China’s New (and Better) Patent Law Becomes Effective 1 June 2021

Last October, China’s top legislature, i.e. the National People’s Congress Standing Committee, approved China’s new patent law, which will come into force on 1 June 2021. This is the fourth time that China’s patent law has undergone significant changes. The new law has the potential to strengthen IP protection and encourage globally harmonized practices. Some notable changes include: (i) invention patent term adjustment and extension; (ii) increased term for design protection; and (iii) portion claiming in industrial design protection (i.e. claiming only certain features of an article for protection).

Read Jennifer Marles and Jayde Wood’s article to learn more about China’s new patent law.

Nominations sought for the United States National Medal of Technology and Innovation

The United States Patent and Trademark Office is seeking nominations for its National Medal of Technology and Innovation. The medal is awarded to applicants that show outstanding contributions to economic, environmental and social well being through the development and commercialization of products, processes, concepts and innovation.  Nominations are open until 11:59 p.m. ET, 30 July 2021.

Learn more about it here.

United States Issues Patent Number 11,000,000

The United States Patent and Trademark Office (USPTO) officially issued U.S. patent number 11 million, reaching an important milestone in American innovation and ingenuity.

Patent number 11 million is granted to co-inventors Saravana B. Kumar and Jason S. Diedering of 4C Medical Technologies, Inc. in Maple Grove, Minnesota for a utility patent that provides a new method for delivering, positioning, and/or repositioning a collapsible and expandable stent frame within a patient’s heart chamber.

Patent 11 million comes three years after the USPTO issued patent number 10 million in 2018.

News release is available here.

Expedited Examination of Trademark Applications now available in Canada

The Canadian Intellectual Property Office (CIPO) published a practice notice on May 3, 2021 confirming that the CIPO will now begin to accept requests for expedited examination of trademark applications. In order for a request for expedited examination to be granted, the request must be in the form of an affidavit or statutory declaration setting out the specific circumstances and reasons for the request, and it must clearly set out how one or more of the following four criteria are met:

  • a court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • the applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • the applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  • the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request of the foreign office will need to be attached to the affidavit or statutory declaration.

The notice mentions that expedited examination could be lost if the applicant requests an extension of time or misses any deadline during the examination of the application. For further details, see the practice notice here.

USPTO Fast-Track Appeal now available for COVID Inventions

As of 15 April 2021, the United States Patent and Trademark Office (USPTO) implemented a pilot program to fast track ex parte appeals for COVID-related inventions. Ex parte appeal proceedings are used to appeal an Examiner’s rejection of a patent application before the Patent Trial and Appeal Board. The goal is for a decision to be issued within six months of entry into the pilot program. A maximum of 500 petitions for fast-track appeal will be granted under the pilot program.

Read more here.

Oyen Wiggs Lawyers recognized in Lexpert Ranking

Oyen Wiggs is proud to announce the recognition of six of its lawyers, Thomas Bailey, Bruce Green, Gavin Manning, Jennifer Marles, David McGruder, and Hilton Sue as leading lawyers in the area of intellectual property in the 2021 Canadian Legal Lexpert® Directory.

The Canadian Legal Lexpert® Directory, published since 1997, is based on an extensive peer survey process.  It includes profiles of leading practitioners across Canada in more than 60 practice areas and leading law firms in more than 40 practice areas.

Canadian City transfers Ogopogo Copyright to First Nation

The City of Vernon has transferred the copyright to the name for a mythical sea creature, Ogopogo, to a local First Nation. Previously subject to criticism of cultural appropriation, the name is derived from a word in the local Syilx language.

Read more here

US Supreme Court: Google vs Oracle

The U.S. Supreme Court released a much-anticipated ruling in Google LLC v. Oracle America, Inc., 593 U.S. ____ (2021) on April 5, 2021, ending the decade-long copyright battle between Google and Oracle, two of Silicon Valley’s technology powerhouses. This ruling represents the first time that the Court tackled the fair use doctrine in the context of modern computer software. By a 6-2 vote, the Court sided with Google and held that Google’s copying of Oracle’s code was a permissible “fair use” under U.S. law.

Read Jennifer Marles and Jayde Wood’s article discussing this ruling’s potential implications in a Canadian context.

U.S. Supreme Court Rules Google’s copying of Oracle’s code of permissible “Fair Use”

The U.S. Supreme Court released a much-anticipated ruling in Google LLC v. Oracle America, Inc., 593 U.S. ____ (2021) on 5 April 2021, ending the decade-long copyright battle between Google and Oracle, two of Silicon Valley’s technology powerhouses. This ruling represents the first time that the Court tackled the fair use doctrine in the context of modern computer software. By a 6-2 vote, the Court sided with Google and held that Google’s copying of Oracle’s code was a permissible “fair use” under U.S. law.

Justice Breyer wrote the majority opinion, joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Gorsuch and Kavanaugh. Justice Thomas wrote the dissenting opinion, joined by Justice Alito. Justice Barrett, who was not yet confirmed when the case was heard in October 2020, did not participate.

