When Federal Court Judges Disagree:

Earlier this month, the Federal Court of Appeal released its decision in an appeal stemming from a decision of Justice Hughes to grant a prohibition order in a prohibition proceeding between Apotex and Allergan in respect of the combination ophthalmic drug Combigan® and Canadian Patent No. 2,440,764. A link to the decision follows this post.

As noted in the FCA’s decision, this is an unusual case in that although Justice Hughes “held that Apotex’s allegation of invalidity on grounds of obviousness was justified and that the prerequisite for the issuance of the prohibition order sought by Allergan had therefore not been established, he nevertheless issued it” in order to adhere to an earlier judgement by Justice Crampton “he expressly disagreed with” involving the same patent. His rationale for issuing the prohibition order is based on the doctrine of comity which “seeks to prevent the same legal issue from being decided differently by members of the same Court” and is explained in his reasons (paras. 191 to 194):

[191] I must consider the question of comity. Is the evidence and argument before me “different” from or “better” than the evidence and argument before Crampton J in Sandoz? There is no real way to measure “different” or “better”. The evidence and argument is of the same kind. In some cases Crampton J had unrebutted evidence whereas I have rebutted evidence. The difference in the evidence and argument is more one of quality to the best that can be discerned from the record that I have, and this Court not having the record as to what was before Crampton J.  

[192] If I were to dismiss this application on the basis that Allergan did not discharge its burden of proving that Apotex’s allegations as to obviousness were not justified; then, within a matter of hours - if not days - the Minister would give Apotex a [NOC], and the issue as to whether the Court should grant a prohibition order would be moot. The Court of Appeal, in all likelihood, would not hear an appeal.  

[193] I believe that there have been serious issues raised as to comity. The somewhat contradictory decisions of the Court of Appeal should be considered by that Court and clear instruction given as to how, in an NOC context, previous decisions of a Court on the same issues respecting the same patent, should be considered.  

[194] The only practical way to get the matter before the Court of Appeal is for me to grant the Order for prohibition in the likely expectation that Apotex will appeal. 

The FCA took exception to Justice Hughes granting the prohibition in order to “further his desire to clarify the jurisprudence”, stating at para. 49 of the FCA decision that:

[49] It is apparent from the foregoing that it was not open to the Federal Court judge to issue a prohibition order for the purpose of having his concerns about the use of the doctrine of comity and the notion of abuse of process addressed by this Court on appeal. As noted earlier, the parties were entitled to have their dispute settled on the merits and the Federal Court judge by issuing a formal judgment that was contrary to the conclusions that he reached on the merits, failed in his task. 

In the FCA’s decision the application of the doctrine of comity with respect to patent claim construction was reviewed, noting at para. 50 that:

the doctrine of comity has no application with respect to findings of fact. A finding that an invention is obvious because the solution proposed was plain to see is one of fact (671905 Alberta Inc. v. Q’max Solutions Inc., 2003 FCA 241, para. 48; Laboratoires Servier v. Apotex Inc., 2009 FCA 222, para. 67 (Servier); Apotex Inc. v. Wellcome Foundation Ltd., [2001] 1 F.C. 495, para. 61 (C.A.), aff’d 2002 SCC 77, [2002] 4 S.C.R. 153). In contrast, construing a patent in order to identify the inventive concept when it is not readily discernable for the claim itself requires looking at the whole of the patent (Sanofi, para. 77) and gives rise to a question of law (Western Electric Co. v. Baldwin International Radio of Canada Ltd., [1934] S.C.R. 570, pp. 572-573 (S.C.C.); Weatherford Canada Ltd. v. Corlac Inc., 2011 FCA 228, [2011] F.C.J. No. 1090, para. 24 – and the authorities referred to in these passages). It follows that unless the Federal Court judge could demonstrate that Crampton J.’s construction of the patent in order to determine the inventive concept was wrong or that distinct evidence adduced before him compelled him to reach a different conclusion, it would have been preferable for him to adhere to it. 

