The Humboldt Broncos, the hockey team who’s team members were involved in a tragic bus crash in 2018, have secured trademark registrations for their name and logo. The team registered the trademarks in part to deal with unauthorized uses by third parties.
Read more here.
We are pleased to announce that Oyen Wiggs has been ranked by The Globe and Mail and Statista as one of Canada’s Best Law Firms for 2022.
The list of Canada’s Best Law Firms was created based on 6500 recommendations from lawyers (peer to peer) and clients (corporate legal departments). Only 200 law firms are being recognized in 28 practice areas.
Oyen Wiggs is consistently looking to bring more expertise to our clients to better serve them and their intellectual property law needs. It is with this in mind that we are pleased to announce that, effective January 1, 2022, the professionals and staff of the Vancouver IP firm SMITHS IP will join Oyen Wiggs, bringing more innovative solutions to meet the legal needs of clients in British Columbia, Canada and globally.
“Our clients are inventors, scientists, entrepreneurs, creators with vision,” said Gavin Manning, Oyen Wiggs Partner. “They aren’t satisfied with the status quo, and neither are we. The addition of the SMITHS IP team maintains the growth and momentum Oyen Wiggs’ has experienced over the past few years. Our lawyers have complementary strengths and combined, we will continue to offer market leading capability in intellectual property including patents, trademarks, copyrights, industrial designs, trade secrets, computer and internet law, technology transfer and licensing, and related litigation.”
The decision to incorporate the team from SMITHS IP reflects the cultural compatibility of the lawyers and their shared vision to always maintain a client-centric focus. Four SMITHS IP lawyers (Paul Smith, Lawrence Chan, Karen Chow, Garth Leslie), one trademark agent (Mihaela Hutanu), and four staff will be joining the Oyen Wiggs team.
“The SMITHS IP team have long known the Oyen Wiggs firm and its members, and we are genuinely proud to join their team” said Paul Smith, senior partner of SMITHS IP. “We will continue to provide at Oyen Wiggs the same IP litigation, advice and prosecution services that we always have.”
Established in 1977, Oyen Wiggs is a Vancouver-based independent intellectual property boutique law firm. Within the legal industry, numerous Oyen Wiggs lawyers are consistently ranked in the area of Intellectual Property law by Lexpert and Best Lawyers and the firm was recently selected by the Canadian Law Awards as one of the Excellence Award recipients in the category of “IP Boutique Law Firm of the Year”.
SMITHS IP is a highly regarded Intellectual Property firm based in Vancouver and Paul Smith is ranked by external rating organizations, including Best Lawyers. After 26 years of service to the profession and to their clients, SMITHS IP will be wound down.
The USPTO is currently preparing a report on reforming 35 USC 101 (section 101, which defines what inventions are patentable) for March 2022. They are asking key patent stakeholders how changing patent eligibility law will have an impact on technological investment and innovation.
There is a deep divide in the responses from different facets of industry. Pharmaceutical companies and other life science companies are urging change. They say they cannot justify major investments into technologies if they cannot guarantee the patentability of the inventions. Alternatively, other big tech companies wish to keep section 101 to help protect themselves in litigation and to help attack improperly granted patents.
This is not the first attempt to amend sections 101 or 112, the previous one being in 2019. Those amendments also failed due to lack of consensus in the patent community. Several ideas have been proposed to break the deadlock in the community, including broadening section 101 while putting more weight on section 112 (patent specification requirements). This faced similar issues to 101 reform, where the impact is different for different industries.
Read the full story here.
The US Copyright Office has introduced broadened exemptions where circumventing software copy protection may be permissible, including in the context of repairing consumer products that use software. Such consumer products would include cell phones and laptops, for example, and the broadened exemption is directed towards the “right to repair” such products.
Generally, Section 1201 of the Digital Millennium Copyright Act prohibits circumventing technological measures used to prevent unauthorized access to copyrighted works such as books, movies and computer software. Exemptions to this general prohibition are prescribed and reviewed by the US Copyright Office periodically.
The newly introduced exemptions include an exemption related to “computer programs that are contained in and control [a consumer device] when circumvention is a necessary step to allow… diagnosis, maintenance, or repair of such a device” and not for accessing other copyrighted works.
For more information, please see: the Final Rule adopting the new exemptions and an article discussing the exemption related to repairing consumer devices
The European Patent Office (“EPO”) recently released a study entitled Patents for tomorrow’s plastics: Global innovation trends in recycling, circular design and alternative sources. The study focuses on the future of plastics and how new technologies can aid in a more sustainable future. Key findings of the study include that chemical and biological recycling methods saw the most patenting activity from 2010 to 2019 out of all recycling methods and that in the field of bioplastics the healthcare and cosmetics & detergent industries led patenting activity from 2010 to 2019.
