No Need to Fear a Green Christmas

Environment Canada’s weather forecast for Christmas is bleak. I am saddened to report that most of Canada will have a Green Christmas according to CTV News. 

Never fear there are options available as evidenced by a review of the Canadian Intellectual Property Patent Database. A search of the database using the term “snow making” revealed 47 patents and applications directed to making snow. 

They include Canadian Patent No 2,237,428 entitled a “METHOD AND APPARATUS FOR MAKING SNOW” which is directed to a snow making tower that discharges pressurized air and water through nozzles to form plumes of atomized water for producing snow in subfreezing conditions. 

There are also options available to those individuals that would rather stay inside, including Canadian Patent No. 1,332,517 entitled “SNOW MAKING EQUIPMENT” which is directed to methods and equipment for making snow in an indoor environment over extended period. 

Regardless of what your plans are for over the holiday season, we at www.CanadaIPblog.com wish you a safe and happy holidays and a prosperous New Year.

By Claire Palmer

When Inventors Don't Get Along: Baksh v. Probiohealth, LLC, 2012 FC 1388

The Federal Court of Canada recently reviewed the decision of the Commissioner of Patents to remove Mr. Bing Baksh as a named inventor on Canadian Patent Application No. 2, 503,510 (‘the ‘510 application). A copy of the decision can be found at the following link: 

http://decisions.fct-cf.gc.ca/en/2012/2012fc1388/2012fc1388.html 

This is an interesting decision with respect to whom the Patent Office can communicate with respect to a patent application and in particular with respect to changes in inventorship. Perhaps most interestingly, this case highlights that the Canadian Patent Act does not provide a mechanism or forum to address all issues relating to inventorship and ultimately ownership of the inventions claimed in an application. 

The issues addressed in this decision can perhaps be distilled down to the following - What recourse within the context of the Patent Act does a named inventor have to prevent their removal from the patent application? Or rephrased – Does a named inventor have a legitimate expectation that he/she could make submissions to the Commissioner of Patents in relation to requests by the authorized correspondent to have them removed as an inventor. 

The Federal Court determined that the inventor “could not have had a legitimate expectation that he would have an opportunity to make submissions.” (Paragraph 30). The reasons for this are 1) Rule 6(1) limits who the Commissioner of Patents can communicate with respect to a pending application and 2) Section 31(3) of the Patent Act does not provide for submission of affidavits by the inventor that is being removed. 

In particular, for patent applications where the Applicant is not the inventor, Rule 20(1) requires that the Applicant appoint a patent agent to prosecute the application. The ‘510 application was filed in the name Probiohealth with Gowling Lafleur Henderson appointed as patent agent. 

To whom the Commissioner of Patents can communicate with respect to a pending application is set forth in Section 6(1) of the Patent Rules. Section 6(1) states: 

6. (1) Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent. The authorized correspondent is defined in Section 2 of the Patent Rules as follows: “authorized correspondent” means, in respect of an application, 

(a) where the application was filed by the inventor, …. 

(b) … 

(c) where paragraphs (a) and (b) do not apply, a patent agent appointed pursuant to section 20;

Accordingly, for the ‘510 application Gowlings was the authorized correspondent and therefore the Commissioner of Patents only had authority to communicate with them and had no discretion to communicate with or accept submissions from Mr. Baksh. 

It is apparent from this case that the Patent Act does not provide recourse to named inventors during an inventorship dispute with the Applicant. That being said, depending on the fact situation, it does not mean that there are no options available to such inventors, this is especially true if there are contracts or agreements in place that govern the relationship between the parties thereby providing jurisdiction to the provincial courts.

By Claire Palmer

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

Brand New Patent Prosecution Highway pilot between the Canadian Patent Office (CIPO) and the Israel Patent Office (ILPO)

The Canadian Patent Office has announced a new Patent Prosecution Highway (PPH) pilot project between the Canadian Intellectual Property Office (CIPO) and the Israel Patent Office (ILPO) which will commence on November 1, 2012, for a period of two years ending on October 31, 2014. This agreement is similar CIPO's other PPH agreements. The PPH allows a patent applicant to request the CIPO for accelerated examination of a patent application that meets certain criteria to be advanced out of turn for examination if there is at least one corresponding application in a foreign patent office that Canada has a PPH program with that has one or more claims that were found to be allowable.

