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Archive for the ‘Intellectual Property’ Columns

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

How Long to Trial for Patent Proceedings?

I looked at all the patent infringement cases started in the Federal Court over a three-year span 2017 to 2019. There were about 140 cases in this group of which about 24% are still pending today including four waiting on trial decisions and five with trials scheduled in 2022. Of the 140 cases, nine have gone to trial.

The following chart tracks the number of active cases from the original 140 that were still active in six month increments. Note that this is somewhat subjective and is based on what appears to be resolution on the merits rather than the . . . [more]

Posted in: Intellectual Property

FCA Would Allow Reverse Class Action Suit for Copyright Infringement

Owners of copyright in movies struggle with large numbers of infringements in which unauthorized copies of their works are uploaded to peer to peer file sharing services such as BitTorrent.[1]

The Federal Court of Appeal has noted that a solution to mass-copyright infringement is for a single creator to pursue a large number of infringers.[2]

Despite the limitations of the Copyright Act for individual non-commercial infringements[3] and the limitations under current copyright law on authorization, the Federal Court of Appeal was prepared to allow a reverse class-action to proceed in which a plaintiff claims numerous parties conducted . . . [more]

Posted in: Intellectual Property