The FCA noted that Justice Hughes did not identify any error and simply chose to construe the patent differently then Justice Crampton.

In view of the divergent patent constructions of Justices Crampton and Hughes, it fell to the FCA to determine which of the two patent constructions was correct. Ultimately, the FCA disagreed with Justices Hughes’ construction of the patent, dismissed the appeal and confirmed that the prohibition order was properly issued.

http://decisions.fca-caf.gc.ca/en/2012/2012fca308/2012fca308.html

By Claire Palmer

The 14 Social Media Etiquette Dos and Don'ts for IP Professionals

Social media is no longer a fad when it comes to business development and marketing for intellectual property professionals. Think about this: over 175 million professionals have joined LinkedIn, the preferred social media platform for business, to date with two members continuing to join per second. 

Because social media is becoming mainstream, it’s how you use social media that will set you apart from the competition. Just because everyone is using it, doesn't mean they are using it to it’s full potential. 

Here are 14 social media etiquette dos and don’ts for intellectual property professionals: 

Do 

1. Think about reciprocity when using social media. For example, if someone follows you on Twitter and they’re relevant to your industry, follow them back. If someone retweets your article on Twitter, retweet one of their posts that your network will find useful. 

2. Respond to criticism and conflicting opinions. Whatever you do, don’t delete negative comments or feedback unless they are trolls or spam. Negative feedback can actually be a good thing as it allows the public to see how you handle yourself.  I've heard many stories of great friendships beginning in this manner. You’ll be surprised! 

3. Promote the competition. When it comes to intellectual property, there are literally thousands of professionals using social media, including your competitors. Don’t shy away from the competition. Follow them on Twitter, "Like" their Facebook pages and interact with them on LinkedIn. Watch what they’re doing online and learn from them. Whatever you do, don’t attack them online! 

4. Share all of the offline events that your firm is taking part in. For example, MBM recently partnered with Global Entrepreneurship Week in Ottawa. We shared pictures from the event via Twitter, Facebook and LinkedIn. We also interacted with GEW Canada’s Twitter account (@GEWCanada) during the event. Overall, it was a great experience to see how social media can optimize offline event attendance. 

5. Take part in relevant discussions. One of my favorite places for online discussions is LinkedIn groups. Take some time to research which IP groups you find interesting and join the discussion. Answer and ask questions. Build your expert reputation. 

6. You should respond to social media comments, questions and feedback quickly. For example, if you post an article on LinkedIn as a status update and one of your connections “Likes” the article, respond quickly and ask for their opinion on the matter. Or, if someone comments on a blog post you've written, respond quickly thanking them for their feedback. Reader interaction is gold on social media, this is how relationships are built online. 

7. Remember your reputation and brand on social media. Everything you do online is public knowledge. If you have a contradicting opinion you’d like to share in response to a blog post, do so in a positive manner. Remember, potential clients are reading everything you say. It’s okay to disagree, but do so in a respectful manner. 

Don’t 

1. Do not over-promote yourself when using social media. Social media is a wonderful venue to promote your services but remember, there’s a time and place for doing so. When it comes to online interaction, think about the 20/80 rule. You should be taking part in discussions and contributing valuable information 80% of the time. This leaves 20% of the time for self promotion. When you do promote yourself, make sure it’s in a respectable fashion and in the right tone. 

2. Don’t jump into an online conversation without having something of value to share. For example, if two people are discussing a specific IP related decision inside a LinkedIn group, and you have valuable insight that hasn't already been discussed, feel free to provide your two cents. Do you have a whitepaper or blog post that’s relevant? Feel free to share the link within the discussion as well. You’ll also find that these sorts of discussions can give you great inspiration when it comes to content creation. 