See the link below for further information:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03564.html

In addition, see our blog dated October 5, 2012 regarding other PPH agreements:
http://www.canadaipblog.com/2012/10/three-patent-prosecution-highway-pilot.html

By Kay Palmer

Expedited Examination of Patent Applications Relating to Green Technology

Under Section 28 of the Patent Rules applications relating to green technologies may be eligible for expedited examination. Applicants wishing to take advantage of this initiative and expedite examination of their applications describing green technology must submit a written request for expedited examination to the CIPO along with a declaration “indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.” 

Additional information relating to expedited examination of patent applications relating to green technology can be found at: 

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02991.html 

There are currently 70 applications expedited under this initiative. A listing of applications can be found at:

http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/green_technologies.html 

Applications recently listed include:

By Claire Palmer

Filing of Prior Art in Canada and Other Jurisdictions as a Means of Getting Prior Art in Front of the U.S. Examiners

Third Parties wishing to impact the scope of a competitor’s pending application at the USPTO have the option of submitting relevant prior art to the USPTO. The opportunity for a Third Party to submit printed documents to the USPTO is limited. 

New Rules took effect on September 16, 2012 which expanded the window of opportunity for a third party to submit printed documents. Third-Party Submissions must be made (1) before the later of (i) 6 months after the date the application is first published by the Office, or (ii) the date of a first Office action on the merits rejecting any claim, and (2) before the date a notice of allowance is given or mailed. 

Although the new Rules provide an improved opportunity for third parties to submit prior art, it may be desirable for a Third Party to take steps that would result in the presentation of new prior art to the USPTO examiner after the above noted dates. The U.S. duty of disclosure requirements together with mechanisms of filing prior art in other jurisdictions provide a possible avenue via which new prior art could be brought to the U.S. Examiner’s attention. In particular, a U.S. Applicant would be obligated to provide to the USPTO prior art filed in relation to a corresponding application in a jurisdiction other than the U.S. 

Jurisdictions including Canada provide for a third party to submit prior art in relation to a pending application. Under section 34.1 of the Canadian Patent Act, “[a]ny person may file with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications,that the person believes has a bearing on the patentability of any claim in an application for a patent.” The Canadian Patent Act requires “a person who files prior art with the Commissioner under subsection (1) shall explain the pertinency of the prior art.” Other jurisdictions which allow for the submission of third party observations include the UK and Europe. 

Accordingly, the filing of prior art in jurisdictions such as Canada can provide a cost effective means of drawing prior art to the attention of the U.S. Examiner.

By Claire Palmer

Update - EPO Enlarged Board Referrals Regarding Patent Defence

MBM recently received an interesting update from Harrison Goddard Foote detailing lessons from recent EPO Enlarged Board Referrals regarding patent defence. In this update HGF provide guidance to patentees on claiming strategy in opposition defence, noting that: 

Patentees facing opposition are well advised to think ahead and at least by the stage of reply to the Summons to Oral Proceedings before the OD endeavour to have on file any claim requests that could be required to save the Patent. Auxiliary claim requests should be structured on the basis that added subject matter, novelty and inventive step can be expected to be considered and decided upon at oral proceedings in that order. Where an OD sees that a simple new request will overcome an issue, particularly where this will permit full discussion of all objections at first instance and/or if the issue is unexpected, then they may well be helpful in offering the Patentee opportunity for further such amendment on the day. Such offer should only be overlooked where it is clear that there can be no commercial worth in the possible amendment. On occasions it may be far better to secure maintenance of a European patent with narrower claims before an OD and appeal rather than see complete revocation. 

The full update from HGF can be found at http://www.hgf.com/uploads/Lesson%20from%20recent%20EPO%20enlarged.pdf.

