Last week, the federal government announced its strategy to prevent abuses of intellectual property rights and to increase awareness of the IP system in Canada. Under the strategy, amendments to the Patent Act, Trade-marks Act, and Copyright Act are planned. Highlights of the strategy include amendments to the notice-and-notice regime for online piracy, restrictions on patent trolling and trademark squatting, and investment in IP education and awareness.
Read more here.
In the seemingly never-ending saga between Google and Equustek Solutions Inc. (see here and here), a Canadian court has again sided with Equustek in this recent decision. Google argued before the BC Supreme Court that a U.S. order declaring the “Global Judgment” issued by the Supreme Court of Canada to be unlawful and unenforceable in the United States should be sufficient grounds to set aside or vary the “Global Injunction”. In denying Google’s request to set aside or vary the “Global Injunction”, the BC Supreme Court stated that “[t]he effect of the U.S. order is that no action can be taken against Google to enforce the injunction in U.S. courts. That does not restrict the ability of this Court to protect the integrity of its own process through orders directed to parties over whom it has personal jurisdiction.”
World Intellectual Property (IP) Day takes place this Thursday, 26 April 2018. This year’s theme is Powering Change: Women in Innovation and Creativity. The Canadian Intellectual Property Office (CIPO) is hosting activities to celebrate. An information and networking event will be held at Library Square Tower in Vancouver from 1:30PM to 3:00PM. Registration closes tomorrow (24 April 2018). To register, click here.
Since its quiet introduction to an esoteric mailing list in 2008 by the pseudonymous Satoshi Nakamoto, blockchain technology – the underlying technology of cryptocurrencies like Bitcoin – has become a hot topic. At its core, a blockchain is a continuously updating list of encrypted records which is simultaneously stored and updated by a number of parties (e.g. computers) such that the records cannot be retroactively altered. Like all disruptive technologies, blockchain has implications for many aspects of the law, including intellectual property law. The repurposing of blockchain technology in different fields raises the question of whether or not blockchain-based technologies are patentable.
To be patentable in Canada, an invention must be: (1) useful; (2) novel over the prior art; and (3) inventively different from the prior art. The usefulness requirement should not create a significant hurdle for blockchain-based technologies. The novelty requirement is satisfied if there has been no prior public disclosure of a system identical to the claimed invention in a single patent or other publication. Adaptations and improvements of the concepts disclosed by Nakamato may satisfy the novelty requirement but patent protection is no longer available for the bare concepts disclosed by Nakamoto due to the 2008 disclosure. The inventiveness requirement is satisfied if a person of skill in the art would not find it obvious to adapt or combine the prior art to yield the claimed invention. The inventive step requirement may provide a hurdle to those inventions which, for example, simply employ a blockchain ledger as described by Nakamoto in place of a previously-known type of ledger. Applicants will therefore need to demonstrate that their blockchain-based technology is more than merely a straightforward application of the Nakamato disclosure.
In addition to the above requirements, patent protection is only available for those technologies that comprise patentable subject-matter in compliance with section 2 of the Patent Act. According to the Canadian Intellectual Property Office’s Manual of Patent Office Practice, when it comes to computer-implemented inventions, a solution to a “computer problem” (i.e. a problem with the operation of a computer) is more likely to be patentable than a solution to a non-computer problem (i.e. a problem whose solution may be implemented using a computer). To secure patent protection, Applicants may therefore benefit from disclosing significant detail describing technical aspects of their blockchain-based technology, such as the logic performed by the computers and how the computers interact with one another. It may also be beneficial to describe how the specific implementation of the technology provides improvements over the prior art.
In addition to raising questions of its patentability, blockchain technology has garnered attention as providing possible solutions for intellectual property protection and intellectual property securitization. For example, a number of companies are currently exploring the concept of using blockchain for the registration of intellectual property ownership. Such proposed registries are not directed to the enforcement of intellectual property rights but instead are directed to facilitating tracing and transferring intellectual property ownership.
As blockchain-based technology, continues to rapidly grow, companies should consider filing patent applications to secure protection for their blockchain-based technologies as soon as possible and before there is any public disclosure thereof.
