Canada’s online legal magazine.

Archive for the ‘Intellectual Property’ Columns

Federal Court of Appeal Examines the Scope of the Implied License to Use a Patented Article

The Federal Court of Appeal had the opportunity to examine the implied license to use a patented article upon its unrestricted sale in Pharmascience Inc. v. Janssen Inc., 2024 FCA 10.

The issue arose since Pharmascience’s proposed paliperidone palmitate for the treatment of schizophrenia and related disorders did not offer the 75 mg-eq. dosage form which would be available from the Patentee Janssen. Janssen brought action under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations[1]. In that action, the respondents, Janssen sought a declaration that Pharmascience would infringe Canadian Patent No. 2,655,3.

Pharmascience defence was that . . . [more]

Posted in: Intellectual Property

Let’s Plays: A Copyright Conundrum

Were you ever scolded as a child for playing too many video games? Did your parents tell you that your Game Boy was rotting your brain or that you would never make any money playing Donkey Kong? Or (perish the thought) have you ever been the parent doling out such lectures? Well, I hate to be the bearer of bad news, but these common reprises about video games—particularly about their earning potential—might be outdated by a decade or so. In fact, in the creator economy, video game content creators are among the highest paid. As far back as 2014, . . . [more]

Posted in: Intellectual Property, Legal Information

Double Patenting Again

Some recent court decisions have focused more attention on double patenting in Canada. Double patenting occurs when someone obtains two patents for the same (“co-terminus”) or similar (“obvious-type”) inventions. If challenged, granted patent claims can be found invalid if they are found to be double patenting over another patent owned by the applicant.

The Supreme Court of Canada has cautioned that, “If a subsequent patent issues with identical claims, there is an improper extension of the monopoly.” Many of the decisions on double patenting, including this statement from the Supreme Court arise from disputes over “old Act” patents where the . . . [more]

Posted in: Intellectual Property

An Open Letter on Open Access

Dear Tri-Agency,

I was delighted to see your announcement last summer that the Tri-Agency, representing Canada’s major research funders (CHIR, NSERC, SSHRC), have decided to review your Open Access Policy on Publications. Your continuing efforts to increase the public’s ability to consult research and scholarship through this policy are admirable. Having seen your invitation for public input on the review process, I wanted to make a small contribution, as a professor of education who started a Public Knowledge Project 25 years ago to support public access to research, and as a school teacher before that . . . [more]

Posted in: Intellectual Property, Legal Information, Legal Publishing

A Difficult Test for Inducing Patent Infringement

How far does a generic drug maker need to go to exclude liability for inducing patent infringement?

In drug patent cases the product monograph is key in assessing whether inducement exists. In the case of off-label uses, it is customary for a generic drug maker to exclude any references in the innovator’s product monograph that teach the off-label use. How far such edits must go is put in doubt by the Federal Court of Appeal decision in Apotex Inc. v. Janssen Inc., 2023 FCA 220.

The test for a finding of inducing infringement was confirmed by the Federal Court . . . [more]

Posted in: Intellectual Property

A Right to Repair

A private members bill directed to a ‘right of repair’ is working its way through parliament. Bill C-244, “An Act to amend the Copyright Act (diagnosis, maintenance and repair)” is currently at third reading and may become law soon. The government included a “right of repair” in its 2023 budget documents and so far Bill C-244 has support from all parties.

The budget announcement said in part:

Budget 2023 announces that the government will work to implement a right to repair, with the aim of introducing a targeted framework for home appliances and electronics in 2024.

The government will

. . . [more]
Posted in: Intellectual Property

A Writer Helps Draw an Intellectual Property Line for AI

With OpenAI’s release of ChatGPT-3 on November 30th 2022, it very quickly became clear to people that the innocent-sounding Large Language Models (LLMs) had crossed a historic threshold when it came to the intelligence exhibited by Artificial Intelligence. Many were seeing, for the first time, a computer responding to their questions and prompts with well informed and well-formed prose that, apart from the occasional “hallucination,” spoke directly to what was asked or prompted.

The immediate legal question was whether the resulting text, while certainly exhibiting intellectual properties, constituted the sort of intellectual property that the law was intended to encourage . . . [more]

Posted in: Intellectual Property, Legal Publishing

Consumer Transactions on Amazon Are Subject to Arbitration

How does a Court assess a class action claim against a high-tech giant where the evidence is that the plaintiff reaffirmed the conditions of use numerous times in making her transactions in the world following the Supreme Court of Canada’s seminal case in Uber Technologies Inc. v. Heller, 2020 SCC 16, [2020] 2 S.C.R. 118.

In Heller, the Supreme Court found a compulsory arbitration clause in a contract of adhesion was unconscionable and unenforceable. The facts in that case would have required Heller to expend a year’s earnings to dispute the service agreement with Uber.

After Heller, . . . [more]

Posted in: Intellectual Property

Joining the Call for Canadian Copyright Reform Now

Hugh Stephens, a Canadian policy and business consultant, has a new book out In Defense of Copyright. In advance of its release, he did a column on July 15th in the Globe and Mail,Why Canada Needs Copyright Reform Now,” calling on the government to update the Copyright Act after more than a decade of reviews and proposals. I couldn’t be more supportive of both defending and updating copyright. Now does seem to be the time, and all the more so with Prime Minister Trudeau declaring that his midsummer cabinet shake up was intended to create “the . . . [more]

Posted in: Intellectual Property, Legal Publishing

A Missed Opportunity

In Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168 the Federal Court of Appeal had to assess the effort by the Federal Court to clarify the rule around subject matter objections for computer-implemented inventions. This remains a pressing issue as inventors of computerized inventions continue to seek patent protection in Canada. The Federal Court of Appeal declined to take the opportunity to clarify the rules that would be applicable because the parties and intervenors could not provide a consistent statement of the rules they thought should apply.

The background is that Benjamin Moore had been declined . . . [more]

Posted in: Intellectual Property

Large Language Models and the Death of the Author

In my last Slaw column, I dealt with the rapid responses to the “authorship” question from the leading journal Nature and the U.S. Copyright Office to the sudden arrival of large language models (LLM), such as ChatGPT. Both publisher and government agency made it clear that they will not accept such works for publication or copyright. More recently, Nature reported this June that it will now require authors to state that their submission does not use AI-generated images.

With the state and impact of LLM continuing to rapidly evolve, I want to follow with further reflections on the authorship . . . [more]

Posted in: Intellectual Property, Legal Publishing

Does Fair Use Provide a Celebrity Right to Plagiarize?


By contrast with the fair dealing user’s right in Canada, the United States copyright law provides a fair use exemption. Since the reader might encounter US commentary of decisions addressing the fair use right the following comments are provided to introduce the fair use exemption.

The Canadian fair dealing user’s right has some superficial similarities to the United States fair use exemption. Under the US copyright law, “a copyright holder cannot prevent another person from making a “fair use” of copyrighted material.”[1]

The US Supreme Court describes the fair use doctrine as “an “equitable rule of reason” that . . . [more]

Posted in: Intellectual Property