Notice and Notice and No Settlement Demands

Bill C-86, the Budget Implementation Act that includes significant changes to copyright, trademark and patent law in Canada, has received royal assent. As such, Canada’s rules for copyright notices no longer require internet service providers to forward copyright notices that include:

  • offers to settle a claimed infringement;
  • requests for payment or for personal information made in relation to the claimed infringement;
  • hyperlinks that link to offers to settle the claimed infringement; and/or
  • hyperlinks that link to requests for payment or for personal information made in relation to the claimed infringement.

The full provisions of Bill C-86 as they apply to Canada’s copyright notice rules can be found here.

A Growing Cannabis Industry Requires IP Protection: Canadian Lawyer Interviews Jennifer Marles

The legalization of cannabis for recreational use in Canada has resulted in massive investment and speculation. To quote a pithy headline from The Economist : “The main high from Canada’s cannabis legalisation is financial”.

A 2018 report by CIBC analysts estimated that legal cannabis sales in Canada could reach $6.5 billion in retail sales by 2020 and that cannabis sales could exceed sales of spirits and approach that of wine. Those involved in this sector are hoping to use this growth in domestic sales as a springboard to international markets.

Canadian Cannabis Companies Are Thinking Globally

Elizabeth Raymer, a journalist with Canadian Lawyer, spoke recently with Jennifer Marles , a partner at our firm and IP lawyer, about this burgeoning market. Rapid growth is leading to thorny patent and trademark issues which companies will need to overcome if they are to protect their IP and scale their operations.

Many companies who are developing their products, production systems, and brands here in Canada have global aspirations. Because Canada is one of the first large countries to legalise cannabis for recreational use, there is widespread optimism that companies in Canada will have a first-mover advantage.

While the Canadian recreational market will never be a behemoth (it is smaller even than the Californian market) cannabis remains federally illegal in the U.S. “That positions Canada better for investments that are coming in this sector because the climate is a little more permissive,” Marles noted in her discussion with Raymer.

Canadian Lawyer reported that “Global consumer spending on cannabis is expected to reach $32 billion by 2022, according to two U.S. market research firms, while another firm estimates the global legal cannabis market value will reach as high as US$146 billion by 2025.” Canadian companies are hoping for an outsized piece of the action.

To Plant A Field, First Protect the Seed

In anticipation of increased consumer spend, companies are rapidly expanding operations. Buoyed by eager investors, companies are also increasing investment in developing new intellectual property while seeking to protect their innovations through patent and trademark applications.

Raymer noted that  The Trade-marks Act and the Plant Breeders’ Rights Act  both give registrants exclusive rights to use registered trademarks and registered denominations to distinguish their plant varieties in the marketplace.”

The Plant Breeders’ Rights Act allows breeders to protect new plant varieties. While Canada has placed strict limits on how cannabis can be branded, packaged, and advertised, Marles noted that “trademarks will still be important”. Consumer preference will ultimately determine which new products are successful; much of that will come down to brand preference.

For this reason, Marles predicts a surge in online advertising. Some of this is likely to run afoul of regulators. The Ottawa Citizen  observed that “there appears to be a game of regulatory chicken emerging”.

Growth Beyond Recreational and Medical

Marles and Raymer discussed how all this activity has lead to new developments ‘“across all sectors,’ not only in the medical and recreational sectors.”

As an example, Marles mentioned a client who is working on waste-processing technology, designed to process the waste plant material that results from cannabis production. Because cannabis retains its active pharmaceutical properties for some time, the waste requires specialized methods to break down the active compounds and render it fit for disposal. Activity in other adjacent sectors is also likely to increase, including innovation in law enforcement technology.

This new industry is raising numerous intellectual property issues for Canadian companies, entrepreneurs, and investors. We invite you to attend a one-day seminar on Feb 21st in Richmond on protecting IP in the cannabis industry.

More details on this seminar can be found here: Grow Your Assets – Intellectual Property for the Cannabis Industry: Are you Ready? 

 

Patenting a Computer-Implemented Invention? New USPTO Guidance Document Revises Considerations

On January 7, 2019, the United States Patent and Trademark Office (USPTO) released a new guidance document that outlines a modified procedure for how the office will determine whether a claim in a patent application or patent is directed to subject matter that is or should have been eligible for patent protection under 35 U.S.C. 101.

The revisions are substantive and could potentially make it easier to obtain patent protection for computer-implemented inventions, an area where protection has recently been difficult to obtain and maintain.

Of note, the guidance provides that a claim directed to an abstract idea could still be eligible for patent protection if the abstract idea is integrated into a practical application. It also outlines only three categories of abstract ideas and states that only in rare cases are there additional examples.

The impact of this revised guidance could meaningfully affect patent prosecution, and is currently the subject of solicited written comment from the public until March 8, 2019.

