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Archive for the ‘Intellectual Property’ Columns

Claims Against ISPs Under the Notice and Notice Regime

Canada uniquely provides a notice and notice regime by which copyright owners can require an ISP to forward notices of alleged infringement to a suspected typically anonymous internet user claimed to be infringing the owner’s copyright.

Courts describe one of the purposes of the notice-and-notice regime is “to provide copyright holders the information they need in order to bring infringement actions against suspected violators, who will usually be Internet users whose identities are unknown to the copyright holders, but known to the respective ISPs”.[1]

The Supreme Court has also described a purpose of the notice and notice regime was . . . [more]

Posted in: Intellectual Property

Developments in Patent Law in 2020

The Courts were busy in 2020 with some significant decisions in patent law addressing several substantive issues affecting the enforceability of patent rights in Canada. The following summary focuses on some of these decisions that may be of interest beyond those practicing patent law.

Computer-implemented Inventions – An area of significant an ongoing uncertainty has been the degree to which patents can be granted for software and ‘business method’ inventions. In Choueifaty v. Canada (Attorney General), 2020 FC 837, the Federal Court rejected the approach used by the Canadian Patent Office in reviewing these types of inventions to . . . [more]

Posted in: Intellectual Property

Mobile App Developers on Notice

Three regulators[1] issued a joint warning letter to numerous mobile app developers late in November 26, 2020 cautioning the companies to comply with various compliance obligations under Canada’s Anti-Spam Law (CASL), the federal privacy law, the Personal Information Protection and Electronic Documents Act (PIPEDA), and the Completion Act.

The co-operative effort was part of a CASL compliance awareness-raising campaign and the warning letters were directed at businesses involved in making apps available to Canadian consumers. The letter is available online[2] and reminds the businesses that they have obligations under the CASL-related provisions under CASL, PIPEDA, and the . . . [more]

Posted in: Intellectual Property

Canadian IP in 2020

Looking back on an unusual and eventful year, we can see how IP practitioners worked through the pandemic with all of its challenges. Most statistics show a significant drop in March, April and May of 2020 but by June most trends appear to be back to previous levels.

In the Federal Court and Federal Court of Appeal, where most intellectual property matters in Canada are litigated, the following chart shows a measure of activity in the Court. This is based on the number of documents being filed with the Court and directions/orders being issued – i.e. docket entries – on . . . [more]

Posted in: Intellectual Property

Anti-Spam Enforcement Action Continues Under CASL

During the Covid-19 pandemic scams have not stopped and appear, by many accounts, to be on the rise. As a result, the Canadian Radio-television and Telecommunications Commission (CRTC) has continued its enforcement action under Canada’s Anti-Spam Law[1] (CASL).

Most recently the CRTC conducted an investigation of Notesolution Inc. doing business as OneClass (OneClass). OneClass is an online educational platform for crowdsourced university course content. OneClass seeks to build a global interactive library for educational content across all levels of education.

The CTRC alleged that OneClass violated several provisions of CASL[2], namely violation of:

(a) the electronic communications . . . [more]

Posted in: Intellectual Property

Federal Court’s Jurisdiction Over Contractual Intellectual Property Issues

The Federal Court of Appeal has clarified the Federal Court’s jurisdiction over contractual ownership issues as part of patent proceedings. Ownership of patents is often intertwined with the identification of inventors, assignments of patent rights and license agreements. The Federal Court hears most intellectual property cases in Canada and more certainty on the Court’s jurisdiction in this area is welcome.

As a statutory court, the Federal Court shares jurisdiction with the superior courts in certain areas and has exclusive jurisdiction on other matters. As it relates to intellectual property, the Federal Courts Act, Section 20 identifies areas of exclusive . . . [more]

Posted in: Intellectual Property

Clarity Around Use of a Trademark for Services on the Internet

Use is essential in Canadian trademark law. The Federal Court of Appeal has addressed the “use” of a trademark in association with services on the internet. in the context of a non-use cancellation action.

The Trademarks Act defines “use” in relation to services if the trademark “is used or displayed in the performance or advertising of those services”.[1] Courts have held that the mere advertising of services in Canada will not constitute use in Canada in association with a service. Some aspect of the services must be performed or delivered in Canada.[2] This is a fact based assessment . . . [more]

Posted in: Intellectual Property

Pre-Grant Compensation for Patent Infringement

What happens if someone infringed your patent application after you have filed your patent application but before it is granted? In many instances, this can be a surprisingly long period of time – typically several years. It can also be a crucial time in the development and commercialization for a new company. The Patent Act provides some relief, but you can only get a remedy after the patent has granted.

As an example, for patents granted in 2019, the median duration patent applications are pending between filing (international or national filing date) and grant at the Canadian Intellectual Patent Office . . . [more]

Posted in: Intellectual Property

Alberta’s Whistleblower Trap

There’s plenty wrong with Alberta’s Public Interest Disclosure (Whistleblower Protection) Act (PIDA) as drafted that would give a whistleblower pause for concern. But at least you can read the Act and see what these are.

It is quite a different matter when the office of Public Interest Commissioner (PIC)[1] denies whistleblower protection by adding requirements that are simply not written in the Act. These added requirements – and the unpredictability that there may yet be further requirements in future complaints – set a trap for unsuspecting whistleblowers who are denied protection against employer reprisal.

Like other Canadian jurisdictions, whistleblower . . . [more]

Posted in: Intellectual Property

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