Posts Tagged: "Canada"

Toronto Real Estate Board Dispute Shows Awkwardness of Copyright Protection for Databases

Legal protection for databases in Canada is, perhaps surprisingly, a little convoluted. In some jurisdictions, unique database rights have been legislated (e.g. the EU). This is not yet the case in Canada where protection instead comes from a patchwork of rights provided by different regimes. Traditional intellectual property (“IP”) rights provide some protection, but with sufficient gaps to make exclusive reliance on IP inadvisable… In the decision, the Competition Tribunal found that the information in the MLS database does not attract copyright protection. The decision sets out the Tribunal’s attempt to apply the relevant copyright case law to determine whether copyright subsists in the overall arrangement of information in the MLS database.

Supreme Court of Canada rules on Promise Doctrine in favor of Pharma Patent Owners

The Supreme Court of Canada issued a ruling in AstraZeneca Canada Inc. v. Apotex Inc., which gives patent owners a far greater ability to protect their intellectual property in the face of Canada’s Promise Doctrine, a part of Canadian patent law that requires an invention to be “useful” in order to be patent-eligible subject matter. The ruling is being heralded by patent owners, especially those in the pharmaceutical space, and it provides an interesting juxtaposition in contrast to recent United States policy, which has been tipping the scales in the favor of generic drugmakers over branded pharmaceuticals.

President-Elect Trump Says the TPP is Dead, but What Now for IP?

President-Elect Donald Trump has announced that he will withdraw the United States from the Trans-Pacific Partnership (TPP) agreement on his first day in office. So ends more than five years of often heated negotiations led by President Barack Obama’s administration as part of an overall strategy to strengthen the US position in the Pacific Rim region… Pulling out of the TPP is a missed opportunity for the US to pursue its IPR agenda in the Pacific Rim economies.

Don’t settle for less: Maximizing patent protection in Canada

Another unnecessary limit that US applicants almost always impose on themselves is in the number of claims. In Canada, there are no extra claim fees. As we all know, more claims are most of the times a good thing. In many cases, adding claims would require additional drafting and the applicant may not be willing to spend more on claim drafting. However, there are a few cases in which additional drafting efforts are small and for which adding existing claims to the Canadian patent application would be cost effective.

Canada is underestimated as a patent filing country for US applicants

Even with its relatively small population, Canada is the largest export market for the US, with about 200 billion dollars worth of exports each year. Exporting to Canada from the US is a well-known process, and an inventor or company wishing to do so will have no difficulty in finding a company that can handle all the required paperwork and logistics. Even if one does not wish to export to Canada, licensing or sale of a patent is always a possibility. I have many clients whose business model revolves around finding products that sell well in the US and which are likely to sell well in Canada, having these products manufactured in China, and selling them in Canada. I often get asked to confirm that one of these products is not protected by a patent in Canada. If there is no Canadian patent, my clients are able to profit from the US inventor’s ingenuity.

Canada’s Promise Doctrine Should Be a Warning to America

A recent Canadian survey (CRA Survey) has conclusively attributed lowered levels of R&D investment in Canada’s innovation ecosystem to the country’s unique judicial “Promise Doctrine.” The Promise Doctrine is a controversial patent elimination dynamic, judicially imposed during patent enforcement proceedings, often after a patented product has achieved its developmental endpoint, having successfully completed its long and costly commercialization. By its unpredictable applicability, like an unseen open manhole, Canada’s promise doctrine can cancel the benefits of a long journey at its market-ready endpoint… As the Survey suggests, long-lasting damage to Canada’s innovation ecosystem may already have occurred, which is why the Survey bears so heavily on the U.S. patent system’s own endpoint “open manhole”, Inter partes review (IPR). However Canada deals with its promise doctrine woes, we too have much to learn from this Canadian Survey.

Plain confectionery packaging a heavy-handed response to health concerns

Legislating for tobacco-style plain packages for confectionery is a disproportionate response to the obesity crisis and strips companies of valuable trademarks, writes the Institute of Economic Affairs’ head of lifestyle economics.

‘Plain packaging’ is a policy which eliminates all branding and visual design elements on products and forces manufacturers to use state-mandated colors and typefaces to create homogenized packaging with no differentiating features. Plain packaging is currently only applied to tobacco products in a handful of countries worldwide, but if health activists have their way that will change.