By Claire Palmer

Three Patent Prosecution Highway Pilot Project Agreements Extended

Canada’s pilot Patent Prosecution Highway (PPH) agreements with Finland, Germany and Spain were set to expire on September 30, 2012. The agreements have now been extended for an additional two years, and will expire on September 30, 2014. Canada entered into pilot PPH agreements with Finland, Germany and Spain on October 1, 2010. 

The PPH project allows a patent applicant to request the Canadian Intellectual Property Office (CIPO) for accelerated examination of the patent. To qualify for prioritized examination under the PPH the patent applicant must have an application corresponding to the Canadian application before the Intellectual Property Office (IPO) of a partner Country. Additionally, the partner Country’s IPO must have determined at least one claim of the corresponding application to be allowable. The examination of the Canadian application will still occur in accordance with the Canadian Patent Act, R.S.C. 1985, c. P-4 and the Patent Rules SOR/96-423. 

Canada currently has one PPH agreement with the United States, and four additional pilot PPH agreements with Denmark, Japan, Korea, and the United Kingdom. Accelerated examination under the PPH may also be sought under the Patent Cooperation Treaty (PCT) where CIPO is the designated International Searching Authority and/or International Preliminary Examining Authority.

By Jahangir Valiani

Best Mode in Canada

As originally posted in MBM's September Newsletter on September 1, 2012

In the United States according to 35 U.S.C. 112 “the specification….shall set forth the best mode contemplated by the inventor of carrying out his invention.” As is readily apparent from this language, this best mode requirement for U.S. patent applications is relevant to all technologies.

In Canada, according to Section 80(1)(f) of the Patent Rules, the description shall set forth at least one mode contemplated by the inventor for carrying out the invention in terms of examples. Furthermore, there is a best mode requirement specifically defined in the Patent Act, however it is not as definitive as that of the United States. In Canada, Section 27 (3) of the Patent Act defines the requirements of the specification for a patent application. This section outlines the necessary requirements of the specification which include for example, correctly and fully describing the invention, setting out clearly the various steps in a process, method of constructing making or using a machine manufacture or composition of matter. However, when outlining the requirement of best mode, this section of the Patent Act solely limits the best mode requirement to a machine. Specifically, Section 27(3)(c) defines that the specification of an invention must “in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle”.

It is important to note that the requirement of disclosing the best mode in a specification has essentially been extended to all technologies and not just limited to a machine type invention, based the outcome of the Federal Court Trial Division decision regarding Thomas & Betts Ltd v. Panduit Corp. (1997). The Court determined that the inventor has a duty with the fullest of bona fides to describe the best way known to them of carrying out the invention.

When determining what to integrate into a patent application in terms of describing the best mode, it is important to consider the relevant date with respect to testing for the best mode. In the past, this relevant date had been determined to be the filing date of the patent application or the Paris Convention priority date, if this is deemed relevant to the particular case. However, in 2000 the Supreme Court of Canada established the relevant date in two separate decisions, namely Free World Trust and Whirlpool. The SCC firmly established that the relevant date is the date when the public first became aware of the patent application, which is typically 18 months after filing.

It is apparent that this revision to the relevant date for determining the best mode may cause some potential issues when one considers the language of Section 27(3)(c) of the Patent Act, wherein it is defined the requirement relates to the best mode in which the inventor has contemplated the application of the principle of the machine.

As is known, no new subject matter can be added after the filing date of the application. Rather, all amendments must be fully supported by the application as originally filed. As such there is a potential incongurence regarding the disclosure requirement of the best mode, particularly if the best mode has been “contemplated” by the inventor after filing of the application but before its publication.

As such, when preparing a patent application for an inventor, it can be advisable to ask the inventor to speculate as to potential improvements to their technology, and to integrate these potential improvements into the application, assuming that these potential improvements have a reasonable probability of success. In this manner, should it be later established that at the time of publication the best mode includes one or more of these potential improvements, it can be argued that the best mode has been appropriately disclosed in the patent application in question.

