ipatents.ca: Patent Stories

Off-topic: Supremes declare that Khadr deprived of human rights

Fri, 29 Jan 2010 10:47:01 -0500

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.

A myriad of gene patents

Mon, 25 Jan 2010 11:31:21 -0500

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.

Legal privilege extends to US patent attorneys

Thu, 21 Jan 2010 16:30:00 -0500

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.

IPIC analyzes Singapore Treaty - Report

Thu, 21 Jan 2010 10:32:19 -0500

IPIC analyzes Singapore Treaty - Report

Singapore and Madrid - major changes to Canadian trade-mark law proposed

Thu, 14 Jan 2010 17:29:28 -0500

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.

CBA Quarterly case summmaries

Wed, 13 Jan 2010 10:03:57 -0500

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

Link to previous quarter’s cases.

The jury in the i4i v. Microsoft case speaks.

Mon, 11 Jan 2010 10:53:15 -0500

The jury in the i4i v. Microsoft case speaks.

CIPO practice notice - extra 6 months only in TM prosecution

Mon, 11 Jan 2010 10:09:00 -0500

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.

Patent lawsuit - an admission of commercial defeat?

Fri, 08 Jan 2010 15:48:45 -0500

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.

A patent flame war on ipwatchdog.com.

Thu, 07 Jan 2010 00:45:37 -0500

A patent flame war on ipwatchdog.com.

Article on the Federal Court rule change re hot tubbing experts.

Tue, 05 Jan 2010 10:18:58 -0500

Article on the Federal Court rule change re hot tubbing experts.

Summary judgment rule change

Tue, 29 Dec 2009 17:03:00 -0500

The Federal Courts of Canada have released new SJ rules as advertised in the Courts’ Notice to the profession dated December 17, 2009. The RIAS indicates that one of the major additions is the new summary trial procedure, patterned after the BC rules (similar new rules are coming to Ontario in January - see the changes to Rule 20 as described here by Watson & McGowan).

Highlights of the new Federal Courts Rules include:

summary judgment motion to be heard by a judge, not a prothonotary
hearsay evidence not admissible
a party is generally limited to bringing one SJ motion
a response to a SJ motion must not speculate but must set out specific facts and adduce the evidence showing that there is a genuine issue for trial
the SJ motion may proceed even if there is a genuine issue for trial; a summary trial procedure is available in these instances
SJ motion not available in simplified action under rule 292

Does this rule change suggest that construction of patent claims could be done by way of summary judgment (similar to a US Markman hearing, once attempted by Canadian defendants without success in 2003/2004)?

Two holiday dot-ca decisions

Tue, 29 Dec 2009 16:39:00 -0500

In two recent cases, arbitrators deciding under the CDRP came to different conclusions. In hasbro.ca, the sole panelist ordered a transfer of the domain name from a cybersquatter to Hasbro Inc. But, in familyhonda.ca, the three-member panel rejected a transfer finding that the complainant car dealership had failed to prove any pre-existing rights in the trade-mark.

Vancouver Twenty-Ten

Tue, 29 Dec 2009 16:31:00 -0500

The Canadian Trademark Blog reports that Mukmuk the friendly marmot (pictured above) and his friends, the Olympic mascots, now have their names protected by recent amendments to the Olympic and Paralympic Marks Act. On December 24th, the federal cabinet added 38 new marks (4 words and 34 graphic designs) to the list of prohibited marks. Such marks are prohibited them from being used by any person (including businesses) for business purposes until December 31, 2010, unless a specified exception in the Act applies. See the CIPO newsflash for more details.

HST and patent royalties

Thu, 10 Dec 2009 16:00:00 -0500

The new harmonized sales tax (HST) is coming into effect in Ontario and British Columbia on July 1, 2010. A guidance document published on the Canada Revenue Agency website clarifies the transition rules through the use of the following example:

“You sold a patent to manufacture widgets and receive fixed annual royalty payments in respect of the sale. A royalty payment becomes due on June 20, 2010, but it is not paid until July 10, 2010. Since the payment becomes due before July 2010, the GST applies to the royalty payment, even though the payment is made on or after July 1, 2010.”

Does GST/HST really apply to these types of payments? A 2007 CRA bulletin seems to ignore the distinction between a sale and a license and suggests that, from a tax perspective, the question is whether there is a “supply” of IP to Canadian residents (for example):

“Taxable (other than zero-rated) supplies made in Canada are subject to GST at a rate of 6% [author: now 5%], or HST at a rate of 14% [author: now 13%] if they are made in the participating provinces of Nova Scotia, New Brunswick, and Newfoundland and Labrador. A “zero-rated supply” is a taxable supply that is subject to GST/HST at a rate of 0%.”

and

“[S]upplies of intellectual property (such as a patent or trademark) and rights to use such property are zero-rated if they are made to non-registered non-residents.”

Licensors of intellectual property in Ontario and BC should be aware of the HST and the HST transition rules, especially when selling to Canadian residents or certain non-residents where GST/HST may be payable.

As stated by the authors of the CF&P text on Commercial Transactions: Licensing:

“In any event, determining the tax consequences of a licensing agreement’s payment structure is typically a challenging process due to the inherent complexity of domestic taxation legislation and international tax treaties, and will, in many cases, necessitate the retention of expert advice.”

