After almost two years of hostilities, on 15 January 2020, China and the US signed an agreement on a Phase One trade deal easing tensions between the world’s two biggest economies. Intellectual property issues form an important part of the Agreement. The very first chapter of the Agreement addresses some inadequacies in China’s IP regime, aiming to establish and implement a comprehensive legal system of IP protection and enforcement in China. The Agreement states that China recognizes the importance of IP protection and believes that enhancing IP protection and enforcement will boost innovation, grow innovation-driven enterprises, and promote high quality economic growth.

Some specific IP concerns addressed by the Agreement are trade secrets, pharmaceutical-related intellectual property, patent term adjustment and extension, and enforcement against pirated and counterfeit goods.

Crack Down on Trade Secret Theft

Trade secret theft has been a longstanding concern for international entities doing business in China. The Agreement states that “the US emphasizes trade secret protection” and “China regards trade secret protection as a core element of optimizing the business environment”. To better protect trade secrets and confidential business information, China will:

• shift the burden of proof or burden of production of evidence, as appropriate, to the accused party to show that it did not misappropriate a trade secret;
• identify the use or attempted use of claimed trade secret information as an “urgent situation” that provides its judicial authorities the authority to order the grant of a preliminary injunction based on the specific facts and circumstances of a case;
• provide criminal procedures and penalties to address willful trade secret misappropriation.

More Pharmaceutical Patent Rights

China agrees to provide “effective protection and enforcement of pharmaceutical-related intellectual property rights, including patents and undisclosed test or other data submitted as a condition of marketing approval”.

The Agreement requires that China change its current practice to permit pharmaceutical patent applicants to be able to rely on supplemental data to satisfy relevant patentability requirements, including sufficiency of disclosure and inventiveness. This change will bring China in line with practices in other countries such as the US and Europe, although such data is not currently admissible in Canada, and may help pharmaceutical patent applicants to secure patent protection in China.

The Agreement also requires that China establish an effective mechanism for early resolution of patent disputes, which includes a system to provide notice to a patent holder that another company (likely a generic drug company) is seeking approval of a version of the patented drug. The notice should be provided before the generic drug company receives regulatory approval, so that the patent holder would have adequate time and opportunity to pursue “judicial or administrative proceedings and expeditious remedies, such as preliminary injunctions” to resolve disputes over infringement or the validity of the patent.  Such a regime would be similar in concept to the Patented Medicines (Notice of Compliance) regime that exists in Canada.

Patent Term Adjustment and Extension

China agrees to provide (i) patent term adjustment to compensate for unreasonable delays that occur in granting the patent and (ii) patent term extension to compensate for unreasonable delays during pharmaceutical product marketing approvals.

Patent term adjustment is not available in Canada but patent term extension of up to two years has been available since 2017 for patents pertaining to new medicinal ingredients or new combinations of medicinal ingredients for human or veterinary use.  Canada will have to add provisions relating to patent term adjustment to comply with its obligations under the Canada-US-Mexico Free Agreement.

Patent term adjustment and extension are particularly important for pharmaceutical patents because it often takes a long time to bring a drug to the market.

Combating Piracy and Counterfeiting

In order to promote the development of e-commerce, China and the US agree to strengthen cooperation and jointly and individually combat piracy and counterfeiting.

China also agrees to introduce a “notice and takedown” regime that is likely to be similar to the US regime where when an online service provider receives a notice that infringing content has been made available on its service, the service provider will move expeditiously to take down the infringing content from the Internet. The Agreement specifies that China will:

• require expeditious takedown;
• eliminate liability for erroneous takedown notices submitted in good faith; and
• ensure validity of takedown notices and counter-notifications.

Concluding Remarks

The Agreement appears to import some IP protection mechanisms from US law into China’s IP regime. The next step will be for China to implement these western IP protection mechanisms in practice through structural reforms to China’s current IP regime. No one knows how long it will take for China to craft the new IP regime, but if it is anything similar to Canada’s journey to modernize its trademark law, China’s new IP regime will take at least five years.