For more information please contact Stuart Bristowe

Pinterest and Copyright – A Work in Progress

Pinterest is one of the fastest growing websites on the internet with traffic monitoring service Alexa Internet, Inc. currently ranking it as the 41st most popular website globally. The social media service allows users to pin content (i.e., links to images, videos, websites, etc.) and manage theme-based collections.

One differentiating factor with Pinterest is, unlike Facebook or Twitter on which users post primarily personal information and content, Pinterest’s users post interesting content from third party websites.

Copyright Quandary

The contentious issue at play is in regard to users postingthird party copyrighted material. In the Terms of Use to which each user must comply, the user agrees that the liability is put on the user to ensure that no infringing content is put on Pinterest. Furthermore, the user indemnifies Pinterest of all legal liability arising from posting of third party copyrighted content.

This legal liability issue has been well publicized recently and many public figures are questioning the legitimacy of such contractual provisions. Upon doubts and pressure to clarify their stance on copyright, Pinterest released a statement in March on the very issue citing that:

“Pinterest is a platform for people to share their interests through collections of images, videos, commentary and links they can share with friends. The Digital Millennium Copyright Act (DMCA) provides safe harbors for exactly this type of platform. We are committed to efficiently responding to alleged copyright infringements…”

Pinterest has revisited their disclaimer of copyright to users to make it easier to understand by drafting provisions in plain English and less legalese, and also by providing embedded hyperlinks to resources which aim to educate users on copyright law.

Business - Driver of Change

Currently Pinterest is in the unencumbered stage of growing and acquiring its critical mass of users. However, it stands to reason that the major financial backers of the platform will demand a monetized model eventually to recover their investment once the critical mass is obtained.

At that point, the site will be a much bigger money generator than it is currently which will make it a much more publicized and juicier target for third parties whose intellectual property rights are being infringed.
The safe harbour provisions of the Digital Millennium Copyright Act (DMCA) alluded to in the statement above stand to be tested and will be under much further scrutiny once the commercialization of the site takes full shape. From Pinterest’s perspective, hopefully they can pin the right balance between adhering to content creators’ rights while still providing a dynamic social sharing experience for their user base.

By Kamaldeep Singh Sembi 

Scott Miller Successfully Sets Aside a Decision of the Commissioner of Patent Office to Irrevocably Lapse a Patent

Scott Miller and the MBM Litigation Team successfully sets aside a decision of the Commissioner of Patents to irrevocably lapse a patent - not once but twice!

Repligen Corporation v. Canada (2012 FC 931) is the second time the Federal Court has told the Commissioner of Patents that it is necessary to consider how a patent applicant will be effected by its decision before the Commissioner exercises its discretion under s.8 of the Patent Act.

The Repligen decision is important for two reasons: (1) It clarifies what a clerical error is under s.8 of the Patent Act and (2) provides direction as to the discretion of the Commissioner of Patents.

In Repligen, the patent holder, through an annuity company made annuity payments but these payments were applied to a different patent. The annuity company submitted sufficient funds and the correct patent owners name but two characters in the patent number were inverted. The Patent Office declared that the Repligen patent had lapsed irrevocably.

In the Federal Court’s original 2010 judicial review of this matter, the Commissioner of Patents was ordered to reconsider the exercise of its discretion under s. 8 of the Patent Act. Justice Lemieux had found that the Commissioner failed to properly exercise her discretion by only considering two factors: the delay in seeking correction of a reversal of two digits in the patent number and any possible third party prejudice. The Commissioner’s decision was set aside and reconsideration of the correction request by a different Patent Office official was ordered.

In sending back the decision to the Patent Office at the time, the Federal Court had offered direction as to what the relevant factors to be considered, in addition to the two previously considered, ought to be:

• the impact on Repligen, the Applicant;
• the fact that Repligen's payment was received by the Commissioner and appropriated to another patent;
• the fact that Repligen's payments were made on the due date;
• the remedial scope of section 8 that would have the effect that the '486 patent never lapsed for non-payment;
• the purpose and object of the maintenance fee provision in the Act;
• the possible prejudice to third party rights ought to be based on actual evidence, not the likelihood that third parties would be affected;
• the necessity to weight and balance all relevant factors before exercising her discretion.