Our team will be happy to advise you on potential patent protection for your invention in light of these updated guidelines.

 

CIPO Goods and Services Manual Updated to Add More Cannabis-Related Goods and Services

The cannabis market continues to grow with Canada legalizing cannabis for recreational use last fall. In the meantime, cannabis companies are racing to protect their selected brands. A keyword search in the Canadian Intellectual Property Office (“CIPO”) trademark database for active trademark applications or registrations wherein the description of goods and services contains “cannabis” or “marijuana” revealed 3846 results, 2569 of which were filed last year. In light of the increasing interest in robust trademark protection, the CIPO has updated its Goods and Services Manual to include more examples of acceptable statements relating to marijuana and cannabis. Some examples are:

  • cannabis grinders
  • cannabis oil for cosmetic purposes
  • cannabis oil for electronic cigarettes
  • cannabis oil for food
  • cannabis oil for the treatment of cancer
  • dried cannabis
  • chocolate bars infused with cannabis
  • live cannabis plants

Please contact us if you are interested in learning more about cannabis brand protection.

IBM Secures the Most Patents in 2018

According to data compiled by IFI Claims Patent Services, 308,853 US utility patents were granted in 2018,  representing a 3.5% decline from 2017’s record year. However, the number of pre-grant publications increased in 2018 from 2017, indicating that US patent activity remains strong.  IBM retains its record for obtaining the most patents in a year for the 26th year in a row.

IBM secured 9,100 US patents in 2018. Many of these patents relate to artificial intelligence and quantum computing. Samsung ranked second with 5,850 granted patents. Other significant patentees include: Canon (3,056), Intel (2,735), LG (2,474), Taiwan Semiconductor Manufacturing Co (2,465), and Microsoft (2,353).

 

China Revising IP Laws to Strengthen Foreign Companies’ IP Rights

The Chinese Government has recently submitted a first draft of a new law aimed at better protecting intellectual property owned by foreign companies to the Standing Committee of the National People’s Congress, China’s de facto legislative body.  Key provisions include prohibiting forced technology transfers from foreign firms, raising fines for patent infringement and holding online service providers responsible for facilitating IP infringement.

It will be interesting to see how this draft is revised and eventually enacted as China continues to engage in a trade war with the United States.  Read more here and here.

Amendments to India’s Patent Rules Propose Allowing Female Applicants to Request Expedited Examination

India’s Ministry of Commerce and Industry has recently published proposed changes to India’s Patent Rules. Notably, the published amendments propose allowing for expedited exam of patent applications if at least one of the named applicants is female. The published amendments also propose allowing small entities to request expedited examination.

Read more here.  Read the published proposed amendments here.

 

Proposed Amendments to Patent Rules Published for Consultation

The Government of Canada has published its proposed amendments to the Patent Rules in the Canada Gazette Part I. The proposed amendments, expected to come into force by fall 2019, will significantly change the current Patent Rules in an effort to modernize Canada’s patent regime. Some key changes include:

  • restoration of the priority right will be available in appropriate circumstances;
  • filing requirements in order to receive an official filing date will be simplified;
  • filing dates can be received via electronic submission at any time, including weekends and holidays;
  • 42-month late national phase entry as of right will no longer be available, although it will still be possible to enter the national phase in Canada within this time period if the failure to enter the national phase by the 30-month deadline was unintentional;
  • third party intervening rights will be introduced as an exemption from infringement in certain circumstances where a patent application was abandoned; and
  • the time limit for the applicant to request examination will be reduced from five years to four years after the filing of an application.

The public consultation is open until 30 December 2018.

Epic Lawsuit may Determine Copyright in Dance Moves

Rapper 2 Milly has sued Epic Games for, among other things, allegedly infringing copyright in Milly’s signature dance moves by selling the dance moves as a character emote in their popular FortniteTM game. The case may help clarify to what extent dance moves can be copyrighted under American law. See more on the lawsuit here and the US Copyright Office’s position on copyright in dances here.

 

CIPO Announces Changes to the Canadian Classification Standard for Industrial Designs

Substantial amendments to modernize Canada’s industrial design regime came into force on  5 November 2018. To support the modernization of Canada’s industrial design regime, the Canadian Intellectual Property Office (CIPO) has released a new Industrial Design Office Practice Manual, which came into force concurrently with the coming into force of the amendments on 5 November 2018.  The CIPO has also recently announced that it has introduced an updated version of its Canadian Classification Standard for Industrial Designs in an attempt to enable the CIPO to conduct a comprehensive prior art search using classifications that are more aligned with international standards. The online Canadian Industrial Design database has also been updated to allow users to search under this updated classification system. The document showing the updated classification system can be found here. The CIPO’s announcement on this point can be found here.

 

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