3. Don’t forget to link to your sources in social media posts. And don’t use pictures you don’t have rights for. This is a no-brainer for intellectual property professionals but I had to include it anyways. If you read a blog post that inspires you to write your own piece, include a link back to the original article in your post. If you would like to add a picture to your blog post, visit a site like iStockPhoto where you can purchase pictures for reasonable prices. 

4. Don’t leave your social media bio’s blank. Make sure you fill out each bio section completely. Some social media accounts require more than others, and you should have a short and long bio available. Don’t leave any section blank as this is a common newbie mistake that’s easy to fix. LinkedIn can be a bit tedious to fill out so don’t worry if it says your profile is 75% complete, just make sure you have your professional headline, summary, experience and education completed. 

5. Don’t let your social media accounts become a ghost town of activity. If you aren't going to be consistent online, don’t create the account in the first place. Posting once a week isn't enough. You need to stay active and treat social media as a daily task. Set aside 30 minutes each day and think of this like your “business development” time. Doing so will keep your profile fresh and will encourage people to engage with you as well. 

6. Don’t boast about your praise online. If you receive praise for a particular piece of content you created online, don’t shout it from the social media rooftops. Retweeting positive comments you receive is generally frowned upon as well as “liking” your own Facebook posts. If you receive praise online, thank the person privately or publicly recognize content they've created online. 

7. Don’t use the same canned responses over and over again on social media. It can become very appealing to say a simple “thank you” each time someone retweets you on Twitter; however, this won’t get you very far, especially if someone heads over to your Twitter profile and sees 35 tweets saying “thank you”. Check the bio of the person who retweeted you and include their name and something you have in common in your response. Most people don’t do this online and this is a simple strategy to set you apart.

By Samantha Collier

IP Protection That Fits As Well As A Yoga Pant

On November 20, 2012, after a widely reported settlement agreement had been reached, Lululemon Athletica Inc. filed for voluntary dismissal of its design patent infringement suit brought before the United States District Court for Delaware against Calvin Klein Inc. and its manufacturer G-III Apparel Group, Ltd.

This case centered around three design patents owned by Lululemon, namely, US D645,644; US D661,872; and US D661,281. The three design patents disclose yoga pants and flood pants where the waist band appears to be made of two pieces of fabric, overlapping to form a “v” shape in the front and back of the pant. To those familiar with Lululemon, this type of waistband is featured on its “Astro Pant” line of yoga pants. 

The details of the settlement between the parties are confidential, however, Calvin Klein did not submit a statement of defence in court for these proceedings. 

It has been noted that use of design patents, or industrial design registrations in Canada, to protect clothing designs is uncommon. 

This case, though, shows the effectiveness of design patents to protect the purely aesthetic aspects of clothing designs. Once the criteria for design protection are met, the advantage of using design patents over trade-marks to protect design arises from the automatic monopoly over the design granted by the design patent or industrial design registration. When a design first arises, it is difficult to show the necessary link between the design and the source to satisfy the requirements for trade-mark protection. 

After the end of the monopoly term, once the design is well associated with the source, it may be possible to extend protection over the design using trade-mark law. 

If you would like to know how to develop an intellectual property portfolio to ensure that your creative designs are protected, feel free to contact us.  One of our lawyers or Patent Agents will be happy to speak with you. 

By Jahangir Valiani 

Apotex Inc. v. Pfizer Ireland Pharmaceuticals, 2012 FC 1301.

The question in this case was about the clarification of the “interested person” mentioned in section 60(1) of the Patent Act. Apotex Inc. (“Apotex”) had brought an action under section 60(1) of the Patent Act seeking a declaration that Patent No. 2, 163,446 owned by Pfizer Ireland Pharmaceuticals (“Pfizer”) was invalid and that Apotex’s pills were non-infringing. Pfizer brought a motion asking a question of law prior to the trial to determine: “is Apotex an ‘interested person’ pursuant to section 60(1) of the Patent Act.”

