The practice of plant breeding has developed new plant varieties with a wide variety of desirable attributes. For example, plant varieties having better growing characteristics, an improved sensory profile, an enhanced physical appeal, or a heightened nutritional value can be created through a variety of techniques, thereby bringing many benefits in the areas of agriculture, forestry, and horticulture. New plant varieties can be produced sexually by pollinating one plant variety with the pollen from another or asexually by exposing a plant variety to mutagens. Molecular breeding techniques, for example recombinant DNA technology and genetic engineering, can also be used to develop new plant varieties.

A new plant variety can generate great commercial value to the plant breeder. For instance, midge tolerant wheat varieties are estimated to have a $40 million annual economic impact. With the growth in the craft beer brewing industry and the impending legalization of recreational marijuana in Canada, many new varieties of hops have recently been developed, and it is anticipated that many will seek to develop and protect new strains of cannabis.

In many cases, developing a new plant variety can be costly and time-consuming. To protect their newly developed plant varieties, plant breeders can use Canada’s Plant Breeders’ Rights Act. In Canada, the patenting of higher life forms, such as plants, is not directly permitted [1], and also, plants developed by traditional breeding techniques generally do not qualify for patent protection. Plant breeders’ rights granted under the Plant Breeders’ Rights Act give the breeder exclusive rights in relation to propagating material of the protected variety, harvested material of the protected variety obtained through unauthorized use of the propagating material, essentially derived varieties, varieties that are not clearly distinguishable from the protected variety, and varieties whose production requires the repeated use of the protected variety.  Furthermore, plant breeders’ rights can be obtained in respect of varieties developed by molecular breeding or traditional breeding techniques.

Unlike other forms of intellectual property (such as patents, industrial designs, and trademarks) which are administered by the Canadian Intellectual Property Office, plant breeders’ rights are administered by a separate government agency known as the Plant Breeders’ Rights Office (“PBRO”) which is part of the Canadian Food Inspection Agency.  The PBRO examines applications for new plant varieties to determine whether the applicants are entitled to receive a grant of rights.  The PBRO also publishes the Plant Varieties Journal.

Requirements for Protection

To qualify for plant breeders’ rights, a plant variety must be new, distinct, stable, and uniform.  Each of these requirements is described briefly below.

A plant variety is new if the propagating or harvested material of that variety has not been sold in Canada more than one year prior to the filing of the application for plant breeders’ rights. For sales outside Canada, a sale cannot have been made more than six years prior to the application date in the case of a tree or vine and four years in any other case.

Distinctiveness means that by reason of one or more identifiable characteristics, a plant variety is clearly distinguishable from all varieties of common knowledge known to exist at the time the application was filed.  Generally, distinctiveness is evaluated with respect to one or more reference varieties. The reference varieties should be varieties of common knowledge, which have been cultivated or exploited for commercial purposes or described in publications available to the public.

Stability means that the variety must be stable in its essential characteristics after repeated reproduction or propagation.

Lastly, uniformity means that the variety must be sufficiently uniform in its relevant characteristics. Any variations in characteristics of the plants should be predictable, capable of being described and commercially acceptable.

Acquiring Protection

To acquire plant breeders’ rights, it is necessary to file an application. When filing an application for plant breeders’ rights, the applicant must propose a variety name as denomination for the new variety.  The denomination cannot be registered as a trademark in Canada since it must be freely available for use by other parties, even after the plant breeders’ rights for the variety have expired.

Additionally, the applicant must submit 1) information on sales of the variety, 2) origin and breeding history of the variety, 3) a statement of uniformity and stability, and 4) a distinctiveness statement.

An application may claim priority based on a previously filed foreign application in a member country of the International Union for the Protection of New Varieties of Plants (“UPOV”) within one year from the filing date of the first foreign application.  A list of UPOV members can be found here. For example, an application for plant breeders’ rights in Canada can claim priority based on a previously filed corresponding United States plant patent application, provided that the Canadian application is filed within 12 months after the United States application.

Plant Varieties Journal

Every application for plant breeders’ rights is published in the Plant Varieties Journal and is subject to a six-month objection period.  Any person who considers that an application should be refused a grant of rights or that the proposed variety denomination is not acceptable may file an objection, on payment of a fee.

Examination

To proceed with examination, the applicant must file a request for site examination with the PBRO.  The examination determines if a new plant variety is distinct, stable, and uniform.

