The World Intellectual Property Organization (the “WIPO”) has launched an online resource for centralized monitoring of COVID-19 related measures, such as postponement of deadlines, being implemented by WIPO member states in response to the global COVID-19 pandemic. This online resource is available here. Caution is warranted in relying on this information given that WIPO does not assume any responsibility for the accuracy or completeness of this information. Appropriate advice should still be sought from competent counsel in each country of concern.
Oyen Wiggs Lawyers recognized in Lexpert Ranking
Oyen Wiggs is proud to announce the recognition of five of its lawyers, Thomas Bailey, Bruce Green, Gavin Manning, David McGruder, and Hilton Sue as leading lawyers in the area of intellectual property in the 2020 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.
Court of Appeal Reverses Decision Against York University for Payment of Royalties
The Canadian Federal Court of Appeal recently issued a decision allowing York University’s appeal against a ruling that York University was required to pay royalties for its copying activities in York University v. The Canadian Copyright Licensing Agency (Access Copyright), 2020 FCA 77.
Federal Court Proceeding
The original plaintiffs, the Canadian Copyright Licensing Agency (Access Copyright), alleged that York University was obligated to pay royalties to copyright owners for copying protected works, such as textbooks, according to a tariff approved by the Copyright Board of Canada. At the Federal Court of Canada, York University asserted that 1) it was not bound by the tariff; and 2) it was exempted from having to pay royalties because its copying fell under the fair dealing exception to copyright. York University was unsuccessful on both counts in the Federal Court.
Court of Appeal Proceeding
The Court of Appeal noted that tariffs set by copyright collectives such as Access Copyright was effective only to bind licensees. In the present case, because York University was not a licensee and because Access Copyright was not suing York University for copyright infringement, Access Copyright is unable enforce the tariff against York University. York University was therefore successful on this ground of appeal.
The Federal Court of Appeal affirmed the Federal Court’s decision that the level of copying undertaken and permitted by York University’s guidelines was “mass and massive”. This level of copying was therefore not “fair” when no compensation is paid. Furthermore, the Court found a causal link between York University’s copying and a drop in sales of the copyrighted works. Nevertheless, because of the Court’s finding on the non-enforceability of the tariff, York University was not bound to pay royalties on the basis of the tariff.
This decision offers useful copyright jurisprudence for determining the rights of creators and authors in relation to the rights of post-secondary institutions.
WIPO Issues Reassurance in view of Global Covid-19 Crisis
On April 7th, 2020, the World Intellectual Property Office (WIPO) issued a statement reassuring its stakeholders that it is well positioned to endure the great uncertainty caused by the ongoing Covid-19 crisis. According to Director General Francis Gurry:
“WIPO’s stable and healthy financial situation results from high demand for the Organization’s services coupled with a disciplined approach to expenditure. These factors have enabled the Organization to be in a strong position to face the uncertainties and probable downturn that are being provoked by the Covid-19 crisis.”
The WIPO’s full press release can be found here.
China becomes Top PCT Filer in 2019 – Ending US Four-decade Reign
With more Patent Cooperation Treaty (PCT) applications originating in China than in any other country, 2019 marks the first time since the World Intellectual Property Organization (WIPO) launched the PCT System in 1978 that the US was not the top PCT filer. “China’s rapid growth to become the top filer of international patent applications via WIPO underlines a long-term shift in the locus of innovation towards the East, with Asia-based applicants now accounting for more than half of all PCT applications”, said Francis Gurry, the Director General of WIPO.
In 2019, the top five PCT filers were:
- China (58,990 applications);
- the US (57,840 applications);
- Japan (52,660 applications);
- Germany (19,353 applications); and
- the Republic of Korea (19,085 applications).
Impact of COVID-19 on Patent Deadlines
With courthouse closures and law firms quick to implement remote working policies, the COVID-19 pandemic is having an impact beyond the realm of public health. As the virus continues to spread, IP offices are adopting measures to accommodate missed deadlines relating to COVID-19. We caution that the information below is a snapshot only – the situation is extremely fluid and we expect that additional extensions of time or special considerations for the hardship that the current situation has caused are likely to be introduced in the days and weeks ahead.
Canada – Extend Deadlines
On March 17th, 2020, the Canadian Intellectual Property Office (CIPO) announced that in response to the COVID-19 pandemic, deadlines falling between Mach 16th and March 31st are extended to April 1st 2020. Such deadlines include deadlines for responding to Examiner’s Reports, renewal deadlines, and any other deadline that is fixed under the Patent Act. On March 27th, 2020, the CIPO announced that in addition to the previous extension, deadlines falling between April 1st and April 30th, 2020 will now be extended to May 1st, 2020. If the circumstances surrounding COVID-19 continue, the CIPO may continue to provide further extensions of time.