Package 1 of the new Patent Rules comes in to effect October 1, 2010

Wed, 09 Dec 2009 17:27:00 -0500

A CIPO news item refers to the publication of the rules in Part II of the Gazette on December 9, 2009. According to the news item, the rule change will achieve a number of ends including:

Simplify the definition of the term “description”;
Clarify the purpose of section 16(4);
Consolidate provisions that address the establishment of a filing date;
Clarify the confidentiality period;
Amend incorrect reference to a section of the Patent Act regarding the payment of maintenance fees;
Update the reference to the definition of “small entity” in Form 3 of Schedule I to the Rules;
Clarify Form 3 of Schedule I to the Rules; and
Simplify the completion requirements.

Interestingly, the somewhat opaque item number 7 will overhaul the troubled Declaration of Entitlement regime currently in place. It remains to be seen how this new section 37 of the Rules will be applied by CIPO. I think a short-form declaration of entitlement will be quite welcomed by PCT national phase applicants.

redbrickpizza.ca transferred

Mon, 07 Dec 2009 15:38:00 -0500

Redbrick Pizza’s CDRP complaint was decided in favour of the complainant on November 23, 2009. The panelist hearing the case ordered a transfer of the domain name redbrickpizza.ca to the operator of a chain of pizza restaurants.

The CDRP panelist accepted evidence that the registrant was a serial cybersquatter. The 3-part test (confusing similarity with the complainant’s mark, bad faith registration, and no legitimate interest) was met.

The registrant did not file a response to the complaint. The registrant was using a third-party privacy service (privacy.ca) to shield its contact information. This proved difficult when serving the complaint, but the panelist said:

“The Panel finds that the [arbitration service provider] has used all reasonable efforts to contact the Registrant at its postal and email addresses listed for service. The fact that the Registrant has chosen to use a third party privacy provider to receive and filter notices being sent to these addresses is a choice the Registrant is certainly free to make. However, such a choice does not under the Rules and cannot reasonably impose an additional burden on the BCICAC to look behind this third party provider to ensure that the Registrant has in fact received the Complaint and the subsequent notices sent to it.”

Revised MOPOP chapters - a first look

Fri, 04 Dec 2009 14:43:17 -0500

CIPO’s consultation has resulted in very few changes to the new MOPOP chapters 12 and 13. IPIC’s submission, echoed by others, which called for the scrapping of the new “field of technology” requirement, “form and substance” examination and examination for “contribution” was rejected without comment.

In the new Chapter 12 on subject matter, CIPO has arguably put business method patents to death by referencing its own decision in Amazon (now currently under appeal):

This [non-technological] exclusion applies to many types of commercial interactions, and in some contexts can be descriptively referred to as a “business method” exclusion as was done in Re Application No. 2,246,933 of Amazon.Com.
All of the foregoing [schemes, plans, rules, and mental processes], consequently, are not by themselves “inventions” within the meaning of
section 2 of the Patent Act… In Re Application No. 2,246,933 of Amazon.Com, such a conclusion was reached and was expressed by reference to an exclusion from patentability of “business methods”. The term
“business method” refers in such a context to a scheme or plan for conducting commercial interactions.

In the new Chapter 13 on Examination, CIPO has given the following new guidance:

Each claim must define a solution to a practical problem and must be supported by the description.
Identifying which disclosed solution the claim is directed to permits its essential elements to be identified.
It is important to remember that the analysis to identify the essential elements is performed in view of the common general knowledge of the person skilled in the art but before the matter of the claim is compared to the teachings of the prior art.
A patentable invention must be a novel, inventive technological solution to a problem in a field of technology, and each claim in an application must be examined to determine whether it defines such subject-matter.
By “substance” is meant the solution to a particular problem to which, in view of the specification as a whole, the applicant appears to be directing the claim.

In Chapter 13, one addition helpfully clarifies what information should be sent in to Examiners:

Applicants should generally not submit information which is readily available to the examiner (see below). The object of the voluntary submission of prior art is to expedite prosecution by bringing the attention of the examiner to documents that might otherwise not be immediately identified at the outset of examination. Where a document is identified to the Office, the applicant should generally not submit a copy of the document unless they have reason to believe that copies of that document will not be readily available to the examiner.

CIPO issues final revised MOPOP chapters

Fri, 04 Dec 2009 12:55:08 -0500

According to a news item posted on the news page, revised chapters have been issued with a December 2009 effective date. The new chapters include:

It’s not immediately clear how the chapters have been revised in response to the submissions received during the consultation.

Amazon 1-click appeal memo

Fri, 04 Dec 2009 11:29:55 -0500

The applicant’s appeal memo has been filed. Highlights from the memo include:

“The Commissioner’s decision to reject the ‘933 Application is wrong in law. The Commissioner relies upon inapplicable foreign law, and misstates and misapplies the binding jurisprudence of the Canadian courts on point (including the Supreme Court). In doing so, the Commissioner creates a new legal framework, in an apparent attempt, as a matter of policy, to change the approach of the Patent Office to the issue of patentable subject matter and the definition of “invention”. In the result, the Commissioner has decided that inventions of the kind at hand, and so-called “business methods” (as she characterizes them), will no longer be patentable.”

and

“Perhaps the most extraordinary aspect of the Commissioner’s decision is the per se exclusion for “business methods” which she creates.

The memorandum goes on to criticize the Patent Appeal Board’s narrow definition of “art” and its 2-step approach to claim construction.

Federal Court of Canada Docket No. T-1476-09 (court record).