Seed reproduced varieties require two growing cycles of comparative tests and trials. However, a breeder is able to replace one growing cycle by purchasing foreign test results, if available. The other growing cycle must take place at a trial site in Canada to allow an examiner from the PBRO to conduct a site examination and verify that the variety is distinct, stable, and uniform. For ornamental or horticultural varieties (except potato), a breeder can rely on foreign test results to establish that a plant variety is distinct, stable, and uniform, except that the PBRO may require comparative trials in Canada if it determines the foreign test results are not acceptable.

Grant of Rights

Once the PBRO determines that the variety is eligible for grant of rights, a certificate of plant breeder’s rights is issued. Plant breeders’ rights are granted for a term of 25 years in the case of a tree or vine and 20 years in any other case, provided that the annual renewal fees are paid.

Conclusion

Plant breeders’ rights provide a way for breeders to protect and achieve a return on their newly developed plant varieties.  Such protection provides an incentive for breeders to recover their investment and continue to develop new plant varieties having useful traits.

Footnotes

[1] Harvard College v Canada (Commission of Patents), 2002 SCC 76.

 

 

What was once every child’s dream of working as a professional video game player has now virtually become a reality. The rise of eSports (electronic sports) over the past decade has made it possible for avid gamers to profit from an industry that has traditionally viewed them as the target audience for its products. The statistics speak for themselves. In 2013, tickets to the League of Legends’ World Championship event at Staples Center sold out within two hours of going on sale. In 2015, Dota 2’s premiere tournament ‘The International 2015’ had a prize pool of over $18 million USD.  The University of British Columbia fosters one of the strongest intercollegiate eSports teams in North America, consistently winning competitions for some of the most popular videos games in the world. Canada’s video game industry, as a whole, employs more than 35,000 people and contributes $3.0 Billion annually to the Canadian GDP.

As the industry continues to grow, associated intellectual property issues may become more complex. The audiovisual elements of video games make them remarkably similar to other forms of screenplay performances (movies, television). Yet, online streaming of video game footage has not yet encountered as many copyright-related problems as the illegal distribution of such other types of works.  Hence, there is interest in developing an understanding of the Canadian courts’ potential perspective on novel copyright issues that have arisen due to the growth of eSports.

Potential issues relating to eSports include piracy of video games, enforcement of copyright in public performances and online streams of game play, and the copyright interests of game players themselves in the streams they create.  This article examines each of these potential issues.

(i) Unauthorized Distribution of Copies of Video Games

In terms of potential piracy of video games themselves, video games are protected under the Copyright Act as computer programs [1], and enjoy similar protection as other types of software. The Canadian courts have been clear that unauthorized distribution of software is copyright infringement, and have shown little hesitancy to penalize those who distribute pirated software. In Adobe v Thompson [2], the Federal Court awarded maximum statutory damages in the amount of $340,000 against the defendants for selling counterfeit reproductions of the plaintiffs’ software programs through Kijiji and Craigslist. Individual non-commercial infringers (i.e. someone who downloads pirated video games for personal use) can also be sued for damages capped at up to $5,000 under provisions implemented by the Copyright Modernization Act [3].  Thus, direct piracy of video game software carries significant penalties.

Large potential penalties notwithstanding, for practical reasons, large scale piracy of copies of video games is unlikely to pose a major issue.  At present, the majority of the most popular video games in world, which happen to coincide with those featured in eSports competitions, are free-to-play (“F2P”) games played on the personal computer. Users do not have to pay up front to play the game, but may choose to do so to access premium features of the game. Hence, there is little incentive for gamers to download pirated video games, since they can play the F2P games regularly without cost, and afford the occasional pay-to-play (“P2P”) video game that they especially enjoy.  Some developers for smartphone games have also adopted a similar F2P business model, where gamers can play the entirety of a game for free, but may elect to pay to make the game easier to “beat”.  Thus, traditional software piracy is of lesser concern for video games than for other types of computer programs.

(ii)  Copyright of Game Developers in Public Performances and Online Streaming of Game Play Footage

In view of the large selection of F2P games available, video game streaming services such as Twitch.tv (“Twitch”) have emerged as platforms that allow gamers to share their gaming experiences.  Twitch allows any user to record their gaming footage, and broadcast it in real-time to viewers worldwide. A Twitch “stream” typically comprises real-time gameplay footage, a real-time webcam view of the player, background music, and commentary from the player. Streams of eSports competitions usually incorporate additional content like live interviews and analyst breakdowns in between games. Streams of single player P2P games are also popular. Unlike multiplayer eSports games that emphasize competition, traditional P2P games maintain appeal to gamers for their graphics, storyline, and overall gameplay experience. “Playthrough” streams of these types of games provide a way for viewers to enjoy the audiovisual elements of the game for free.