Pfizer had provided a unilateral covenant not to sue Apotex for infringement with respect to its Patent No. 2,163,446. As a result, Pfizer claims in light of the covenant, Apotex is not an interested person, since there are no reasonable bases for Apotex in believing that its activities will be impugned by Pfizer.

The Federal Court does not answer the question in clarifying if Apotex would be considered an interested person or not. However it examines the condition where a party is entitled to bring a question of law before the court prior to trial.

The test for considering a question of law before the trial is set out in Prera v. Canada, [1998] 3 FC 981 (CA). The court must be satisfied that:

i. The “proposed questions are pure questions of law, that is to say questions that may be answered without having to make any findings of fact;” and

ii. The “questions to be answered are not academic and will be ‘conclusive of a matter in dispute’.”

Even if these two requirements are met, the court should consider if granting the motion would save time and expense. For this determination, the following factors are considered:

(i) any agreement of the parties,
(ii) the probability that the question will be answered in a manner that will dispose of the litigation,
(iii) the complexity of the facts that will have to be proved at the trial and the desirability, for that reason, of avoiding such a trial,
(iv) the difficulty and importance of the proposed question of law,
(v) the desirability that they not be answered in a ‘vacuum’, and
(vi) the possibility that the determination of the questions before trial might, in the end, save neither time not expense.

The court determined that in light of the motion being brought three weeks before the trial, the savings in time and expenses were minimal. Additionally, a further delay would have been prejudicial to Apotex, since the generic company desired to market its product as soon as possible.

By Asrin Jawaheri

Minister of Health's Response to Concerns Regarding Expiry of OxyContin Patent

This is an update to my Tuesday, November 13, 2012 blog entitled “Implications of OxyContin Patent Expiring in Canada” (http://www.canadaipblog.com/2012/11/implications-of-oxycontin-patent.html). 

In a letter to her provincial counterparts, Health Minister Leona Aglukkaq has indicated that Health Canada has no plans to withhold approval of generic versions of OxyContin based on misuse. In particular, Ms. Aglukkaq noted that “[t]here is no basis in the Food and Drugs Act for the Minister of Health to withhold approval of a drug where the drug is otherwise considered safe and effective for its recommend use. The law does not permit approval to be withheld on the basis of misuse.” 

The Minister went on to express her concern with respect to how the media has presented this story, noting that in “recent media reports, in which Minister Matthews for Ontario has said that she envisions that “streets would be flooded” with generic versions of OxyContin if it would be made available”. Ms Aglukkaq rightfully noted, as a prescription drug, if generic versions of OxyContin flood the streets, it is because “some medical professionals are making it possible. 

Her letter goes on to detail “concrete action to clamp down on prescription drug abuse”. A copy of her letter can be found at: 

http://s3.documentcloud.org/documents/519323/healthminletternov19.pdf. 

In my opinion, some of the most interesting comments in the letter relate to OxyNeo. Ms. Aglukkaq notes “it’s important to remember that OxyNeo is, to date, not authorized to make claims that it is “tamper-proof”, tamper-resistant” or “harder to abuse.” Health Canada had a panel of experts evaluate the evidence of describing drugs in this fashion, and found that there was insufficient proof to back up these claims. As noted in the prior blog, OxyNeo is a patented medicine. One of the patents listed on the Patent Register, Canadian Patent No 2,661,573, is entitled “Tamper Resistant Oral Pharmaceutical Dosage Forms Comprising An Opioid Analgesic”. It is unclear from Ms. Aglukkaq’s comments if she is speaking about OxyNeo in particular or to this type of drug in general. If Ms. Aglukkaq is speaking about OxyNeo in particular, one has to wonder if she has inadvertently suggested that the patents that cover OxyNeo specifically do not fulfill their promised utility. It would be interesting to hear Purdue Pharma’s response to her comments regarding OxyNeo.

