ipatents.ca: Patent Stories

As stated in the Supreme Court of Canada’s headnote (from a unanimous court with reasons for judgment written by Chief Justice McLachlin, released this morning):

The appeal from the judgment of the Federal Court of Appeal, Number A-208-09, 2009 FCA 246, dated August 14, 2009, heard on November 13, 2009, is allowed in part with costs to the respondent. The application for judicial review of the government’s decision and policy not to seek the repatriation of the respondent is allowed in part. This Court declares that through the conduct of Canadian officials in the course of interrogations in 2003 and 2004, as established on the evidence, Canada actively participated in a process contrary to its international human rights obligations and contributed to the respondent’s ongoing detention so as to deprive him of his right to liberty and security of the person guaranteed by s. 7 of the Canadian Charter of Rights and Freedoms, contrary to the principles of fundamental justice.

Joe Mullin profiles the Myriad patent story. The company’s seven patents have been challenged in the US federal district court by the ACLU on behalf of a number of scientific organizations and breast cancer patients, among others.

The patents protect isolated portions of the human genome, particularly covering tests that diagnose breast and ovarian cancer.

The case was filed in May 2009 and now the Court is dealing with motions for summary judgment:

Multiple amicus briefs have been submitted on both sides, and lawyers for the plaintiffs and defendants have filed summary judgment motions that they are scheduled to argue before Sweet on February 2, 2010.

Interestingly, the plaintiffs argue the Constitution: that the patents violate the First Amendment protecting free speech (DNA being an example of speech). The plaintiffs also argue that the patents protect “parts of nature” (a violation of section 101 of the US patent code). Myriad counters by arguing that the genetic material covered is “isolated and purified” DNA, patentable as a composition of matter.

The plaintiffs raise another Constitutional argument: that the Myriad patents have no rational connection to article 1, section 8 of the Constitution that allows Congress the right to make copyright and patent grants “to promote the progress of science and the useful arts”. As Mullin writes:

The doctors’ groups argue that Myriad’s patents “can be held as a matter of law to impede rather than promote the progress of science” and should be invalidated on summary judgment. Myriad’s lawyers counter that the Supreme Court gave Congress “considerable latitude” in deciding what kind of IP policies promote the progress when it decided Eldred v. Ashcroft in 2003. That was the case in which then-Stanford Law School professor Lawrence Lessig (now at Harvard) challenged the 1998 copyright extension (and lost). The Eldred decision, argue the defendants, gives Congress wide latitude in choosing the best IP policies, and provides the USPTO with “ample bases for concluding that these patents advanced” the cause of science.

Gilbert’s lawyer Alex Stack discusses the Datatreasury v. RBC decision (as yet unreported). He writes,

In DataTreasury, Claudio Ballard, the inventor of the patent at issue and a resident of the United States, engaged the American law firm of Pennie & Edmonds LLP to draft, file and prosecute his patent application. The professionals who dealt with the inventor were patent attorneys: lawyers also called to the U.S. Patent Bar as “patent agents”. The defendants, in litigation involving the corresponding Canadian patent, demanded production of communications between the inventor and the Pennie & Edmonds “patent agents” regarding the drafting and filing of the initial U.S. patent application. They argued that under Canadian law the Pennie & Edmonds professionals were clearly acting as patent agents, not lawyers, and under the Lilly Icos case communications with patent agents, domestic or foreign, were not privileged.

Prothonotary Aalto instead ruled that the communications were privileged, under both the common law “Wigmore” test, and as a matter of comity.

As suggested in the extract, the ruling is a departure from the caselaw and pushes Canadian law to line up more closely with US law.

There was a short posting on the CIPO news section on December 15, 2009. In non-descript language, the news item referred to a consultation on a proposal to “more closely align [the trade-marks legislation] with modern business practices and international standards”.

The major proposed changes include:

• implementation of the Singapore Treaty, which will require new forms of trade-marks to be protected (sound, colour, motion), plus the requirement of classification of wares and services under the Nice agreement.
• implementation of the Madrid system, whereby a Canadian registration could be obtained as part of a bundle of several national marks.

CIPO undertook a similar consultation in 2005, but abandoned the reforms. With many more countries ratifying and acceding to these international treaties, CIPO is once again consulting on these fundamental changes to the law.

WIPO overview of the 2006 Singapore Treaty.

WIPO overview of the 1891 Madrid Agreement and 1989 Madrid Protocol.

WIPO overview of the 1957 Nice Agreement.

The Canadian Bar Association, IP Section, has released a new set of case summaries (for July - September 2009).

Link to previous quarter’s cases.

A CIPO news item refers to the coming into effect on March 11, 2010 of a new practice notice curtailing the Office’s practice of granting multiple extensions of time to respond to an Office Action Report during trade-mark examination. A similar practice notice will also apply to industrial designs.

As stated in the practice notice:

Effective immediately, the Office will generally grant an applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiner’s report, if the request is justified. No requests for any further extensions of time will generally be considered.

Where there are “exceptional circumstances”, the Office may grant extra time. Examples of exceptional circumstances are provided in the practice notice.

The Economist on Nokia’s patent strategy (link):

When the company makes headlines these days, it is thanks to the patent lawsuits it has filed against Apple, which many have interpreted—perhaps unfairly—as an admission of commercial defeat.