Twitch streamers can profit in several ways, including: receiving a share of Twitch’s ad revenue, and receiving “donations” from viewers in the form of monthly “subscriptions” to a streamer’s channel, so there is an incentive for players to stream their footage.

The issue of whether it is possible for end users to stream around copyright infringement in Canada has been previously discussed in our recently published article. While it remains uncertain whether viewers can be held liable for receiving unauthorized streams of copyrighted content, the penalties for streaming unlicensed copyrighted material for commercial purposes can be severe. In Twentieth Century Fox Film Corporation v Hernandez [4], the Federal Court ordered $10 million in statutory damages in a default judgment against the defendant for streaming episodes of The Simpsons and Family Guy online.

For the most part, the Canadian courts have not had to address potential copyright-related issues associated with the streaming of video games, as game developers have incentives to make such content available to the general public. Services like Twitch also usually draw up express licensing agreements with game developers to ensure compliance with copyright laws.  However, the eSports space has not been developing without controversy. Nintendo has threatened to shut down unauthorized streams of Super Smash Bros. Melee tournaments organized by third parties in the past. Capcom requires for-profit tournament organizers to obtain licensing agreements to use its games in competitive settings.

At present, Canadian case law has not conclusively determined the extent to which performances of video games, including streams of video game footage communicated via the Internet, should be afforded copyright protection. As eSports continue to gain recognition, it may be helpful to examine the courts’ views on copyright issues related to traditional sports. In Canadian Admiral Corporation Ltd. v Rediffusion Inc., the Exchequer Court  expressed the view that a football match, by itself, is not subject to copyright protection as the games are not “planned in advance or fixed in writing” [5]. The US Court of Appeals for the Second Circuit’s decision National Basketball Association v Motorola also held that while broadcasts of NBA games are entitled to copyright protection, the games themselves are not. The court specifically stated that “unlike movies, plays, television programs or operas, athletic events are competitive and have no underlying script” [6].

The important distinction to be drawn for eSports is that video games are developed by a team of game designers, who own copyright in the artistic, dramatic and musical works that are publicly performed in the course of playing the video game in public. For example, the Ninth Circuit of the US Court of Appeals held in Allen v Academic Games League of America that playing a board game is not a “performance” within the meaning of the US Copyright Act since it is well understood that board games are meant to be played. Video games are also “meant to be played”, but comprise a much more complex matrix of artistic, dramatic and musical works than a board game.  It is not immediately clear from a policy perspective why video game developers should be entitled to more copyright protection than board game designers for simply designing a work with more complex audiovisual elements. Some online games (i.e. Blizzard Entertainment’s Hearthstone: Heroes of Warcraft) are arguably trading card games in disguise [7], and can potentially be redesigned to be played without electronic devices.

With that said, the U.S. courts have recognized protection for video games as audiovisual works [8], and those active in the eSports industry appear to respect that the developer of the game has copyright in the audiovisual work created by game play, and that the performance of that audiovisual work in public, whether in a tournament setting or online as a stream of a player playing the game, are protected by copyright and cannot be carried out without permission, unless some fair dealing exception applies.  Accordingly, we have not yet seen challenges to the rights of the game developers in these contexts because the participants have not pushed the issue.

(iii)  Copyright of Game Players in Gameplay Footage Streams They Create

A third issue to consider is whether streamers create original works that are themselves eligible for copyright protection, or whether their streams may be performances of the underlying works that entitle the gamer to protection of his or her performer’s rights.

With regard to the possible creation of original works by game players that are themselves protected by copyright, CCH Canadian Ltd v Law Society of Upper Canada [9] is the leading case on the threshold of originality in Canadian copyright law. In that case, the Supreme Court of Canada (“SCC”) held that an original work must be a product of an author’s exercise of skill and judgement. The SCC qualified skill as “the use of one’s knowledge, developed aptitude or practiced ability in producing the work”, and judgement as “the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work” [10]. At first blush, it may be difficult to appreciate how gameplay footages could possibly be considered as original dramatic works. There appears to be very little creativity involved in button smashing. For example, the United States Court of Appeals for the Federal Circuit has previously held that “playing a video game is more like changing channels on television than it is like writing a novel or painting a picture” [11]. Since a video game’s character models, environments, and soundtracks are all predefined, a player’s creation of a particular stream of that video game could be argued to be no different from rebroadcasting a movie with trivial contributions.