The Decade-Long Copyright Battle

This decade-long copyright battle is complicated to say the least. It mixes tough legal concepts with difficult technological details. Some of the relevant difficult details include:

  • an application programming interface (API) – “a tool that allows programmers to use prewritten code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch”;
  • implementing code that “tells the computer how to execute the particular task [that] you have asked it to perform”;
  • a method call – “a command that corresponds to the specific task [written in implementing code] and calls it up”; and
  • declaring code  – a link between a method call and its corresponding implementing code – “without that declaring code, the method calls entered by the programmer would not call up the implementing code”.

In 2005, Google began negotiations with Sun Microsystems, i.e. Oracle’s predecessor, about the possibility of incorporating Sun Microsystems’ Java platform, including the APIs, into Google’s Android operating system. The negotiations were unsuccessful and Google decided to build its own platform. Google wrote millions of lines of new code but also copied roughly 11,500 lines of Sun Microsystems’ declaring code and arranged that code in exactly the same manner as Sun Microsystems had done. The copying was motivated by Google’s desire to have millions of programmers, familiar with Java, be able to easily work with Google’s platform. In 2010, Oracle bought Sun Microsystems and sued Google for copyright infringement. Google countered that the copied code relates to methods of operations and functions and could not be protected by copyright.

Two key questions arise:

  • whether the declaring code and organization of Oracle’s API are copyrightable; and
  • if so, whether Google’s copying of Oracle’s API was a permissible “fair use”.

Copyright Subject-matter – a Question for Another Day

Instead of deciding fundamentally about copyrightable subject-matter, the majority assumed, “but purely for argument’s sake, that the entire Sun Java API falls within the definition of that which can be copyrighted.” The majority said that “Given the rapidly changing technological, economic, and business-related circumstances, we believe we should not answer more than is necessary to resolve the parties’ dispute.”

The dissenting opinion criticized the majority for skipping over the question of copyrightable subject-matter. “The Court wrongly sidesteps the principal question that we were asked to answer: Is declaring code protected by copyright? I would hold that it is.” The dissenting opinion added at the end that “The majority purports to save for another day the question whether declaring code is copyrightable. The only apparent reason for doing so is because the majority cannot square its fundamentally flawed fair-use analysis with a finding that declaring code is copyrightable.”

This aspect of the ruling may come as a disappointment to copyright lawyers who were hoping for a more sweeping ruling on the extent to which software should be afforded copyright protection in the first place.

Fair Use – “the purpose and character of Google’s copying was transformative”

Similar to Canada’ fair dealing analysis, the U.S. fair use analysis involves the consideration of several factors. The four factors set forth in the fair use statute include: (i) the nature of the copyrighted work, (ii) the purpose and character of the use, (iii) the amount and substantiality of the portion used, and (iv) market effects.

When conducting the fair use analysis, the majority acknowledged that “The fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts in that technological world.” Applying the principles of the precedents and Congress’ codification of the fair use doctrine, the majority concluded that “where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of [Oracle’s] Java API was a fair use of that material as a matter of law.”

The dissenting opinion suggested that “the majority wrongly conflates transformative use with derivative use” and “transforms the definition of ‘transformative’ [to mean] – at least for computer code – a use that will help others ‘create new products’”. The dissenting opinion cautioned that the new definition of “transformative” may “eviscerate Congress’ considered policy judgment.”

Potential Effect on Software Innovation

This ruling will likely have a significant effect on software innovation. Google views this ruling as a victory for the software industry as a whole. Its senior vice president for global affairs said in a  that “[the] Supreme Court decision in Google v. Oracle is a big win for innovation, interoperability & computing.” This is an exciting time for software innovation and we eagerly wait to see how this ruling may practically change how software innovation will be developed.

Implications in the Canadian Context

It is interesting to consider how this case might have been decided had it been brought in Canada instead of in the U.S. The fair dealing exception under the Canadian Copyright Act is applicable to a closed list of specific activities: research, private study, education, parody, satire, criticism or review, and news reporting. If an activity does not fall within this specific list, it cannot qualify as fair dealing. Here, Google’s activity in copying the declaring code was not for any of these specifically enumerated purposes but rather was for the purpose of making a competitive software product. As such, Google likely would not be able to rely on the fair dealing exception to avoid copyright infringement in Canada.

This means that in a Canadian context, the evaluation of whether or not the code copied by Google was copyrightable would likely be determinative of the outcome of the case.  In that regard, the Canadian courts would be likely to find the analysis of the dissenting opinion persuasive in analysing whether the copied code was copyrightable subject-matter. Similar to the U.S., the Canadian Copyright Act expressly includes “computer programs” within the scope of literary works protected by copyright. Additionally, the Canadian courts are careful to protect the skill and judgment of programmers in the development of the specific language used to develop their code, even though the code may carry out certain functional activities.  So this case might have reached an opposite outcome had the action been brought in Canada.

 

**This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca) a division of LexisNexis Canada Inc.

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