 

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

Artificial intelligence (AI) technologies are poised to further disrupt a wide-ranging span of industries, not least of which includes medical care and research. There are already patents granted for AI technologies directed at drug discovery, disease diagnosis, medical imaging, and precision medicine, among many others.

Innovations in machine learning and deep learning have helped propel these advances, and research entities, health care institutions, and innovative companies are seeking to harness the power of AI to ameliorate patient health and care and produce medical and basic science research faster and with new insights.

Patent protection is an early and critical consideration for many of these entities. It is an open question whether intellectual property law sufficiently accounts for all the aspects of AI or must adapt in view of this rapidly evolving and uniquely complex field of computer science.

To probe this issue especially as it relates to patent protection, the United States Patent and Trademark Office (USPTO) posed twelve questions to public stakeholders in a request for comment published in the U.S. Federal Register this past August. The purpose was to help determine whether the USPTO should issue new guidance on how it will examine patent applications related to AI inventions and/or whether new forms of intellectual property protection should be developed for AI inventions. In its request for comment, the USPTO shows an appreciation that many of the factors involved in developing, training, and using AI technologies are unique amongst the other computer science disciplines and that it may be appropriate to accordingly define a uniquely tailored application of the law or develop new laws to protect AI technologies.

In its questions, the USPTO can be seen grappling with the issues of inventorship (can an AI technology contribute to the conception of an invention?), ownership (can parties involved in the training of the AI technology own an invention created by the AI?), the level of written description disclosure required in the patent application (how much detail must be disclosed for deep learning algorithms having hidden layers and evolving weights?), enablement, subject-matter eligibility, and other issues having legal implications.

Many of the questions posed have philosophical underpinnings. Traditionally in Canada, only humans are recognized under the law as capable of being inventors. However, AI technologies increasingly challenge the notion that some capabilities are exclusively “human”. What happens when an AI technology creates a new insight that forms a part of a new invention? Who should be the inventor when an AI technology identifies a new biomarker for diabetes based on characteristics of tissue samples that no doctor would have previously considered for diagnosing the disease or selecting a course of treatment? Can a person skilled in the art – the mythical [1] (human) creature typically deemed by law to be the addressee of patent documents – be defined by the knowledge and capabilities of a (non-human) AI entity? It stands to reason whether a “person” or “inventor” can or should be defined as including an AI technology.

This is also not the first time the USPTO has specifically considered the patenting of AI technologies, which you can read more about here.

A couple of months later in October, the USPTO issued a second request for comment published in the U.S. Federal Register. This second request for comment posed thirteen questions to the public relating to intellectual property protection for artificial intelligence innovation. More specifically, it probed the adequacy and ability of copyright, trademark, or trade secret law to protect AI innovation and for their regimes to survive new AI technology. There are questions relating to defining who the copyright author and owner are in works produced by or involving AI, as well as the protection and possible infringement of copyright relating to the use of data to train AI technology. The USPTO’s two requests for comment provided a unique opportunity for stakeholders developing or otherwise invested in AI innovation to shape how patent and other intellectual property law and policy can be used to protect AI.

The USPTO’s second request for comment appeared to echo some of the considerations recently reviewed by the Canadian government in its evaluation of Canadian copyright law.

The Canadian government recently completed its review of the Copyright Act – a review mandated by statute and having the stated purpose of evaluating the currency of Canada’s copyright regime in view of advances in digital technology. Notably, the resulting report by the Standing Committee on Industry, Science and Technology specifically considers works created by AI technology without human intervention and works made by humans using AI technology. The Standing Committee includes a recommendation that the Copyright Act be amended or new legislation be enacted to “provide clarity around the ownership of a computer-generated work”, as well as a recommendation that the Copyright Act be amended to “facilitate the use of a work or other subject-matter for the purpose of informational analysis”.

These recommendations were made specifically in view of facilitating the development of AI technology. For example, an exception to copyright protection for the use of data to train the AI technology could be permitted as being informational analysis. It remains to be seen whether the legislative regime will be amended in response to these recommendations.

