Developments in Canadian IP law this summer
There have been a number of interesting developments in Canadian IP law during the summer of 2011.
Patents
On the patent side, these developments include:
1. The Amazon 1-click appeal was heard in June. Afterwards, lawyers for the government and Amazon were granted permission to submit additional written arguments about newly released decisions from the European and New Zealand patent offices related to the corresponding patents in those countries. A decision on the government’s appeal regarding the patentability of the 1-click invention is expected shortly.
2. While the Amazon appeal decision was under reserve, the Canadian Patent Office released patentable subject matter guidance interpreting the lower court’s judgment. Some practitioners have criticized the timing of this guidance, as the appeal decision could make this guidance obsolete. A review of the guidance would suggest that the Patent Office’s “form and substance” approach, largely discredited by the lower Court, has been resurrected in the guise of an “actual invention” approach.
3. In July, the Federal Court of Appeal released reasons in a significant patent appeal related to mechanical seals used in the oil and gas industry: Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228. The Court gave the inventor a wide berth to share prototypes with industry partners and did not consider such disclosures to be novelty-destroying “public disclosures”. But, in the most important part of the reasons, the Court said that misrepresentations to the Patent Office during patent prosecution do not give rise to an invalidity ground under s. 73(1)(a) of the Patent Act after the patent has issued. In the words of the Court (at para. 150):
“To be clear, the concept of abandonment in paragraph 73(1)(a) operates during the prosecution of the application for a patent. Its operation is extinguished once the patent issues.” [emphasis added]
It should be noted that s. 53(1) of the Act does give a challenger the opportunity to expunge the patent, provided the inventor/applicant made a material allegation in the petition that was intentionally misleading. However, the Court said that on the specific facts of the case, the failure to name certain individuals as inventors was not a “material” allegation or omission.
Trademarks
The profession is still digesting the consequences of the Supreme Court of Canada’s Masterpiece decision released earlier this spring (which decision reinforces that the “degree of similarity” between two trademarks is the most important factor in assessing confusion). Meanwhile, the Federal Court released an interlocutory decision in Target Brands, Inc. v. Fairweather Ltd., 2011 FC 758, continuing its long-standing practice of denying pre-trial injunctions in trademark cases.
Domain Names
A few developments to note with respect to domain names:
1. The registrar responsible for .xxx top-level domain names, targeted toward the adult online entertainment industry, has released the details of its sunrise program for trademark owners, adult-oriented or not, to register or block domain names incorporating their marks. Many big brands are complaining of a “shake down” in having to pay fees to defend their brands in the .xxx land rush.
2. In early August, the Ontario Court of Appeal decided Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548, and allowed Tucows’ appeal from the motions judge. The result is that the Ontario Court has jurisdiction to entertain the dispute between Renner, a Brazilian retailer, and Tucows, a registrar that owns a portfolio of domain names including renner.com. The appeal court concluded that the domain name <renner.com> is personal property in Ontario within the meaning of rule 17.02(a), and that the summary UDRP proceeding commenced by Renner does not preclude an Ontario action to determine rights to the domain name.
3. CIRA, the organization responsible for dot-ca domain names, will implement its new CDRP dispute resolution policy (version 1.3) to be effective starting August 22, 2011. Following the results of two rounds of consultations (discussed previously), CIRA have now decided to split the filing and panellist fees so the cost to commence a proceeding is only $1000, with additional panellist fees due later if the case is not settled.