To read the key findings of the study click here or to read the study click here.
Oyen Wiggs is proud to be a sponsor at the upcoming LifeSciences 6th annual Invest in BC presented by Lumira Ventures on November 3 and 4, 2021. This virtual conference showcases a broad range of investor-ready BC life sciences companies from the healthcare innovation ecosystem. #LSBCinvest#BCbiotech#lifesciences
Hudson’s Bay Company (HBC) has filed a statement of claim in the Federal Court against the Moniz family over various trademark applications and corporate registrations containing the mark “Zellers”.
HBC accuses members of the Moniz family of trademark infringement, depreciation of goodwill and passing off, which is the deceptive marketing or misrepresentation of goods.
The Zellers department store was founded in 1931 and acquired by HBC in 1978. By the late 1990s, there were about 350 Zellers stores. However, Zellers began losing ground to competitors such as Walmart and in 2020, HBC closed down the last of Zellers stores. Despite the demise of Zellers, HBC claims that it has not abandoned the Zellers trademarks and logos and continue to have plans for the brand. For example, HBC launched a pop-up Zellers shop inside a Hudson’s Bay store in Burlington, Ontario, last summer.
For the full story, read here.
DABUS, short for Device for the Autonomous Bootstrapping of Unified Sentience, is an artificial intelligence (“AI”) machine that can invent and generate new ideas without any human input. DABUS is a form of neurocomputing and in some sense, DABUS may be said to mimic aspects of human brain function. DABUS and its creator Dr. Stephen Thaler have garnered worldwide attention when patent applications naming DABUS as the sole inventor were filed with the World Intellectual Property Organization (“WIPO”) and several national patent offices. These filings have spurred meaningful discussion about AI-related inventorship and ownership. Recently, the Federal Court of Australia held in Thaler v Commissioner of Patents [2021] FCA 879 that an AI machine, such as DABUS, can be a patent inventor, citing the potential value of AI in pharmaceutical research, including the use of AI in high-throughput drug screening, drug repurposing, and vaccine development.
Some Bumps in the Road – Patent Offices’ Rejections
In 2019, Dr. Thaler filed patent applications for inventions created by DABUS. One such invention relates to a light beacon that flashes in a new and inventive manner that attracts attention, as described in US Patent Application No. 16/524,350. Another invention relates to a beverage container based on fractal geometry, as described in US Patent Application No. 16/524,532 and International Publication No. WO 2020/079499. These applications list Dr. Thaler as the applicant and DABUS as the sole inventor.
Since the filings, the DABUS patent applications have experienced some bumps in the road.
The European Patent Office (“EPO”) rejected the DABUS patent applications. The EPO takes the position that an inventor must be a natural person and an AI machine has no recognized legal personality. Proceedings before the EPO’s Board of Appeals remain pending.
The US Patent and Trademark Office (“USPTO”) issued notices stating that the filed patent napplications failed to identify the inventor by his or her legal name. In reply, Dr. Thaler filed petitions requesting the notices be reviewed and vacated for being unwarranted and/or void. The USPTO denied Dr. Thaler’s petitions and published a final decision in April 2020, stating that DABUS could not be an inventor. The USPTO reasoned that an inventor could only be a natural person, citing cases holding that inventors cannot be corporations or sovereigns. Dr. Thaler filed suit in the District Court for the Eastern District of Virginia, seeking review of the USPTO’S decision. The court sided with the USPTO and held that based on the plain statutory language of the Patent Act and Federal Circuit authority, an inventor must be a natural person. The court went on to say that “[a]s technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy the accepted meaning of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”
The United Kingdom Intellectual Property Office (“UKIPO”) held that “[s]ince DABUS is a machine and not a natural person … it cannot be regarded as an inventor.” The England and Wales High Court (Patents Court) agreed with the UKIPO. The court held that in theory, it might be possible for the definition of “inventor” to include both persons and things, but it would be unlikely. The court also held that DABUS, by its status as a thing and not a person, is incapable of transferring any property right to Dr. Thaler.
Some Wins – the South African Patent Office and the Federal Court of Australia
Despite the bumps in the road, there have been some wins for DABUS.
Through the Patent Cooperation Treaty (“PCT”) filing, Dr. Thaler has obtained a South African patent for the beverage container. Note that South Africa is a non-examining jurisdiction. This means a national phase entry based on a PCT application would proceed to grant without substantive examination.
More substantially, the Federal Court of Australia held that an AI machine, such as DABUS, can be a patent inventor. Judge Beach held that:
… an artificial intelligence system can be an inventor for the purposes of the Act. First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.
Judge Beach says that the term “inventor” should be construed in a manner that would “promote[] technological innovation and publication and dissemination of such innovation by rewarding it, irrespective of whether the innovation is made by a human or not.” He recognizes that “computer inventorship would incentivise the development by computer scientists of creative machines, and also the development by others of the facilitation and use of the output of such machines, leading to new scientific advantages.”