The July 27, 2012 decision by Justice Near set aside a second refusal by the Commissioner to exercise her discretion. The Court determined that the Commissioner had erred in the weighting and balancing of relevant factors, as noted above. In particular, it was determined that too much emphasis was put on the due diligence required of the Applicant and that considering s.8 as an extraordinary remedy put an undue burden on the requesting party. When considering the correction of this clerical error, the Court emphasizes that the proper considerations ought to have accorded significant weight to the possible impact on the Applicant, a balancing of this impact with the possible prejudice to the affected third party patent holder, and in particular a realization that both the Applicant and the affected third party made efforts to comply with maintenance fee provisions and that such payments were made in furtherance of the purpose of the legislation: to defray the costs of the Patent office and avoid deadwood patents.

The Federal Court has sent the Commissioner’s decision back to be reconsidered by a different decision-maker within the Patent Office.

For more information please contact Scott Miller

Supreme Court releases rulings for string of Copyright Law Cases

The Supreme Court of Canada issued rulings on five separate cases dealing with Copyright Law. This fresh jurisprudence should serve to give a refined understanding of one of the more contentious provisions on the Copyright Act, namely s.29 (fair dealing).

The Alberta v. Access Copyright case drew large public interest as it had implications to drastically change the current licensing business model between copyright collectives and educational institutions. In this case a teacher photocopied copyrighted material for a student for “research or private study”. The Copyright Board of Canada ruled that although the purpose was for private study, the actions did not amount to fair dealing with respect to s.29 of the Copyright Act for failing to be “fair” according to the legal test which analyzes six separate factors. The Majority of the Supreme Court came to the alternative outcome ruling copying of copyrighted work for the classroom constitutes fair dealing and no royalty should attach. Consequently, Access Copyright (the copyright collective in this case) stands to lose millions of dollars from royalties it would have collected from schools across the nation.

The SOCAN v. Bell, ESAC v. SOCAN, and Rogers v. SOCAN cases provided discussion and clarification with regards to specific digital services provided and whether royalties should attach. In SOCAN v. Bell, the court ruled that streaming previews of songs constitute fair dealing as it is reasonably necessary to help consumer research what to purchase, and therefore royalties should not attach. Moreover in ESAC v. SOCAN, the court ruled that downloading a game which contains copyrighted musical works does not constitute “communication” to the public and therefore royalties should not attach. In the Rogers v. SOCAN case, the court differentiated the acts of streaming and downloading music. Only the former is subject to royalties collected by copyright collectives.

Finally a reference case of Re: Sound dealt with the issue of whether a “soundtrack” being part of a motion picture constitutes a “sound recording”, and therefore becomes subject to pre-defined tariffs. The Supreme Court ruled a “soundtrack” is a “sound recording” in all situations except when it accompanies a motion picture, as expressly set out in s.2 of the Copyright Act.

Throughout these cases the Supreme Court has added more clarification to the required tests for fair dealing which should help both copyright holders and users understand the legislation with greater accuracy.

If you have any further inquiries please contact Scott Miller or Randy Marusyk.

By Kamaldeep Singh Sembi

This article originally appeared on www.mbm.com on July 12, 2012.

Oracle v. Google: Judge Alsup sets the record straight

Illustration of the Oracle v. Google trial in San Francisco U.S. District Court on April 24, 2012: Oracle Attorney David Boies (center) questions Google's Executive Chairman, Eric Schmidt.  Judge William Alsup seen on left presiding on bench. (Credit: Vicki Behringer)

Over the past few months drama was unfolding in a San Francisco courtroom built up as the “smartphone trial of the century” wherein Oracle had sued Google over copyright infringement and patent infringement. The alleged misconduct was in relation to Google’s unlicensed use of Java on its popular Android mobile operating system. Oracle further alleged Google knowingly used the Java APIs without acquiring a license.