By Claire Palmer

Implications of OxyContin Patent Expiring in Canada

Canadian Patent No. 2,098,738 is set to expire on November 25, 2012. This patent is likely unique in the history of Canadian patented medicines in that its expiry is not being hailed as a benefit to the Canadian public by providing for the entry of lower priced generic. Rather, the expiry of this particular patent is being met with grave concern. The reason is Canadian Patent No. 2,098,738 has prevented low cost generic OxyContin from flooding the Canadian market.

There have been numerous articles written by the mainstream press detailing the concerns (links to several are provided below).

OxyContin is a time-release formulation of the highly addictive and powerful pain killer, oxycodone that was voluntary taken off the market in Canada by Purdue Pharma Canada in view of drug abuse concerns. In the Canadian market, OxyContin was replaced by OxyNeo a formulation designed to be more difficult to abuse and misuse by those addicted to the drug. OxyNeo is itself a patented medicine.

Although the expiry of the OxyContin patent is being met with concern, OxyContin’s replacement by OxyNeo has not been without controversy. In particular, critics of OxyNeo have alleged that Purdue Pharma Canada’s move to replace OxyContin with OxyNeo has more to do with the loss of exclusivity in the market that will occur once the ‘738 patent expires and generics enter the market then it does with drug abuse concerns (see link below). 

It will be interesting to see if market approval is given to generic OxyContin. Regardless of whether market approval is given to the generics, one can be certain that not everyone will be happy with the decision Health Canada makes.

http://news.nationalpost.com/2012/11/11/generic-oxycontin/ 

http://www.cbc.ca/news/health/story/2012/11/07/pol-oxycontin-oxyneo-generics.html

http://www.ctvnews.ca/health/generic-oxycontin-would-be-tragedy-ont-health-minister-says-1.1036120

http://www.thestar.com/news/canada/article/1165664--critics-allege-oxyneo-was-introduced-in-canada-because-of-impending-patent-expiry

By Claire Palmer

How IP Professionals Should Use Social Media to Optimize Industry Events

When it comes to the practice of intellectual property, everyone knows about the vast number of annual trade shows and conferences. Most IP professionals are required to attend at least one of these events per year to drum up new client work and maintain existing client relationships. The actual industry event usually consists of informational sessions, firm receptions and one-on-one meetings with clients and potential clients. Instead of moaning and groaning about how much your feet are going to hurt after running from event to event, I’m here to show you how you can use social media to optimize your event attendance.

Find the Event’s Social Media Accounts 

Prior to the event, find all of the event’s social media accounts online. There will most likely be dedicated Facebook Page, a Twitter account and associated hashtag and perhaps a LinkedIn Event. Follow, Like and RSVP to everything you can and read all the associated material online.

Join the Conversation 

Most IP conferences create a Twitter hashtag so that attendees can discuss the event prior and during the event.

For those of you not familiar with hashtags, here’s Twitter’s definition: The # symbol, called a hashtag, is used to mark keywords or topics in a Tweet. It was created organically by Twitter users as a way to categorize messages.

• People use the hashtag symbol # before a relevant keyword or phrase (no spaces) in their Tweet to categorize those Tweets and help them show more easily in Twitter Search. 

• Clicking on a hashtagged word in any message shows you all other Tweets marked with that keyword.. Hashtags can occur anywhere in the Tweet – at the beginning, middle, or end. 

• Hashtagged words that become very popular are often Trending Topics. 

Here’s an example of a tweet that includes a hashtag for an upcoming event that MBM is hosting:

Let People Know You’re Attending 

In the months leading up to the conference, let people know you’ll be attending the conference on Twitter, Facebook and LinkedIn. Use the hashtag in your tweets and write status updates on Facebook. Interact with other attendees online and start making plans to meet up during the vent. Most major events have an event called a “tweetup” where everyone that was tweeting about the conference prior to attending meets in person. If you can’t find an official tweetup consider starting one. Most tweetups are informal and can take place at a coffee shop or restaurant.