However, one who is well versed in the eSports industry would argue that there is a high level of skill and judgment involved in creating the content of a gameplay footage. Whereas movies, novels, and almost every other form of artistic work follow a predefined script, video games are interactive. Gamers have control over what they see and hear, and no two playthroughs are ever identical. It could be argued that a gamer creates original content each time he or she plays the game, just as a musician creates music each time he or she plays a solo.  Even though a gamer’s creativity may be capped by the preprogrammed bounds of a video game, skilled players are capable of generating video contents that are not replicable by amateurs.

In addition to broadcasting different gameplay content every time, a streamer also incorporates original elements, such as commentary, while playing the game. A stream, viewed in its entirety, can be argued to be a new work that expressly showcases a streamer’s ability to evaluate different possible options in producing the ultimate dramatic work (a video). A gamer must constantly make decisions throughout the game, and the outcomes of those decisions are directly shown in the video that viewers see. There should be no issue with the fixation requirement for acquiring copyright, as competitive streams are almost always recorded by the streaming platform.

(iv) An Example of Potential Copyright Issues in eSports

League of Legends recently experienced a copyright debacle that touched on two of the aforementioned issues when Azubu (a video game streaming service) issued a DMCA takedown notice to a Twitch stream for streaming allegedly unauthorized content. Azubu had a contract agreement with a famous League of Legends player which gave it exclusive rights to stream his games on Azubu’s platform. It is clear that as the developer of League of Legends, Riot Games owns all intellectual property associated with the game’s graphics and character models. Hence, Riot Games has the right to issue a takedown notice to the Twitch stream if it wants to do so. It is also arguable that the famous League of Legends player creates his own original content, and is therefore entitled to prevent an unauthorized Twitch stream from reproducing his content.

The complication in this dispute is that the Twitch stream was not a direct re-stream of the Azubu stream; rather, it was a stream of an omniscient perspective using a sanctioned third-party client. Riot Games expressly allows players to create videos using Riot Games’ intellectual property for non-profit purposes. Certainly, a streamer’s copyright would not displace or override the developer’s, but could potentially add a second layer of copyright protection to complicate the matrix of rights involved. While the case was ultimately settled between the parties, it illustrates the complexity of potential copyright infringement issues that may ensue in the eSports industry.

Conclusion

The growth of eSports and the popularity of video game streaming platforms like Twitch have introduced novel copyright issues in the video game industry. The Canadian courts have not conclusively determined the extent to which public performances of video games should be afforded copyright protection, as developers, tournament organizers, and streamers have adhered to licensing agreements and avoided lawsuits. As eSports continues to evolve into a form of mainstream entertainment, streamers should be aware of their rights and understand the copyright issues that surround the games they use and the content they create.

By Jeff K.Y. Sun and Jennifer A. Marles

Endnotes

[1] Copyright Act (R.S.C. 1985, c. C-42) – Section 2 reads: “computer program means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result.”

[2] Adobe Systems Inc. et al. v Thompson, 2012 FC 1219

[3] Copyright Modernization Act (S.C. 2012, c. 20)

[4] Twentieth Century Fox Film Corporation v Nicholas Hernandez, John Doe and Jane Doe, 3 December 2013, T-1618-13

[5] Canadian Admiral Corporation Ltd. v Rediffusion Inc., 20 CPR 75 at pp. 78-79

[6] National Basketball Association v Motorola Inc, 105 F3d 841 (2^nd Cir. 1997) at para 21

[7] American Heritage dictionary defines trading card as: A card with a picture or design printed on it, often one of a set collected and traded by children.

[8] Atari, Inc v Amusement World, Inc, 547 F.Supp. 222 (D. Md. 1981)

[9] CCH Canadian Ltd v Law Society of Upper Canada, [2004] 1 SCR 339

[10] CCH Canadian Ltd v Law Society of Upper Canada, [2004] 1 SCR 339 at para 25

[11] Midway MFG Co v Artic International, 704 F2d 1009 (7^th Cir. 1983) at para 9

 

We live and conduct business in a burgeoning sharing economy driven by services such as Uber™ and Airbnb™. Thus, the development of shared office spaces such as HiVE™ and ShareDesk™ should come with no surprise. These shared working spaces provide flexible and often cheaper office solutions where businesses can co-inhabit, interact and often collaborate. However, sharing an office space may adversely impact a business’s ability to obtain valid patent protection.