The copyright infringement aspect of the trial was of key public interest as the issue surrounding Google’s use of 37 Java APIs used on the Android mobile operating system had large implications for software developers worldwide in clarifying the boundaries of general public licenses. 

The Issue 

It is accepted that computer programming languages inherently are not subject to copyright. The issue becomes much more nuanced when dealing with the corresponding APIs. 

APIs (Application Programming Interface) can be thought of as a specification allowing developers to interface their software with the native software of the API. 

Google argued that Java is a programming language and therefore free to use. In similar fashion, the corresponding APIs cited in the case, which are required to implement the language, should also free to use.

What Happened in Court 

Presiding Judge William Alsup, sitting at the center of this high profile case with two of Silicon Valley’s top companies, seasoned technology lawyers, and international media, released his decision on May 31st 2012. In the decision Judge Alsup stated that the contested 37 APIs owned by Oracle, which were used by Google on the Android platform, are not subject to copyright. Judge Alsup further elaborated: 

So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API. It does not matter that the declaration or method header lines are identical. 

When there is only one way to express an idea or function, then everyone is free to do so and no one can monopolize that expression. And, while the Android method and class names could have been different from the names of their counterparts in Java and still have worked, copyright protection never extends to names or short phrases as a matter of law. 

Are all Java APIs free sans license? 

It is important to understand the scope of the decision and carry forward the correct application. In this particular instance with the cited 37 Java APIs owned by Oracle, the APIs were not subject to copyright law due to there being a single mode of expression regarding the functions within the impugned APIs. 

It would be erroneous to claim that all Java APIs are not copyrightable and therefore require no license to use in any application of software development. Judge Alsup further states: 

This order does not hold that Java API packages are free for all to use without license,… 

It does not hold that the structure, sequence, and organization of all computer programs may be stolen. Rather, it holds on the specific facts of this case, the particular elements replicated by Google were free for all to use under the Copyright Act. 

What happens next 

Oracle has stated that it will appeal the U.S. District Court’s decision and maintains its original stance stating: 

Oracle… will vigorously pursue an appeal of this decision in order to maintain that protection and to continue to support the broader Java community…  

Google's implementation of the accused APIs is not a free pass, since a license has always been required for an implementation of the Java Specification… 

Stay tuned.

By: Kamaldeep Sembi 

Social Media Driven Referrals

What is the number one source of incoming work and your business and/or law firm? I’d guess with 99% certainty, your answer will include something along the lines of word-of-mouth recommendations and/or personal referrals. In an age where 850 million+ people use Facebook, and over 75% of the population uses the Internet on a regular basis, how does social media influence these referrals and recommendations? The answer may surprise you. 

Let’s pretend you are looking for a mechanic to work on your car. You remember that your friend spoke highly of his mechanic, Joe Smith, and gave you his card. After rummaging through your kitchen drawer, you find Joe’s card as well as Peter Ward’s flyer you received via mail. Peter’s flyer looks pretty awesome so you decide to do some further research on the Internet. When you type in Joe Smith’s name you find zero results; no website, no YELP review, nothing. Even though your friend spoke highly of him, you’re left wondering why he’s absent. On the other hand, when you search for Peter Ward, you’re met with a nicely designed website, client testimonials, links to more positive reviews on Yelp, and a professional video inviting you to learn more about Peter. Overall, what would your thoughts be? Who would you contact?

Understandably, law firms are definitely not car mechanics, I get that. But the situation carries on to every relationship you have. Whether it’s a golf game while on a conference, or an afternoon lunch, we receive personal referrals on a regular basis. 

Did you know 70% of corporate counsel and legal staff turn to online lawyer profiles such as LinkedIn to identify, evaluate and validate credentials of outside counsel? If your name came up, would he or she be able to find something credible? Or would your competition have an advantage? Also, according to Green Target, in-house counsel are largely ‘invisible users’ of social media, preferring to listen and consume. This makes their true level of engagement hard to measure. 