Take Pictures 

Take lots of pictures during the event and upload them to Facebook, Twitter and Pinterest. If you’re unfamiliar with how to upload pictures, consider sending the pictures to your administrator and have them do this step for you. Social media is all about building trust and relationships. Pictures put a face to the name.

Facebook Album

Twitter picture

After The Event 

Connect with each person you met on LinkedIn and follow them on Twitter. I find that some people keep their Facebook reserved for personal use so hold off on this step for now. If the connection works for a firm, consider “Liking” the firm’s Facebook page. Email each person you’d like to form a deeper relationship with and add them to your business development database. Remember, social media gives you, the attendee, the chance to build deeper relationships with a larger group of potential clients at industry events.

By Samantha Collier

A Dawn Of a New Copyright Reality in Canada - C-11 Implemented

Yesterday, November 7, 2012, saw the dawn of a new copyright reality in Canada. An overhaul of Canada’s copyright regime have been a long time coming with bills C-32, C-27, C-61, C-60 having died on their respective order papers due to elections being called or the proroguement of parliament. Bill C-11, a.k.a. An Act to amend the Copyright Act or the Copyright Modernization Act functions to implement of the World Intellectual Property Organization Copyright Treaty (WCT) to which Canada became a signatory on December 22, 1997. As I said, it has been a long time coming. 

The new copyright regime attempts to strike a balance between content producer’s rights and the ability of content user’s to deal with works in a fair manner. While the definition of “fair dealing” now explicitly includes the purposes of education, parody, and satire, it was not expanded further, as some advocates had hoped, to make the enumerated purposes illustrative by using “such as” language. 

Furthermore, exceptions to infringement were added to address the realities of digital society. These include:

• User-generated content for non-commercial purposes YouTubeTM videos which include music or video clips which are subject to copyright)
• Time shifting, format shifting, and the making of backup copies (PVRing your favourite program, copying it to your iPadTM and saving a copy in the cloud) 

In the context of educational institutions, new provisions have given certainty to certain aspects that are critical for these institutions to move forward in the digital era. The new provisions endorse but prescribe limits on distance learning, the use of electronic resources and interlibrary loans. 

Perhaps the most contentious issue to come into force is the provision regarding Technical Protection Measures (“TPMs” or “digital locks”); Canada’s new regime has been labeled by critics to be the most restrictive in the world. Under the new provisions, the circumvention of TPMs for virtually any reason is a separate act of infringement and vitiates the fair character of any dealing that may have existed. This will also extend to offering circumvention services and selling devices whose principle purpose is circumvention. The exceptions to these TPM provisions include circumvention for the purposes of law enforcement, interoperability, encryption research, security, privacy, unlocking cellphones, and enabling technology for persons with perceptual disabilities. 

Life within this new copyright reality starts now…

By Philip Oliver

Correction of Errors Introduced in the Naming of an Application at the Time of Filing or National Entry

Effective October 12, 2012 new guidelines came in to effect at the Canadian Intellectual Property Office relating to the correction of errors introduced in the naming of an Applicant at the time of filing of national entry. These guidelines can be found at: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03562.html 

The situations covered by these guidelines include: 

1. Where it appears that one of the joint applicants should not have been joined or that another applicant or other applicants should have been joined.  

2. Where the incorrect information on record results from an error that qualifies as a clerical error.  

3. Where the error in the petition, PCT Request, or request for entry into the national phase does not qualify as a clerical error.  

3.1 Where the requester establishes that the error was made in the naming of the correct applicant and did not result in the naming of an existing different entity.  

3.2 Where the error resulted in the identification of an incorrect applicant. 

It has been our recent experience that the CIPO will not proceed with requests made prior to October 12, 2012 but processed thereafter which fail to comply with these guidelines. When CIPO deems that they cannot proceed with the request, the CIPO is, in a letter, advising the Applicant of this and directing them to the new guidelines.

By Claire Palmer