Publicly disclosing an invention may impede a business from obtaining valid patent protection for their invention in Canada and the United States if a patent application for the disclosed invention is not filed within one year following the disclosure[1]. Further, many countries outside of Canada and the U.S. employ an absolute novelty standard whereby valid patent protection is not available if the invention is disclosed prior to filing for patent protection.

However, not all disclosures impede valid patent protection in Canada.

First, to jeopardize an inventor’s ability to obtain valid patent protection in Canada, a disclosure must be “public.” Canadian courts have generally interpreted “public” to require disclosing an invention to at least a single person on a non-confidential basis. For example, in Gibney v Ford Motor Co of Canada Ltd (1967), 52 CPR 140 (Exch Ct), the Court held that the installation of a protective shield for a car generator under the hood of a customer’s car amounted to a public disclosure of the protective shield. The Court was of the view that the inventor took insufficient steps to protect the confidentiality of the invention and that any person who looked under the hood of the customer’s car could and would have seen the protective shield. Accordingly, the Court stated that “as soon as the unidentified customer drove out without any injunction or restriction placed upon him, [the invention] then became available to anyone who wanted to lift up the hood and look at it.”

Even if a disclosure is “public”, patent protection in Canada is not necessarily precluded. The disclosure must enable a reasonably skilled person to perform or manufacture the claimed invention[2]. Even where an invention can be performed or manufactured on the basis of trial and error experimentation stemming from the disclosure, the disclosure would be construed as an “enabling disclosure.” However, the Supreme Court of Canada has stated that there can be no enabling disclosure in circumstances where a reasonably skilled person is placed under an undue burden to perform or manufacture the claimed invention[3].

Whether the disclosure of an invention qualifies as an enabling disclosure or not will depend on the facts surrounding the disclosure, and to add a further complication, some forms of disclosure are exempted in Canada. For example, experimental use, such as public experimental use of an invention to bring the invention to perfection, has been exempted in certain circumstances[4]. The Federal Court has expressed the view that the experimental use exception “applies in particular where, of necessity, the experimental use must be conducted in public”[5].

In Bayer Inc v Apotex Inc, 2014 FC 436, Apotex argued that Bayer should be statutorily barred from obtaining valid patent protection for the contraceptive YAZ™, as Bayer’s European and US clinical studies for YAZ™ effectively amounted to a public enabling disclosure more than a year before the filing date of Bayer’s patent application for YAZ™. The Federal Court held that Bayer’s clinical studies were on an experimental basis articulating that they “were necessary to prove that the drug was safe and effective”[6]. Further, the Federal Court found that “Bayer took reasonable steps to ensure the confidentiality of the relevant documents and to ensure that unused tablets were returned”[7]. In another example, a farmer placed an experimental feeder at the back of his farm such that only an oil delivery man would have possibly been able to see the experimental feeder[8]. The Federal Court was satisfied that, at all material times, the farmer was experimenting with the feeder and thereby the disclosure was not a public disclosure disentitling the inventor from valid patent protection[9].

In the context of shared office spaces, inventors should take care to keep their inventions confidential. For example, a complete circuit schematic diagram of an electronics invention sketched on a white board visible to an entire shared office space could potentially be construed as an enabling public disclosure and could bar valid patent protection in Canada. Similarly, leaving an assembled breadboard or breakout board on top of a desk within the shared office space would likely amount to an enabling public disclosure if at least one person not bound by a confidentiality agreement had access to the board. By contrast, leaving a finished prototype open to the public, provided the internal functioning of the prototype would be unknown and not discoverable by a person of reasonable skill in the art (i.e., a “black box” prototype), may not amount to an enabling public disclosure to bar patent protection in Canada[10]. For information regarding what is meant by making the subject matter of an invention “available to the public”, see our earlier article here.

The circumstances rendering other disclosures enabling public disclosures may be less obvious. For example, leaving a set of unconnected electrical components on an office desk may or may not amount to an “enabling disclosure”. It is conceivable that in simple situations where the components can be connected in only a single manner, such as where only one light emitting diode and one voltage regulator are openly left on a desk, the act of openly leaving the components on a desk within a shared office space could well amount to an “enabling disclosure”. In more complex situations, for example where an analog sensor, multiple amplifiers and multiple passive components are placed on a desk, whether the placement of the components on the desk amounts to an “enabling disclosure” will depend on able arguments grounded on the state of the art. How much trial and experimentation would be required to be able to make or use an invention and at what point a person of reasonable skill in the art is placed under an undue burden may be a question of fact highly dependent on the circumstances.