Focusing on pharmaceutical research, Judge Beach suggests that a flexible and evolutionary approach to the meaning of “inventor” could significantly accelerate pharmaceutical research. Judge Beach cites the potential value of AI in pharmaceutical research, including drug and vaccine development.
With respect to ownership and transfer of property rights, Judge Beach applies the concept of possession and says:
… Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession. In this case, Dr Thaler apparently obtained possession of the invention through and from DABUS. And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention. By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title. In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor. That is, there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment.
More Questions Brought by AI-Generated Inventions
We live in an era where computers are not just crunching numbers. In the pharmaceutical industry, AI has contributed to the discovery and development of drugs and vaccines. These technological advances have given rise to issues of inventorship and patent ownership, as evidenced by the DABUS patent applications. There are many other challenging questions to be answered:
It will be interesting to see whether, over time, other patent offices will change their views to fall more in line with the Australian position as AI becomes more and more a part of our everyday lives, or whether the more traditional view that the spark of inventiveness that justifies the grant of a patent can only be exhibited by a human being will continue to be applied.
**This article was originally published by The Lawyer’s Daily a division of LexisNexis Canada Inc.
The possibility of large-scale copyright infringement lawsuits against online file sharers remains a reality in Canada with the Federal Court of Appeal (FCA) overturning in part the Federal Court (FC) decision Voltage Pictures, LLC Canada v. Salna, 2019 FC 1412 (“Salna FC”). Specifically, the FCA’s decision keeps the door open for copyright owners to pursue reverse class actions that allow them to pursue large numbers of online copyright infringers in a single proceeding.
In Salna FC, Voltage Pictures, LLC (“Voltage”) sought to certify a reverse class action proceeding against a group of respondents that allegedly infringed Voltage’s copyright in five films via BitTorrent peer-to-peer file sharing. Generally, reverse class actions are class action proceedings wherein a single plaintiff initiates a claim against a class of multiple respondents. Such proceedings have not, to date, been used in the context of seeking remedies for copyright infringement, but they are an attractive option for copyright holders.
Specifically, the cost of pursuing a single legal action against a single infringer can far outweigh any damages that might be recovered from that infringer, and the deterrent effect of suing only one infringer out of thousands is limited. So traditional legal actions to enforce copyright against online file sharers are not particularly cost-effective for copyright holders. But by combining multiple defendants into one single action, the amount of damages and the breadth of the deterrent effect achieved is significantly increased. Thus, such reverse class actions are appealing to copyright holders because they represent a potentially effective means of enforcement and deterrence of infringing activities.
As with all class actions, the threshold step in a reverse class action is certification of the proposed class. Pursuant to the Federal Court Rules, the court must certify a class action if the statutory test for certification is met, which requires that:
The FC denied Voltage’s certification motion in Salna FC on the basis that the test for certification had not been met. Specifically, the FC found that Voltage’s certification motion satisfied none of the five criteria for the test for certification. Voltage subsequently appealed the decision to the FCA.
On 8 September 2021, the FCA released its decision in Salna v. Voltage Pictures, LLC, 2021 FCA 176, granting Voltage’s appeal in part and holding that the FC erred in applying the test for certification. Broadly, the Court observed that the FC erred in considering whether a reasonable cause of action was disclosed in Voltage’s certification application and that if the FC’s overall reasoning were followed, parties in Voltage’s position would likely be without any remedy for alleged infringement of their copyrighted works given the expense and complexity of pursuing each individual infringer in a separate legal proceeding.
With respect to the test for certification, the Court concluded that the FC made reversible errors in considering each of the five criteria. On the first three criteria, the FCA reversed the FC’s holdings and concluded that the pleadings disclosed a reasonable cause of action, that there was an identifiable class of two or more respondents, and that there were common questions of fact and law. However, the FCA found that the FC provided insufficient reasons for the last two criteria, concerning the preferability of a class proceeding and the adequacy of the proposed representative respondent. Accordingly, the motion for certification was returned to the FC for consideration on these two criteria.
Finally, the Court commented that while Voltage’s proposed reverse class action “tests the limits of what constitutes copyright infringement”, its novelty was not a reason to deny certification. It further noted that while the proposed class action may ultimately fail, the court below erred in presuming that the action would fail at such an early stage.
We await further guidance on these issues once the FC reconsiders its earlier decision. In the meantime, those who engage in online file sharing activities should be aware of the potential risk of getting caught up in a large-scale copyright infringement action if more copyright holders choose to explore this potential avenue for enforcement of their rights.
See 2019 FC 1412 and 2021 FCA 176 for the full decisions from the FC and the FCA, respectively.