It is an exciting time for AI, and if not already, one day soon we may be able to call on our virtual assistants – “Hey AI Bot” – to help solve our hardest questions with insights not previously understood by humans in healthcare and beyond.

[1]The touchstone point of reference under Canadian patent law remains a “mythical creature”: see e.g.,  Apotex Inc. v. Sanofi‑Synthelabo Canada Inc., [2008] 3 S.C.R. 265, 2008 SCC 61

by Larissa Leong

The Canadian International Internet Dispute Resolution Centre (“CIIDRC”) opened for business last month and is currently accepting domain name complaints under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). The CIIDRC joins the World Intellectual Property Office (“WIPO”), the National Arbitration Forum, the Asian Domain Name Dispute Resolution Centre, the Arbitration Center for Internet Disputes of the Czech Arbitration Court, and the Arab Center for Dispute Resolution (ACDR) as only the sixth approved UDRP service provider in the world. This article provides a brief summary of the process, costs and remedies available in a UDRP proceeding.

What is UDRP?

The UDRP was established by the Internet Corporation for Assigned Names and Numbers (“ICANN”) to resolve disputes involving domain name registrations. The UDRP applies to a variety of generic top level domains (e.g. .com, .net, .org, .deal, .film, etc.) and some country code top-level domains (e.g. .co, .me, etc.) [1].

A UDRP proceeding is initiated when a Complainant submits a complaint (online) and associated filing fees to one of the six approved UDRP service providers mentioned above. The UDRP service provider reviews the complaint, notifies the respondent, provides the respondent with an opportunity to respond, and appoints a panel consisting of 1 or 3 members to consider the complaint. The panel member(s) decide the complaint and the registrar for the domain name implements the decision. In a typical case, the entire UDRP proceeding is decided and implemented in less than two months [2].

What does the Complainant need to Prove in a UDRP Proceeding?

 To succeed in a UDRP proceeding, the complainant must prove that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights prior to the date of the registration of the domain name and continues to have such rights;

(ii) the registrant has no rights or legitimate interest in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith (e.g. the domain name was registered primarily for the purpose of selling the domain name to the complainant or a competitor of the complainant or for disrupting the business of a competitor) [3].

What Remedies are Available in a UDRP Proceeding?

The remedies available in UDRP proceedings are limited to: (i) transfer of the domain name in dispute to the complainant; or (ii) cancellation of the domain name registration [4]. Complainants should, accordingly, not expect to receive financial compensation (e.g. damages, etc.) or recover costs in UDRP proceedings.

What are the fees for initiating a UDRP Proceeding?

The fees of filing a UDRP proceeding can range from about US$1500 to more than US$5000 depending on the choice of a service provider, the number of domain names included in the complaint, and the number of panelists selected to hear the complaint. Most UDRP service providers charge the same fee to hear up to a certain number of domains, so it could be cost effective for complainants to challenge multiple domain names at the same time.

For example, the CIIDRC currently charges a US$425 filing fee + a US$1,050 hearing fee (US$1475 total) for proceeding involving a single-member panel and up to three disputed domain names [5].

Conclusion

The UDRP provides a timely and cost-effective process for resolving disputes over generic top level domain names and some country code top-level domain names. However, complainants should be aware that financial compensation is not available in UDRP proceedings.

 

[1] See: https://ciidrc.org/domain-name-disputes/

[2] See: https://ciidrc.org/domain-name-disputes/

[3] See Paragraph 4(a) of Uniform Domain Name Dispute Resolution Policy: https://www.icann.org/resources/pages/policy-2012-02-25-en#4a

[4] See Paragraph 4(i) of Uniform Domain Name Dispute Resolution Policy: https://www.icann.org/resources/pages/policy-2012-02-25-en#4i

[5] See: https://ciidrc.org/how-it-works/fee-schedule/

 

The Federal Court of Canada recently issued Canada’s first ever site blocking order in Bell Media Inc v GoldTV Services, 2019 FC 1432 (Bell Media). In Bell Media, the court compelled Canadian internet service providers (ISPs) to take steps to block their customers from accessing websites operated by pirate streaming sites GoldTV.biz and GoldTV.ca.

