Google Sues in United States District Court To Prevent Enforcement of Supreme Court of Canada’s Global Injunction

On June 28, 2017, the Supreme Court of Canada (“SCC”) upheld a BC court order granting a worldwide injunction which required Google to de-index all websites operated by Datalink Technology Gateways Inc., Datalink Technologies Gateways LLC and a personal defendant from any Google search result worldwide. See here for our original post on this SCC decision.

Google initiated an action on July 24, 2017 in the United States District Court for the Northern District of California seeking to prevent enforcement of the SCC’s global injunction in the United States.  Google’s court filing alleges that the SCC’s order is unenforceable in the United States as it is inconsistent with the First Amendment, the Communications Decency Act, and the public policy surrounding enforceability of foreign judgments pursuant to international comity.  Read the full pleadings here.

 

Coming into Force of CETA

A number of Orders in Council dated 31 August 2017 confirm that many provisions of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act (commonly referred to as “CETA”) will come into force 21 September 2017. Of note, these provisions include changes to the Patent Rules and the Patented Medicines (Notice of Compliance) Regulations . Proposed amendments to the Patented Medicines (Notice of Compliance) Regulations are further discussed here.

 

Status of Proposed Amendments to the Trade-marks Regulations

Today, the Canadian Intellectual Property Office (“CIPO”) published a report on the public consultations on the proposed amendments to the Trade-marks Regulations. The CIPO has now compiled, reviewed, and analyzed the feedback received during the June 19 to July 21, 2017 consultation period.  The CIPO has identified what it considers the “main comments” from the feedback, which include:

  • concerns with respect to the lack of clarity in several sections of the Regulations, including sections related to opposition proceedings;
  • in view of the “Declaration of Use” requirement being formally removed from the Trade-marks Act, a proposal to include regulatory provisions that would allow for the voluntary submission, formal acceptance, and publishing of use information; and
  • a request for clarification regarding the process and obligations stemming from the new provisions incorporating the Madrid Protocol system.

The CIPO will work with the Department of Justice Canada to clarify the problematic sections.  The CIPO will also draft guidance documents and practice notices to clarify the regulatory practice.  This fall, the CIPO will host targeted in-person sessions, working groups, and web-based seminars to inform stakeholders on the implementation of the Trade-mark Regulations.

Atari sues Nestlé for KitKat’s “Breakout” marketing

Atari has launched a lawsuit against Nestlé for a KitKat marketing campaign, alleging infringement of Atari’s trademark and copyright rights in its iconic Breakout video game.  Court documents filed by Atari allege that “Nestlé simply took the classic Breakout screen, replaced its bricks with KIT KAT bars, and invited customers to “Breakout” and buy more candy bars”. The court documents also describe some of the interesting backstory to the Breakout video game, namely that “[i]n 1975, two little known but up-and-coming developers – Steve Jobs and Steve Wosniak – created Breakout for Atari” and that the money paid to Mr. Jobs for Breakout served as seed money for his startup company, Apple. See link to article.  See court documents.

 

Ottawa’s Proposed Crackdown on use of the Term “Bank” by Non-Banks has been Suspended

The Canadian government has suspended its proposed crackdown on the use of the terms “bank” and “banking” by non-bank financial service providers such as credit unions, which would have required them to phase out all use of these terms by 2019. In the meantime, the government will be reviewing the matter to determine whether there is room for such businesses to use these terms in appropriate circumstances. As part of this review, it is expected that the government could clarify whether non-bank financial service providers may use the term “bank” or “banking” in trademarks, trade names, logos, slogans, websites, print materials, etc., in view of the federal Bank Act which regulates the use of the word ”bank” by financial institutions. Businesses in the fintech industry which support the services of financial service providers, but which do not provide financial services themselves, are excluded from the crackdown. See full article here.