What does this all mean to you? Glad you asked. It means you need to have complete, optimized and up-to-date profiles on LinkedIn, Marindale Hubbel and whatever other social networks you chose to use. You need to make sure your friends, co-workers, school mates, and family know about your networks and what type of work you do. You need to communicate that you want referrals, and are open to giving referrals as well.

By: Samantha Collier

Facebook Patents the News Feed

Just in case you were thinking of patenting a Facebook-ish newsfeed, you’re out of luck.  Facebook has been granted another patent related to the always popular News Feed.  Better luck next time! The title of the patent is, “Communicating a newsfeed of media content based on a member’s interactions in a social networking environment.”U.S. Patent No. 8,171,128 credits Mark Zuckerberg, founder and CEO of Facebook, as one of the inventors. 

Here’s a breakdown of what some of the patent covers:

• Facebook keeps a database of all personal profiles
• This database saves information such as the relationships between users 
• The system creates “news stories” based on the actions of each user. 
• The system watches for actions taken in response to various “news stories” whether an interaction with another user, like clicking a like button, and then feeds this story back into the pool available for news feeds. 

Facebook is working hard to lock down the functionality of their beloved News Feed.  For those of you not among the 850 million+ Facebook users, the News Feed allows users to see status messages, videos, shared articles, albums, among other actions, and is displayed prominently on the home page of each Facebook profile.  It was first launched in 2006 and has become an integral feature within Facebook. 

Why would Facebook want to patent the News Feed? In a nutshell, it allows Facebook to protect and enforce its Intellectual Property against competitors such as Google’s latest social network Google+, Twitter and/or Myspace.  

Nobody knows what Facebook will do when it comes to enforcing their patent rights.  Should they try and make their News Feed a Facebook-Only feature, the future of many other social networks is in question.

By: Samantha Collier

Computer Implemented Inventions - the Steampunk Test

Computer implemented inventions are often the subject of increased scrutiny at the Patent Office. Debates about software patents and business method patents contribute to this state of affairs, as does the very fact that computers themselves are flexible data processing machinery. To wit, since computers can perform so many functions so easily, is it obvious to implement a particular one of these functions? 

An oft-cited guiding principle concerning computer implemented inventions comes from the 1981 case between Schlumberger Canada Ltd. and the Commissioner of Patents, and states that the presence of a computer cannot effect the "transforming into patentable subject-matter [of] what would, otherwise, be clearly not patentable.” However, and conversely, merely using a computer to implement an invention should not count against the merits of the invention. 

As some readers will know, Steampunk is a science fiction genre in which steam power, intricate systems of gears, sets of ornate control levers, dials and generally shiny brass gadgets are used in place of modern electronics, computers and other machines. This imaginative genre not only entertains and sparks the imagination, but also allows one to re-frame questions about patentable subject-matter, novelty and obviousness, which so concerns us when pursuing patent protection. 

Specifically, the next time you are considering the patentability of a computer-implemented invention or developing claims for one, try the following conceptual exercise. First, re-envision the invention in its “steampunk” form. Replace power supplies with a coal-powered steam engine, computer programs with intricate systems of mechanisms and gears, and user interfaces with knobs, dials and levers. Cut away all the mental and legal clutter that surrounds computer technology, peek inside the machine, and consider its overall function in a Sepia-toned world. Re-frame patentability questions. For example, you might ask “Are there any particular new and inventive functions provided in the internal workings (gears) of the steampunk version of the invention?” or “Assuming that all of its basic building blocks (e.g. steam engines, gear systems, etc.) were known, would the steampunk version of the invention be patentable as a new combination of known building blocks?” You might also want to try writing a patent claim that covers both the original and the steampunk version of the invention. 

Stepping back from an invention and revving up your imagination can be a great way to generate ideas, expand inventive concepts, and avoid some of the subject-matter pitfalls surrounding computer implemented inventions. Just don’t expect the Patent Office to grant you a patent for your steampunk version without a working model.

By Michael Maskery

Apple in Trade-mark Purgatory

The Apple dispute is a reminder that in the Chinese market, strict compliance with the law is necessary, but is not sufficient. 