The plaintiffs (Bell and Rogers) broadcast a variety of programming through their online streaming services. Bell and Rogers first began pushing the CRTC, Canada’s media regulatory agency, to create a blacklist of piracy sites and to require all Canadian ISPs to block such sites. When the CRTC concluded that it lacked jurisdiction to grant injunctions based on the underlying copyright issues, Bell and Rogers commenced a lawsuit in Federal Court.

The Federal Court in Bell Media adopted several principles set out by the Supreme Court of Canada in Google Inc. v. Equustek Solutions Inc, 2017 SCC 34 (Equustek), including the availability of injunctive relief against entities who are not parties to the litigation. Availability of this remedy is grounded on the basis that whilst third parties themselves have not engaged in any wrongdoing, the third parties are in a position to facilitate the harm. The Federal Court additionally agreed that the fundamental question should be whether granting an injunction is just and equitable in the circumstances.

Courts in the UK have considerable experience in making site-blocking orders, and as a result, have developed a list of factors for assessing whether granting a site-blocking order is equitable. The Federal Court considered the following list of factors set out by the UK Court of Appeal in the case Cartier International AG v. British Sky Broadcasting Ltd., [2016] EWCA Civ 658:
• whether the injunction is necessary to protect the plaintiff’s rights;
• the effectiveness of the injunction in discouraging users from accessing the infringing services;
• whether parties not currently accessing the infringing service will be dissuaded from doing so;
• the complexity and cost of implementing the injunction;
• whether the injunction creates barriers to legitimate use;
• whether the injunction strikes a fair balance between the rights of the parties, relevant third parties, and the general public;
• the extent to which blocked websites can be substituted for another infringing website; and
• whether the injunction includes measures that safeguard against abuse.

Ultimately, the Federal Court concluded that making a Canada-wide blocking order was ‘just and equitable’ in the circumstances and granted an order requiring third party Canadian ISPs to block users from accessing a set of IP addresses associated with the infringing GoldTV services.

The injunction was opposed by TekSavvy, another Canadian ISP, who raised many policy concerns about site blocking. Amongst other points, TekSavvy argued that granting a site-blocking order would create a precedent that could ultimately see ISPs faced with hundreds or even thousands of site-blocking orders. Further, it could be seen as problematic that only large copyright holders would stand to benefit from this decision. In the absence of an administrative regime, extensive evidence would have to be supplied in court alongside large procedural expenses to prove that future instances of site blocking are necessary. On November 25, Teksavvy filed a notice of appeal with the Federal Court of Appeal.

This case, along with the Equustek case, signals that Canadian courts are more willing to regulate the internet, where internet regulation was traditionally thought to be in Parliament’s realm. In Equustek, the Supreme Court of Canada issued an order requiring Google to remove all instances of a company’s website, which was selling infringing products, from its world-wide search engine. Critics fear that this Federal Court decision could lead to further censorship of the internet and therefore argue that site blocking should only be used as a last resort.

Proponents of the case, however, argue that this is a 21st century solution to blocking illegal activity, and that with the proper safeguards in place, site blocking does not result in the censorship of the internet. They note that all other reasonable avenues had been pursued by the plaintiffs prior to seeking an injunction. GoldTV, like many other piracy services, were located offshore and shrouded in anonymity to escape the reach of domestic authorities, leaving IP address blocking as the only reasonable option.

In 2018, the Intellectual Property Association of Japan noted that 45 countries offered judicial and/or administrative remedies for blocking sites that delivered infringing content. With this decision, Canada now joins these countries in providing a solution for stopping the proliferation of internet services which facilitate copyright infringement, subject to any different decision being reached on appeal.

