Canada’s online legal magazine.

Archive for the ‘Intellectual Property’ Columns

Guidance on Neighbouring Rights

Neighbouring rights rarely get much judicial review so the case of Re: Sound v. Fitness Industry Council of Canada 2014 FCA 48 gives some insight as to this regime.

Neighbouring rights[1], rights near to copyright, in this context are rights to “equitable remuneration” in published sound recordings (performers and makers) for the performance in public or the communication to the public by telecommunication in Canada of their recordings under Section 19 of the Copyright Act, R.S.C. 1985, c. C-42. Re:Sound is a not-for-profit collective society authorized under the Act to administer the performance rights of performers and . . . [more]

Posted in: Intellectual Property

3D Printing and Intellectual Property

Last month, Home Depot announced they would start selling 3D printers in some of their stores. This seems like the next step in the consumerization of technology that began as exclusively for high end users such as automotive manufacturers and architects but is now becoming useable for almost anyone. Even the Toronto Public Library has 3D printers “even for beginners to use.” What effect will the increasing use of 3D printing technology by consumers have on intellectual property and what effect will intellectual property have on the technology?

3D printing is generally a term for additive printing where material is . . . [more]

Posted in: Intellectual Property

World Wide Injunction Orders Editing of Google Search Results

What is a Court to do when faced with repeated breaches of Court orders by a virtual entity? In the case, Equustek Solutions Inc. v. Jack, 2014 BCSC 1063, the decision of the BC Supreme Court was to order an innocent third party, Google Inc., to remove the wrongdoer’s website from further search results – anywhere.

The case has far reaching implications on the ability to enforce injunctions on wrongdoers in cyberspace, on the role of innocent third parties such as Google, and on the possibility of the Court process being used as an avenue for censorship. The decision has . . . [more]

Posted in: Intellectual Property

An Exciting Time in Canadian Competition Bureau Policy – Substantive Guidance on Reverse Payment Patent Settlement Agreements May Be Imminent?

As part of the Canadian Competition Bureau’s revisions to its IP Enforcement Guidelines, some stakeholders have requested guidance on “new” issues of concern in the Competition Law area – including reverse payment patent settlement agreements. Prior to publication of the first Draft Update of the Guidelines (“Phase 1 Update”)[1], the Bureau held a Workshop to consider issues regarding competition and the pharmaceutical industry[2]. Having regard to the high cost of pharmaceuticals ($34.5 billion in 2013), and the recent decisions of the US Supreme Court and European Commission finding that reverse payments are “valid targets for antitrust . . . [more]

Posted in: Intellectual Property

Intellectual Property Cases in the Federal Court: The Judicial Officers

The Federal Court has a primary role in hearing intellectual property proceedings in Canada (See Where Should You Launch Your Intellectual Property Case?). Changes to the composition of the Federal Court, including the number of judges and prothonotaries, have a significant effect on the enforcement of intellectual property in Canada. Several changes are being made to the role of the prothonotaries as well new appointments for judges in the Federal Court.

These changes affect the Court’s ability to manage its workload. The Federal Court has a Practice Notice indicating that where possible, the Court will endeavour to have the . . . [more]

Posted in: Intellectual Property

Can Screamin’ Eagles Co-Exist?

In Canada parties should understand that rights in marks can arise through use of the mark in commerce even without registration. This complicates clearance of marks and is a reason for doing clearance searches to identify any prior users before the adoption of a mark.

What happens when a user of a mark for one category of goods begins to use that mark in another category of goods – in which a second party has a registered mark. Can those uses survive, continue and co-exist when such conduct occurs over a long period of time?

Canada’s Federal Court addressed this . . . [more]

Posted in: Intellectual Property

Do You Think That Patent Is Invalid?

You or your client may come across a patent or patent application and be aware of prior art or have other reasons to believe it is invalid. The patent may have shown up in a patent search, such as a freedom to operate search or be listed in a demand letter sent by the competitor.

Depending on the situation, the competitive situation, and the budget, there are several ways to challenge the validity of a Canadian patent application or issued patent. I recommend involving a patent agent and/or patent lawyer to assist with determining which, if any, option is best . . . [more]

Posted in: Intellectual Property

Norwich Orders and Copyright Trolls

The decision of the Federal Court in Voltage Pictures LLC v. John Doe and Jane Doe, 2014 FC 161, provides insight into the collision of Norwich Orders, means used to identify unknown infringers, and the growing business model of copyright trolls giving rise for the Courts to be more mindful of playing a role in potentially abusive behaviour of the trolls.

The development of this business model has troubled the Courts in the United States and the United Kingdom. In Voltage Pictures the Federal Court sought to address this trend in Canada quoting from Judge Guzman in TCYK, LLC . . . [more]

Posted in: Intellectual Property

First Canadian Antibody Decision of Federal Court Significant for What It Does Not Say

It has been 15 years since the last brand v brand challenge of a biologic patent in Canada. In 2000, Amgen’s recombinant EPO patent (for EPREX, which stimulates red blood cells to treat anaemia) was found valid and infringed by Hoffman’s RECORMON product.[1] In January 2014 the Federal Court once again upheld the validity of certain claims of Abbott’s psoriasis antibody patent that were challenged by Janssen[2].

The Abbott v Janssen decision (“Decision”) provides a somewhat typical patent validity analysis. Mr. Justice Hughes favoured certain Abbott experts who found that Abbott’s discovery of a “very sticky” antibody . . . [more]

Posted in: Intellectual Property

Defining Copyright Infringement

The Supreme Court recently addressed the approach to assessment of copyright infringement in the case of Cinar Corporation v. Robinson, 2013 SCC 73 (CanLII) and thereby provided some important guidance to courts facing similar difficult determinations. 

As a basic principle the public domain provides the rich soil from which new works can be created. The Court reaffirmed that the role of copyright provides “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator” and that copyright does not provide a monopoly over . . . [more]

Posted in: Intellectual Property

Where Should You Launch Your Intellectual Property Case?

When deciding, with your client, to bring an intellectual property lawsuit in Canada, one question that will need to be answered is what court should be used? In many instances, both the Federal Court and the provincial courts have concurrent jurisdiction but depending on the specific causes of action, your choice may be limited to one of the courts and other facts may influence your choice.


The provincial ‘superior’ courts have inherent jurisdiction over all causes of action that have not been explicitly provided elsewhere. The Federal Court, in contrast is purely a statutory creation (see the Federal Courts . . . [more]

Posted in: Intellectual Property

Don’t Ignore That Notice!

The case Medos Services Corporation v. Ridout and Maybee LLP 2013 FC 1006 is an example of what happens when the owner of a registered trade-mark ignores a Section 45 notice. 

As a basic premise a registered trade-mark must be used in order to maintain those rights and a procedure exists under Section 45 of the Trade-Marks Act to weed out dead wood from the Register. Upon receipt of such a notice the registered owner has 3 months to provide an affidavit or statutory declaration showing, with respect to each of the wares or services specified in the registration, whether . . . [more]

Posted in: Columns, Intellectual Property