Apple thought it had purchased the worldwide rights to the iPad trade-mark. The original owner, Proview, maintains that it still owns the mark within China. The courts and the Chinese government are caught between not wanting to put Proview out of business, and not wanting to embarrass Apple and face the resulting consumer anger and loss of tax revenues if Apple withholds its new products from China. On the other hand, China is a huge market for Apple, and it would be a significant cost to Apple if they limit sales there. Both of the parties are presumably furiously lobbying the government. While the courts, government and Proview would clearly be happiest with an out of court settlement, it is not clear if this is going to be acceptable to Apple. It is also not clear what the dollar amount of any settlement might be: Apple had paid about $55,000 for the mark and Proview is now claiming about $1.5 Billion in damages. 

 The Apple case is a good illustration of some of the issues that can arise in Chinese legal disputes. Courts in China are very much a part of the government bureaucracy, and any legal dispute can have a political dimension. Having good relationships with local authorities and decision makers can be critically important, both to avoid serious disputes, and also to find a liveable solution to any disputes that may arise. Even when one party seems to be clearly in the right, there may be political reasons why a court wants to force a settlement rather than decide against one party or other. The authorities routinely launch campaigns to showcase their efforts against IP infringement (amongst other things), and whether you become a target or a beneficiary of those campaigns may depend on who your friends are. China has mandatory government approval processes that may involve significant amounts of discretion, corruption is a well known problem, officials may be poorly trained, and regulatory processes are often far from transparent. Doing business there can have more than its share of hidden dangers. 

None of this means that the law is irrelevant. A party that does not comply with applicable laws and regulations is going to have a hard time arguing its case. If you show up at the local IP administration office asking for help against infringers and it turns out that you haven’t registered your trademark, and didn’t get the necessary government approvals for your business, you are not going to get much sympathy and your friends are going to find it very difficult to help you. 

Apple clearly think they took all the right legal steps to purchase the iPad mark in China, but they are still dealing with huge mess. How the dispute gets resolved is going to depend on more than just whether they have the right bits of paper.

By: Euan Taylor

Google Copyright Test Case draws much attention in clarifying responsibility of Video Sharing Websites

On April 20, 2012 a German court in Hamburg ruled on a case initiated by GEMA, a performance rights organization in Germany representing over 60 000 artists collectively, alleging copyright infringement of 12 separate music clips hosted by Google’s YouTube. GEMA alleged Google of not taking the requisite amount of care to prevent the illegal sharing of copyrighted material. 

What the court said 

The issue at bar was whether Google had effective mechanisms in place to prevent the illegal sharing of copyrighted material on its video sharing website. The court found in favour of GEMA, stating Google had not satisfied the required diligence to prevent the spread of such material. 

However, this case should not be viewed as a resounding victory for GEMA, as one should interpret the comments made by presiding judge Heiner Steeneck: 

But Google isn't the perpetrator here, it's those people who illegally upload songs,…that's why Google doesn't have to search all videos uploaded in the past. It only has to help detect videos from the moment it is alerted about possible violations. 

Google maintained that it provides satisfactory mechanisms to detect violations of copyrighted material, while GEMA argued these mechanisms should be expanded. The court ruled that Google must add a “word search” in addition to the already existent “ContentID search” which allows searches for audio content in greater detail. This additional search will give rights holders a more effective way to search and determine if their work is being illegally distributed. 

Why it’s important 

One of the drawing features of this case is that it will likely serve as a heavy precedent, in Europe especially, with respect to the framework used for copyright infringement analysis of video sharing websites. The main question answered was not whether Google is responsible for the content its users post; but rather how much responsibility falls on Google’s shoulders, and how prudent their actions must be to satisfy copyright law. 

Furthermore, international parties are keenly interested for their own vested interests in determining whether precautions should be implemented to guard against potential findings of copyright infringement with respect to their actions. In Canada specifically, with the impending release of the Copyright Modernization Act Bill C-11, this may become a live issue sooner rather than later for both rights holders groups and video sharing websites.

By: Kamaldeep Sembi