Rogers Seeks Leave to Appeal to Supreme Court of Canada on Issue of Whether ISPs Can Charge a Fee for Disclosing Identity of Alleged Copyright Infringers

Rogers Communications Inc. has filed for leave to appeal a decision of the Federal Court of Appeal (2017 FCA 97) holding that it cannot charge a fee for retaining records of the identities of alleged copyright infringers to whom it forwards copyright infringement notices under Canada’s “Notice and Notice” regime prescribed by sections 41.25 and 41.26 of the Copyright Act. While the Act allows Internet service providers to charge a fee prescribed by regulation for complying with this regime, no such fee has been prescribed by regulation.  Accordingly, the Federal Court of Appeal held that Rogers could not charge any fee for carrying out its obligations.  Our article on the Federal Court of Appeal decision being challenged by Rogers is here.

CIPO Consultation on Proposed Changes to Patent Rules Now Open

The Canadian Intellectual Property Office (CIPO) has made available proposed amendments to the Patent Rules. The Government of Canada has been amending Canada’s intellectual property laws to bring Canada into compliance with international IP treaties. Accordingly, the Patent Act has been amended to comply with the Patent Law Treaty and now corresponding changes are being made to the Patent Rules.

One of the changes presented in the Patent Act and Patent Rules is the introduction of third party rights which may protect a third party from an action for infringement under particular circumstances. Third party rights may arise where a third party engages in activities that would constitute infringement but occur while the relevant granted patent or patent application has lapsed or been abandoned even though that patent or application is later revived or reinstated. More information on how third party rights are being implemented in the proposed amendments to the Patent Rules can be found here.

The proposed amendments to the Patent Rules have been made available as part of a consultation process. Interested parties such as businesses, inventors and organizations are invited to provide feedback about the proposed Patent Rules from August 1 to September 8, 2017. More information about the proposed amendments and how you can submit feedback can be found here.

Oyen Wiggs congratulates Roni Jones

We are pleased to announce that Roni Jones has passed the patent and trademark agent examinations, becoming qualified to practice as a registered patent and trademark agent in Canada.

Roni attended law school at the University of British Columbia, where he obtained his Juris Doctor in 2013. He was called to the Bar of British Columbia in 2014 after articling at the firm. Prior to studying law, Roni obtained a Bachelor of Applied Science degree in Materials Engineering at the University of British Columbia and worked in research and design for a local startup company.

Federal Court of Appeal Discusses Date of Assessing Sufficiency of Disclosure in Pharma Patent Suit

In Idenix Pharmaceuticals, Inc v Gilead Pharmasset LLC, 2017 FCA 161, the Federal Court of Appeal affirmed the Federal Court’s decision that Idenix’ Canadian patent No. 2490191 was invalid for lack of utility and insufficiency of disclosure. Both Idenix and Gilead held patents for compounds that helped treat against the family of flaviviridae viruses, which includes Hepatitis C, and each alleged that the other’s patent was invalid.

Idenix was not successful on either point, both at trial and on appeal.  The Federal Court of Appeal upheld the lower court’s holding that Gilead’s patent was valid, and also upheld the finding that Idenix’ ‘191 patent was invalid for insufficient disclosure for failure to disclose how to make the compound claimed in the patent.  Although the utility of different pathways for synthesizing the drug at issue was shown after the filing of Idenix’ patent application, the court relied on Novopharm Limited v. Pfizer Canada Inc., 2010 FCA 242 and held that the proper date for assessing sufficiency of disclosure is the application’s filing date.  In the case of Idenix’s ‘191 patent, as of the filing date, a person skilled in the art would have experienced an undue burden in synthesizing the compound claimed in the patent given the lack of guidance in the specification.  Consequently, the Federal Court of Appeal affirmed the invalidity of the ‘191 patent.

Proposed Amendments to Patented Medicines (Notice of Compliance) Regulations

The Patented Medicines (Notice of Compliance) Regulations (“PM(NOC)”) provides a link between Canada’s patent and drug approval systems. The Canada-EU Comprehensive Economic and Trade Agreement (“CETA”) calls for significant overhauls to the Canadian patent system. The Canada Gazette recently published proposed amendments to the PM(NOC), as well as proposed Certificate of Supplementary Protection Regulations. Highlights include: early and mandatory case management in PM(NOC) proceedings, a new appeal framework for PM(NOC) decisions, and supplementary protection for patents relating to human drugs. Comments on the proposed regulations must be submitted before 31 July 2017. Read more here and here.

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