 

 

On June 17, 2019, Canada implemented the Madrid Protocol. The Madrid Protocol provides trademark owners with an opportunity to file a single trademark application for international registration with the World Intellectual Property Organization (the “WIPO”). Trademark owners can designate members of the Madrid Protocol (e.g. countries) where protection is sought. As of October 31, 2019, the Madrid Protocol has 106 members covering 122 countries. A complete list of the members of the Madrid Protocol can be found here.

How it works
The Madrid Protocol process can be separated into three main steps: filing a national application, filing the international application, and substantive examination by national or regional offices.

Step 1: Filing the National Application

Before you can file your international application, you need to have already filed or registered an application in your home IP office. For Canadian applicants, your home IP office will likely be the Canadian Intellectual Property Office (the “CIPO”). This registration or application is known as the “basic mark”. For Canadian applicants, if you already have a Canadian trademark registration, you can proceed directly to step 2.

While it is not required to wait until your basic mark is registered before proceeding to step 2, it may be beneficial to wait for registration before proceeding to step 2. Waiting for registration may allow you to fix any issues arising during prosecution of the basic mark which could complicate steps 2 or 3.

Step 2: Filing the International Application

The second step is to prepare and file your international application. Upon filing your international application, your home IP office (e.g. the CIPO) conducts a preliminary examination to ensure that the international application is for a mark that is identical to the basic mark and that the goods and services of the international application are not broader than those of the basic mark.

Once certified by the CIPO, your international application is sent to the WIPO to check for discrepancies, errors, or mistakes. Once approved by the WIPO, your mark is recorded on the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in each of the territories where you wish to have your mark protected. However, it is important to understand that the actual scope of protection of your international registration is not determined until Step 3.

Step 3: Substantive Examination by National or Regional Offices

At step 3, each IP Office where you wish to have your mark protected will conduct its own substantive examination of your trademark. Substantive examination occurs according to the legislation of each designated member and may include evaluating the international application by conducting searches for identical or potentially confusing trademarks, and assessing other potential obstacles to registration.

The IP Offices of the members where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices. You can dispute a refusal decision directly with the IP Office concerned. If an IP Office accepts to protect your mark, it will issue a statement of grant of protection. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

Why use the Madrid Protocol

As compared to separately applying to register your trademark in foreign countries through individual national applications, the streamlined process of the Madrid Protocol is designed to reduce your filing costs.

Another advantage over individual national applications is that administrative matters subsequent to registration (e.g. name changes, address changes, ownership changes, renewals, etc.) can usually be processed in a single procedural step, with effect across all designated Madrid Protocol members.  This simplifies the management of trademark portfolios and can result in significant cost savings subsequent to filing.

For some countries, the Madrid Protocol may effectively cause registrations to be obtained more quickly than through national applications due to the strict time limits imposed under the Madrid Protocol.

Potential Pitfalls of the Madrid Protocol

It is possible for a trademark owner to lose its rights granted by an international registration if the basic mark application does not mature to registration or if the basic mark registration is canceled during its first five years.  A corresponding loss of rights in foreign countries can be avoided by timely converting the foreign member country designations into individual national applications.  Such conversions would, however, outweigh any cost savings achieved by initially filing under the Madrid Protocol.

Another disadvantage of the Madrid Protocol relates to the available breadth of the applied-for goods and services in your home IP office. For example, the CIPO requires relatively narrow descriptions of goods and services in trademark applications as compared to some other countries.  As such, you may be able to secure broader protection by filing directly in those countries without being limited by the strict rules of Canada.

While most countries are members of the Madrid Protocol, there are still about 75 countries that are not. Therefore, since an international registration can only cover Madrid Protocol member countries, separate national applications are still required for non-member countries.

Conclusion

The Madrid Protocol can provide an efficient and cost-effective alternative to obtaining foreign trademark protection through individual national applications. However, careful consideration of the above-discussed potential pitfalls should be given in each case. We invite you to contact us with any questions about the Madrid Protocol, either generally or with respect to specific cases that we are handling on your behalf.