The China Syndrome: How recent developments in Chinese patents affect U.S. applicants

Chinese patents and patent applications are citable as prior art in most Western countries if they meet the usual criteria regarding publication dates of the cited patent and filing or priority dates of the examined patent. They always have been. However, recent developments have made them more problematic for Western country applicants, especially for independent inventors and small businesses… While in the past an inventor may have decided that it was not worth getting a patent, and many inventions have been forgotten in this manner, there is a large number of people in China who are now encouraged to file patents applications and utility model applications even for the simplest of invention. What we can do as patent agents and attorneys, is to start searching for Chinese documents when doing prior art searches. This may result in bad news for inventors who receive negative patentability reports, but at least they will not spend a lot of money only to have their patent application rejected later.

Trader Joe’s and Extraterritorial Application of the Lanham Act

Trader Joe’s sued Hallatt (d/b/a Pirate Joe’s) for trademark infringement in the Western District of Washington, invoking the court’s federal question and supplemental jurisdiction. Trader Joe’s alleged that: (1) Hallatt misled consumers into falsely believing Pirate Joe’s was authorized or approved by Trader Joe’s; (2) utilized a confusingly similar “South Pacific” trade dress for his Pirate Joe’s store; (3) displayed Trader Joe’s trademarks in connection with the sale of products at Pirate Joe’s; and (4) resold Trader Joe’s products without authorization and without adherence to Trader Joe’s’ strict quality control practices. Trader Joe’s claimed Hallatt’s behavior diluted its trademarks, confused consumers, and damaged Trader Joe’s reputation by associating it with high price, lower quality products. Trader Joe’s sought damages and to permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.

Protection of Official Names of States and Prevention of their Registration and Use as Trademarks

Protection of the official names of States and prevention of their registration and use as trademarks have been the focus of attention of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications at the World Intellectual Property Organization (the “SCT”) for over six years (since June 2009). Each of the WIPO Member States has both its own national procedures with their peculiarities and some coinciding positions on the subject. Generally speaking, when performing the examination, the competent national authority examines the sign applied for registration as a trademark and consisting of or containing the name of a State in light of formal and substantive legal requirements, like any other sign.

Minimizing costs while ensuring foreign patent maintenance fees are timely paid

A few years ago, a clearly irritated client asked me why European maintenance fees were so expensive. Apparently, he had consulted the EPO schedule of fees and found my recent quote to be much higher than the government fee. The final quote in this case was more than double the government fee, which itself is not a small amount as any practitioner who prosecutes European patent applications knows. I had not realized that the annuity payment firm I was using had slowly increased its rates over the years to an unreasonable level. This started a reflection on how to minimize costs to my clients while still ensuring that the maintenance fees were paid.

A NAFTA Challenge to Canada’s Patent Utility Doctrine is Necessary

Canada is not the first country that comes to mind as a threat to U.S. trade. After all, Canada is our largest goods trading partner, with $632 billion in total goods traded bilaterally during 2013. . . Over the last decade U.S. pharmaceutical companies have faced trade challenges in the form of a narrow interpretation of patent eligibility in Canada. Canada’s patent utility provisions are a serious threat to U.S. innovative industries, and therefore are legitimately being raised in NAFTA’s dispute settlement system.

Canada’s Copyright Modernization Act Comes Into Effect

After receiving Royal Assent on June 29, 2012, the provisions of Bill C-11 came into force on November 7, 2012. Titled the Copyright Modernization Act, it has garnered the nickname “Canada’s SOPA” by some media outlets (1), referring to the highly contentious Stop Online Piracy Act bill introduced in the US House of Representatives that led to both physical and digital(2) protests. Yet despite such bold claims, the Canadian amendment to the copyright act is a largely innocuous piece of legislation that falls in line with its stated objectives.

Northern Exposure: Pfizer Canada’s Viagra® Patent Invalidated

The Supreme Court of Canada rendered a decision on November 8, 2012 effectively canceling Viagra® Canadian patent a year and a half before its natural expiration date. This ends Pfizer’s exclusivity on the blockbuster erectile disfunction drug and opens the market up to generics. While certainly a press- worthy event, this decision does not change the Canadian patent landscape – but rather reinforces it.

Google Settles Copyright Dispute with Belgian Newspaper

This case started back in 2006, when the newspaper publishers took Google to court, stating that the popular search engine was infringing on their copyright. They had been trying to get Google to compensate them for using their online content, claiming that as more and more readers turned to the Internet to get their news, less and less readers were utilizing their printed versions. Under the new agreement, Google will team up with the Rossel Group, a major media group in Brussels that owns some of the top newspapers such as Le Soir and L’Echo; and the IPM Group which puts out publications L’Avenir and La Libre Belgique.