The 2018 edition of the Canadian Legal Lexpert Directory recognizes Bruce Green, Gavin Manning, David McGruder and Hilton Sue for excellence in their field. The Canadian Legal Lexpert Directory is published annually by Carswell, a division of Thomson Reuters, and is widely regarded as one of Canada’s most prestigious legal directories, ranking the country’s top practitioners in a range of practices and industries.
Health Canada has issued the first Certificate of Supplementary Protection (CSP) since new provisions providing for such protection came into force on 21 September 2017. The CSP was granted to Wyeth Holdings LLC in respect of Canadian patent No. 2463476 pertaining to a novel immunogenic composition for the prevention and treatment of meningococcal disease. The CSP effectively extends the period of patent protection for this composition by two years.
A CSP provides an additional period of patent protection of up to two years for drugs containing a new medicinal ingredient or a new combination of medicinal ingredients. More information on CSPs can be found in our previous article on the subject. Eleven other applications for CSPs are pending.
The United States Court of Appeals for the Federal Circuit has found that Google LLC’s unauthorized use of Oracle Americas Inc.’s Java SE Application Programming Interface (“API”) packages in its Android operating system was not fair, and thus infringed Oracle’s copyrights in its API packages.
According to the judgment:
Android’s release effectively replaced Java SE as the supplier of Oracle’s copyrighted works and prevented Oracle from participating in developing markets. This superseding use is inherently unfair. [page 54]
A damages amount is yet to be determined but may be in the billions (see here). Google has 90 days to appeal the decision.
Read the full decision here.
The European Court of Justice has upheld a 2016 decision of the European Union Intellectual Property Office to invalidate a European community design registration owned by Crocs. The Court held that the popular footwear had been disclosed at a trade show in 2002, and that Crocs was thus outside the one-year “grace period” when it filed its application in 2004 seeking to protect its shoe design. Crocs has two months to appeal the decision.
Read more here.
A BC Court has found for the plaintiff, a wedding photographer, in a case of online defamation by a disgruntled customer. According to the judgment:
[104] The inescapable conclusion is that it was, because she felt that she had not been fairly treated, and motivated by vindictiveness and distain towards the plaintiff, Emily intended to attack the plaintiff’s integrity, ethics and reputation with all her might. Her mission was to expose what she wrongly perceived as a corrupt business. The Publications were disseminated over the internet so that they would be read by thousands of people for the purpose of causing as much damage as possible to the reputation and ongoing business of the plaintiff. That goal was successful.
The court awarded general damages of $75,000 for lost business, aggravated damages of $15,000, and punitive damages of $25,000 on the basis that “Emily [the defendant], and others who think it is acceptable to use the internet as a vehicle to vent their frustrations, must be given the message that there will be consequences if their publications are defamatory.”
The case is one of the largest awards for online defamation in BC, and a reminder that online actions can have very real world consequences.
Read the judgment here.
Big ideas can change the world, but even the most important inventions face significant challenges in the early stages of development, financing, and commercialization. Oyen Wiggs is committed to helping entrepreneurs protect their innovations from the outset, which is why we are proud to have been recognized in Managing IP’s 2018 edition of “IP STARS”, under the category of Patent Prosecution.
Founded in 1990, Managing IP is a leading source of news and analysis on intellectual property developments around the world.
Research for the 2018 “IP STARS” ranking was conducted by a team of impartial researchers. The thoroughness of this ranking makes it among the most comprehensive surveys of IP firms.
“Before compiling the rankings, our research analysts conducted market feedback interviews and reviewed detailed work information from firms, thousands of survey responses, and publicly available information.” – Managing IP, March 2018
Patent prosecution, or the process of seeing a patent application through to grant as a patent, is an essential part of the work that we do. Being recognized by Managing IP in this area highlights how our lawyers are known for their skill in deftly navigating clients through this complex process.
We are proud to work with innovators in diverse fields, helping them to develop a strategy for protecting their ideas. Whether your field is biotechnology, software, or consumer products, our lawyers have the technical insight and the legal acumen to help protect your innovation.