Care should be taken in relying on the extension. For example, for new Patent Cooperation Treaty (PCT filings) where the CIPO is the receiving office, the Regulations under the PCT should be consulted. There can also be potentially unintended consequences of relying on any extension of the deadline for a new convention filing, as while notionally the deadline to file the application in Canada and claim priority may be extended, there may be no clear extension of any limitation period, for example the one-year period for public disclosure by an inventor. Thus, for new convention filings and PCT filings (where the CIPO is the Receiving Office), the appropriateness of relying on the extension should be carefully and specifically considered, and this should only be done as a last resort.
The CIPO also says that it remains open and in operation, although it warns that clients should expect significant delays in all CIPO services.
US – Waive Revival Fees
On March 16th, 2020, the US Patent and Trademark Office (USPTO) said that it considers the effects of the COVID-19 outbreak to be an “extraordinary situation”. To provide relief to patent applicants and patentees who missed deadlines for responding to communications from the USPTO due to the effects of the COVID-19 outbreak, the USPTO has decided to exercise its authority to waive revival petition fees. However, the requirement that the entire period of the delay between the date the deadline was missed and the date the petition was filed must be unintentional continues to apply, so the necessary action should be taken as soon as it is possible to do so.
The fee waiver does not apply to missed statutory filing deadlines. Additionally, the USPTO cautions that it is not extending deadlines during the COVID-19 pandemic.
Europe – Push Back Deadlines
The European Patent Office (EPO) advised that it will push back all deadlines expiring on or after March 15th to April 17th, 2020. If the disruption continues after April 17th, the EPO may provide further extensions and remedies.
China – Suspend Deadlines
The Chinese National Intellectual Property Administration (CNIPA) views COVID-19 as force majeure in Article 6 of the Implementation Rules of Patent Law. The CNIPA’s Notice No. 350 says that if a party misses a deadline due to COVID-19 related obstacles, the party can request restoration of their rights within 2 months after the day when the COVID-19 related obstacles are resolved. Such a request must be filed within 2 years from the deadline.
In an explanation for Notice No. 350, the CNIPA lists some COVID-19 related obstacles that include infection or self-isolation. Additionally, the CNIPA cautions that not all deadlines are suspended. For example, loss of rights relating to novelty grace period and priority period cannot be restored.
More Temporary IP Deadline Changes
We are in an unprecedented territory – the spread of COVID-19 has prompted many IP offices, in addition to the above-mentioned four, to be flexible and pragmatic to protect patent rights. For example:
- the Brazilian Patent and Trademark Office has decided to suspend deadlines falling between March 16th and April 14th, 2020;
- the Intellectual Property Office of the Philippines will extend deadlines falling between March 15th and April 14th to April 15th, 2020;
- the German Patent and Trade Mark Office will extend time limits granted by the Office to May 4th , 2020.
- … and the list goes on.
While most IP offices continue their electronic services and can receive submissions and new applications electronically so that deadlines should continue to be met wherever possible, in the unfortunate event that a patent owner is not able to take a necessary step in time, the available extensions of time and procedural remedies in the country concerned should be carefully considered. Most offices are trying to offer relief against the serious loss of rights that could be caused due to the inability to meet deadlines in the patent process.
*This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.
Canadian Law Awards 2020
Oyen Wiggs is pleased to announce that our legal team has been chosen as a Finalist for the Canadian Law Awards, celebrating excellence in the legal profession. Winners will be revealed live and celebrated on October 6 in Toronto. The 2020 Canadian Law Awards are presented by Lexpert and supported by Canadian Lawyer and InHouse.
More information can be found here.
Countries Consider Compulsory Licensing to Counter Covid-19 Crisis
On Wednesday March 25, 2020 the House and Senate passed Bill C-13, an emergency federal bill that provides for compulsory licenses for technologies relating to the health emergency on a time limited basis. Other countries have also been considering compulsory licensing options. Lawmakers in Chile and Ecuador have each passed resolutions urging their governments to explore compulsory licensing options. Israel has also permitted companies to produce a generic version of the Kaletra HIV pill owned by AbbVie despite the patent term not expiring until 2024.
Katy Perry Dark Horse Verdict Overturned on Appeal
A Los Angeles federal court judge has overturned the verdict that Katy Perry and her team infringed copyright owned by rapper Flame by reproducing an 8 note phrase. The judge found that the allegedly copied notes were “not a particularly unique or rare combination”, and therefore not entitled to copyright protection. For more, read the decision here.
Emergency Legislation to Allow Compulsory Licensing to Deal with COVID-19
On 25 March 2020, Bill C-13 An Act respecting certain measures in response to COVID-19 received Royal Assent. This emergency legislation amends the Patent Act to authorize the government to make, construct, use and sell patented inventions to respond to a public health emergency.
19.4 (1) The Commissioner shall, on the application of the Minister of Health, authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application.
The provision is time-limited, as section 19.4(9) expressly states that the Commissioner shall not make an authorization pursuant to this provision after 30 September 2020.
get_sidebar();