time it’s language.

Steven Johnson, in a marvelously well-done article in the New York Times Magazine, sets out what machine learning is making of writing. It is the driverless car equivalent of the keyboard. Just feed in your destination and it . . . [more]

Posted in: Intellectual Property, Legal Publishing, Legal Technology

Who Can Sue for Copyright Infringement?

Case management Judge Trent Horne of the Federal Court recently said “The Copyright Act is, at the risk of understatement, complex.”[1]

His case serves to illuminate several key points of that complexity. Generally, copyright owners need to be added as parties to a lawsuit or their not being added has to be justified. Secondly, the pleadings must satisfy the Court that a licensee has the right to sue.

The starting point is that a copyright owner can sue a defendant for copyright infringement and the owner would generally be a party to that lawsuit.

The status of a licensee . . . [more]

Posted in: Intellectual Property

Patent Infringement and Prior Use Rights

In 2018, the Patent Act was amended to expand the scope of the “Prior Use” exception to patent infringement. This exception declares acts not to be an infringement of a patent if a person had done the same act prior to the claim date of a patent. Basically, if someone is doing something prior to the filing of a patent, they can continue to do what they were doing. In the recent Federal Court decision, Kobold Corporation v. NCS Multistage Inc., 2021 FC 1437, the Court had the first opportunity to consider the amended prior use exception.

Prior . . . [more]

Posted in: Intellectual Property

Time for Canadian Leadership on the TRIPS Waiver

The World Trade Organization (WTO) is continuing to hold discussions on a proposal for a waiver of intellectual property rights clauses in its Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement that bear on Covid-19 patents, such as medications and vaccinations. India and South Africa first proposed the waiver on October 2, 2020. It was a time within that first year of the pandemic amid great anticipation of Covid vaccinations on the horizon. The waiver represented a hope for a more equitable roll out of preventative treatments for fighting this scourge, without the usual access barriers posed by intellectual property . . . [more]

Posted in: Intellectual Property, Legal Publishing

Trade Secret and Breach of Confidence Monetary Claim Stayed by Bankruptcy

The purpose of the Bankruptcy and Insolvency Act, R.S.C. 1985, c. B-3 (BIA) is to relieve an honest and unfortunate debtor of their debts and liabilities. A discharge from bankruptcy releases the insolvent debtor from pre-bankruptcy debts or liabilities provable in bankruptcy subject to certain exceptions.[1]

An exception to this rule is s. 178(1)(e) relating to “any debt or liability resulting from obtaining property or services by false pretences or fraudulent misrepresentation”.[2] Where the exception applies then such debt or liability is not released, and continues to remain enforceable against the debtor after bankruptcy.[3]

A successful claim . . . [more]

Posted in: Intellectual Property

Patent Proceedings by the Numbers – Part 2

Continuing my review of patent infringement proceedings in Federal Court, I will look at how cases actually move through the court. Focusing on patent infringement cases started in 2017, 2018 and 2019 (but excluding proceedings under the PM(NOC) regulations), for this group of about 140 cases, a statement of defence was only filed in about 75% of cases. In my last column (see How Long to Trial for Patent Proceedings?), my review suggested that about half of the cases were resolved in less than two years, typically by way of settlement or discontinuance.

In the 75% of cases where . . . [more]

Posted in: Intellectual Property

CRTC Authorizes Broad Investigation Under CASL

The broad powers of the Canadian Radio-television and Telecommunications Commission (CRTC) were reinforced in the CRTC’s Compliance and Enforcement Decision CRTC 2020-196.

In the course of investigation of numerous complaints in relation to a short message service (SMS) phishing scam the person designated by the CRTC under Canada’s Anti-spam Law (CASL) (the “investigator”) issued a notice to produce to Hydro-Québec in relation to 10 service addresses and customer accounts.

Hydro-Québec is not the source of the SMS messages under investigation It is merely an innocent third party that has files that the investigator wants to review to assess the service, . . . [more]

Posted in: Intellectual Property

Why We Need a Canada Trade Secrets Act

To address the growing problem of trade secret theft hurting Canadian businesses and innovators, the federal government needs to consider a major legislative reform to its existing IP laws. It is time to start thinking about passing a federal Canada Trade Secrets Act.

The idea of a legislative answer to the problem of trade secret theft in Canada is not new. The Alberta Law Reform Institute proposed model legislation in 1986. The Uniform Law Conference of Canada did the same in 1987. Although these early model laws were for adoption by the provinces, they could easily be . . . [more]

Posted in: Intellectual Property

A Tale of Two Copyright Inquiries

I wish to consider two copyright initiatives currently underway in Canada and the United States, as they bear on changes in intellectual property law, and hold lessons for my efforts to increase public access to research and scholarship. Researchers are identified as a concerned party in the Canadian instance, while the American example, if tangential to scholarly publishing, still raises questions about copyright today that only serve to encourage my own thinking about copyright reform.

On July 16th, 2021, the Government of Canada issued A Consultation on a Modern Copyright Framework for Artificial Intelligence and the Internet of Things on . . . [more]

Posted in: Intellectual Property, Legal Publishing