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Archive for the ‘Intellectual Property’ Columns

When Is a Contract of Adhesion Unconscionable?

Vendors of goods and services utilize standard form contracts to reduce or minimize transaction costs and to ensure consistency in the terms applied to similar transactions. Since such contracts are offered on a “take it or leave it” basis there is no ability to negotiate terms and they are described as contracts of adhesion. There is a tendency in contracts of adhesion for the vendor using the standard form to use terms that benefit the vendor and disadvantage the other party. That trend has increased in electronic commerce transactions especially at the business to consumer level as terms have become . . . [more]

Posted in: Intellectual Property

Caution With Patent Demand Letters

Pre-litigation steps of putting parties on notice of allegations of patent infringement are common in Canada. Avoiding the cost and time of litigation though early resolution can make such notice very worthwhile, but recent decisions highlight risks of make aggressive claims of patent infringement.

In amendments to the Patent Act made in 2018, new sections create a framework for regulating the contents of patent infringement demand letters, but as of the date of this article implementing regulations have not been introduced. Section 76.2 added in 2018, states, “Any written demand received by a person in Canada, that relates to an . . . [more]

Posted in: Intellectual Property

Collective Licenses Under Copyright Are Not Mandatory

The Canadian Copyright Licensing Agency (Access Copyright) is a copyright collective meaning that it manages certain rights on behalf of copyright holders. Importantly Access Copyright does not itself hold any of the copyrights that it manages.

York University (York) is Canada’s third-largest university with over 50,000 students and approximately 1,500 full-time faculty members. York had a license to use some of the works licensed by Access Copyright from 1994 to 2010. Access Copyright applied to the Copyright Board for an interim tariff during a period when renewal negotiations were languishing. York initially complied with the interim tariff but then advised . . . [more]

Posted in: Intellectual Property

Summary Determination of Claim Construction

After a long wait, a couple of cases have used summary determination to decide issues of claim construction in patent infringement proceedings. In both cases, the claim construction resolution was determinative of non-infringement and the plaintiff’s case was dismissed. The decisions are subject to appeal.

In patent cases, determining the meaning of the words used in the claims of the patent is a key prerequisite for determining patent validity and infringement. Typically, expert evidence is introduced on the qualities of the skilled person appropriate for the patent at issue, the common general knowledge of this skilled person, and how the . . . [more]

Posted in: Intellectual Property

Privacy and Artificial Intelligence

The increased utilization of artificial intelligence (AI) has been identified as giving rise to numerous privacy concerns.[1] For illustration, “the data protection principle of limiting collection may be incompatible with the basic functionality of AI systems”. AI systems generally rely on large amounts of personal data to train and test algorithms, and limiting some of the data could lead to reduced quality and utility of the output.[2]

Another issue is that organizations using AI for advanced data analytics may not know ahead of time how the information that is processed by an AI system will be used or . . . [more]

Posted in: Intellectual Property

Findability of Prior Art

A couple of recent decisions have provided some clarity to what prior art can be relied on to show that a patent is obvious. One of the cornerstones of patent law is that a patent must be for an invention that is ‘inventive’ or ‘non-obvious’. This leads to the next question, “inventive” compared to what?

A car with a six-cylinder internal combustion engine may be inventive if all you have is a bicycle but may not be inventive if you already have a car with a four-cylinder internal combustion engine.

The Patent Act, in section 28.3, states:


. . . [more]
Posted in: Intellectual Property

Modern Patent Interpretation Reviewed

In Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, Mr. Justice Sébastien Grammond presided over a patent infringement action in the Federal Court of Canada. The review is a helpful reminder of the modern approach to interpret patent claims.

Seedlings Life Science Ventures, LLC (Seedlings) is an early-stage health-care research and product development company. It alleges that Pfizer Canada ULC (Pfizer), infringes Seedings patent by selling in Canada an auto-injector commonly known as the EpiPen. While, at first sight, the EpiPen and Seedlings’s invention do not look alike, Seedlings argues that the EpiPen infringes certain . . . [more]

Posted in: Intellectual Property

Model Protective Order for Federal Court

The Federal Court is trying to clarify the scope and typical terms of confidentiality and protective orders for use in the court. Keeping confidential information can be a key consideration in intellectual property proceedings where the adverse party is often a direct competitor and the subject matter of the dispute touches on trade secrets and business plans.

Since my previous column on this subject (see Protecting Your Confidential Intellectual Property Information in Court, May 2017), a split between various Prothonotaries and Judges led to significant uncertainty as to the preferred options for keeping information confidential in court proceedings.

In . . . [more]

Posted in: Intellectual Property

CRTC Enforces CASL in Case of Malware Distribution

While there has been controversy about the enforcement of the electronic communication provisions of Canada’s Anti-Spam Law (CASL) due to the ambiguities of the complex scheme, there is widespread support for the anti-malware provisions. The Canadian Radio-television and Telecommunications Commission (CRTC) recently enforced those anti-malware provisions against .Mr. Revesz and Mr. Griebel, the partners of Orcus Technologies, pursuant to section 22 of CASL, for a total penalty of $115,000.

The defendants have 30 days to file representations with the CRTC or pay the penalty.

The CRTC alleges that Orcus Technologies developed, distributed, promoted, and sold a Remote Administration Tool called . . . [more]

Posted in: Intellectual Property

Federal Court Issues Site Blocking Order for ISPs

In Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432, the Federal Court dealt with a novel motion in Canada for a “site-blocking order”. The broadcasting company plaintiffs sought an interlocutory mandatory injunction against the innocent third party Internet Service Providers [ISPs] seeking to compel the ISPs “to take steps to block their customers from accessing websites and Internet services operated by the anonymous Defendant”.

The plaintiffs allege that the defendants are infringing copyright by operating unauthorized subscription services that provide subscribers access to the plaintiff’s programming content over the Internet.

The innocent third party respondents are the major Canadian . . . [more]

Posted in: Intellectual Property

Keatley Surveying v. Teranet: It’s Time for a Blanket Statutory Obligation Exception

In Keatley Surveying, the small issue of whether a statutory regime of land titles registration involving the filing and dissemination of land surveys was addressed through a much larger question of copyright ownership of those land surveys. Ownership in the copyright of land surveys became the basis for maintaining the integrity of a land titles system when it could have been addressed through the statutory obligation exception in the Copyright Act.

Teranet is a statutorily empowered third party manager of Ontario’s land registry system. Land surveys registered on title are scanned and digitized, then made available to the . . . [more]

Posted in: Intellectual Property

Transborder Data Flow Consent Standard Is Reaffirmed

The Office of the Privacy Commissioner of Canada (OPC)’s report, Personal Information Protection and Electronic Documents Act (PIPEDA) Report of Findings #2019-001, issued April 9, 2019, into the Equifax hack, created controversy as the report suggested that the existing law on the level of consent necessary for Canadian organizations to engage in transborder processing of personal data had changed and that the OPC was now asserting that a new standard of express consent was required.

In para. 111 of the report, the OPC stated “we acknowledge that in previous guidance our Office has characterized transfers for processing as a ‘use’ . . . [more]

Posted in: Intellectual Property