Notwithstanding that exceptions for certain public disclosures exist, even in cases where an inventor is fairly certain that a use is “experimental” or that a disclosure is of a “black box” nature, a court looking at the matter at a later date may disagree based on its assessment of the facts, and the need to litigate the issue may drive up the cost of enforcing the patent. In general, to lessen the risks associated with working in a shared office space and inadvertently publicly disclosing an invention, it is generally advisable for any business to take great care to ensure no confidential information is disclosed to others working in the shared office space, and to ensure that the proper safeguards are in place, including non-disclosure and other confidentiality agreements with those hired to assist in developing the invention.

Any businesses sharing an office space and making an inadvertent public disclosure of its confidential inventions should diligently track first public disclosure dates and seek professional advice immediately.

Finally, despite shared office spaces fostering collaboration and collegiality between businesses, inventors should take care to minimize collaborations relating to their inventions. In Canada, informal discussions with an unaffiliated individual may lead to the individual being considered an inventor of your invention if it can be said that the individual contributed to at least part of the inventive concept of your invention[11]. Although courts have required the satisfaction of a high threshold, omitting this individual as an inventor from a patent application could subsequently void a granted patent under Canadian law[12]. Further, as a co-inventor, the individual would become a co-owner of your company’s granted patent, potentially exploiting the patent rights or inhibiting dealings with your company’s patent. For information regarding what consequences co-ownership of patents may have, see our earlier article here.

Ultimately, sharing an office space may raise complex fact-dependent intellectual property related issues including (but not limited to) the issues discussed above. Careful consideration as to what safeguards and protective measures should be put in place is necessary if you are contemplating the use of a shared office space to develop potentially patentable inventions.

By Nikola Rajic, Stephanie Melnychuk and Jennifer A. Marles

END NOTES

[1] Paragraph 28.2(1)(a) of the Patent Act , RSC 1985, c P-4 (the “Patent Act”), states that “[t]he subject-matter defined by a claim in an application for a patent in Canada … must not have been disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere”. Similarly, United States patent law provides a one-year grace period for disclosures made by an inventor under 35 USC § 102(b)(1)(A) which reads that “[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor”.

[2] Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61, [2008] 3 SCR 265.

[3] Ibid, at para. 37.

[4] Bayer Inc v Apotex Inc, 2014 FC 436 at para 119 [Bayer].

[5] Ibid.

[6] Supra note 4 at para 121.

[7] Ibid.

[8] Hi-Qual Manufacturing Ltd v Rea’s Welding & Steel Supplies, 55 CPR (3rd) 224 at 238-39 (FCTD), aff’d 61 C.P.R. (3d) 270 (FCA).

[9] Ibid.

[10] In Varco Canada Limited v Pason Systems Corp, 2013 FC 750, a new design for downhole rigs (the “invention”) used in the oil and gas industry was tested on a third party operating well prior to filing a patent application. The internal functioning of the invention could not be revealed by external inspection of the invention and the invention was locked to prevent internal inspection. On these facts, the Federal Court found that there was no opportunity for the public to analyze and inspect the internal functioning of the invention and thereby testing the invention on a third party operating well could not amount to a public disclosure of the invention. By contrast, in Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2012 FCA 333, a new bearing assembly for oil and gas drilling motors was rented to and used by a third party without any obligation of confidentiality prior to the filing of a patent application for the bearing assembly. Although the internal functioning of the bearing assembly could not be determined by external visual inspection, the internal functioning could be discerned upon dismantling of the drilling tool, which could be fairly readily done. Accordingly, a majority of the Federal Court of Appeal found that use of the bearing assembly by a third party in the absence of an obligation of confidentiality amounted to a public disclosure.

[11] Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at paras 94-96, [2002] 4 SCR 153 [Wellcome].

[12] Paragraph 53(1) of the Patent Act, supra note 1, states that “[a] patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.” In Wellcome, supra note 11 at para 94, the Supreme Court of Canada found that omission of an inventor from a patent application may void the patent under s. 53(1) of the Patent Act if the “omission was a ‘material’ misstatement that was ‘wilfully made for the purpose of misleading’.”