Negotiations on the Trans-Pacific Partnership (TPP) free trade agreement have concluded, and on November 5, 2015, the government of Canada published the official text of the agreement. The TPP, if ratified by Parliament, would require changes to Canadian intellectual property laws, including copyright law, as the TPP sets the minimum standards of copyright protection and enforcement mechanisms to be provided by each signatory to the agreement. In the area of copyright law, key changes that would be brought by the TPP include extending the term of copyright protection from 50 years to 70 years following the life of the author, imposing criminal sanctions for certain acts of copyright piracy, and providing for a “Notice-and-Takedown” regime.

Canadian copyright law currently recognizes the duration of copyright to be the life of the author plus 50 years. However, the TPP, if ratified, would require Canada to extend the term of copyright protection to last the life of the author plus 70 years (or in the case of copyright held by a non-natural person, 70 years from the date of publication), which is presently the duration of copyright in many countries including the United States and members of the European Union.

The TPP would also require Canada to impose criminal penalties for wilful copyright piracy conducted “on a commercial scale”. According to the TPP, wilful copyright piracy on a commercial scale is not limited to acts carried out for commercial advantage or financial gain, but also applies to “significant acts, not carried out for commercial advantage or financial gain, that have a substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace”. Canadian copyright legislation already provides for criminal liability for certain acts of copyright infringement, including acts of piracy for profit. However, there has been some concern expressed by members of the Canadian public that the new TPP provisions may have overly harsh consequences for an increased number of infringing activities, and would allow the authorities to criminally charge persons dressed in homemade cosplay costumes for copyright infringement, as one example.

While the TPP may broaden the scope of infringing acts which may attract criminal liability, the TPP does not purport to change the scope of what would constitute an act of copyright infringement. Under the current Copyright Act, the production of a homemade cosplay costume or fan art illustrating a character, without permission from the copyright owner of the character, could constitute an infringement of copyright. That said, a defence to infringement may be available under the Act’s “fair dealing” provisions, if it can be shown that the dealing was “fair” and that the dealing was for the purposes of research, private study, criticism, review, news reporting, parody, satire, or education. In addition, amendments to the Act introduced in 2012 have carved out certain protections for user-generated works which are used solely for non-commercial purposes.

In addition, the TPP provides for a “Notice-and-Takedown” regime, wherein an Internet Service Provider (ISP) would be required to forward to its subscribers any notices of alleged copyright infringement provided by a rights holder and immediately remove or disable access to the allegedly infringing content. This is in contrast to Canada’s current “Notice-and-Notice” regime, introduced earlier this year, wherein the ISP is only required to forward the notice and maintain a record of the subscriber’s activity for a certain period of time. Under the “Notice-and-Takedown” regime, ISPs who remove or disable access to allegedly infringing content would be exempted from liability for copyright infringement provided they make good faith attempts to notify the subscriber of the infringing activity. Given that Canada has a “Notice-and-Notice” regime in place, it may be exempted by the TPP from having to adopt a “Notice-and-Takedown” regime.

The TPP is now before the Canadian Parliament for ratification. Prime Minister Justin Trudeau has promised Parliamentary hearings on the agreement, so it remains to be seen when and how the standards provided in the TPP will be implemented.

by Amy Fong

New anti-spam legislation has been introduced in Canada to deter spam and other electronic threats such as identity theft, phishing and spyware. The majority of the legislation, including those portions related to the sending of commercial electronic messages (CEMs) will come into effect on July 1st, 2014. However, sections related to the unsolicited installation of computer programs or software and a private right of action conferred by the legislation will not take effect until January 15th, 2015 and January 1st, 2017, respectively.

The legislation, referred to as the Canadian Anti-Spam Legislation, or “CASL”, will be enforced both through regulatory measures such as administrative monetary penalties and, eventually, through a private right of action. Enforcement will involve several agencies, primarily the Canadian Radio-television and Telecommunications Commission, and also the Competition Bureau and the Office of the Privacy Commissioner. In addition to establishing a regulatory framework to address spam and other electronic threats, CASL gives these agencies the authority to share information and evidence with international counterparts.

Penalties for non-compliance with the legislation are stiff, with maximum penalties of $1 million for a violation by an individual, or $10 million for a violation by a corporation. Accordingly, there is a strong incentive to comply with CASL. Unfortunately, the legislation is very complex and imposes significant obligations on the sender of a CEM.

For Canadian businesses, the new legislation likely means an update to current email practices. To send a CEM within, from or to Canada, organizations will need to both obtain consent from recipients to send such messages, and provide specified content and an unsubscribe mechanism in the message itself. Consent can be express (whether oral or in writing) or implied, and is not required in certain specified circumstances, but the onus to prove compliance with CASL is on the sender. Organizations seeking consent should consider making and keeping a complete and unedited audio recording of oral consents (if they are otherwise able to record the conversation), and record in a database the date, time, purpose, and manner of written consent.

When asking for express consent, organizations must provide recipients with:

• the purpose(s) for which the consent is being sought;

• the name of the person or organization seeking consent;

• a mailing address and either a phone number, email address or website, which remains valid for at least 60 days after the CEM is sent;

• a statement identifying the person on whose behalf consent is being sought;

• the identity and contact information of any third party or affiliate used to obtain the recipient’s consent;

• a free unsubscribe mechanism that takes effect within 10 days to allow recipients to electronically opt-out of communications, including a website to which such opt-out instructions may be sent; and

• the ability to opt-out of all types of communications sent either by the organization or a third party partner.

If an organization is seeking express consent, they also need to explain why they are contacting the prospect and if the organization cannot include this information in the message, they will need to provide a link to a web page that clearly displays this information. Once the legislation comes into force, sending an electronic message requesting consent will be considered a CEM, and so consent will not be able to be obtained through such a message.

In certain circumstances, consent can be implied. First, consent can be implied if an organization sends a CEM in the context of an existing business or non-business relationship . Second, consent can be implied if recipients conspicuously publish their electronic contact information without indicating they do not want to receive communications and the CEMs sent are relevant to the recipient’s business, role, functions or official capacity. Third, consent can be implied if recipients voluntarily disclose their electronic contact information to the sender, such as through providing a business card, without indicating they do not want to receive communications and the CEMs sent are relevant to the recipient’s business, role, functions or official capacity. Implied consent expires in six months if a prospect does not become a client and in two years if an existing client does not buy something new or does not renew their subscription, loan, account or contract. Hence, there is an incentive to obtain express consents.

Some CEMs do not require consent, including those that:

• provide a quote or estimate in response to a request;

• facilitate or complete a commercial transaction;

• provide warranty, product recall or safety alerts about a product;

• provide factual information about the ongoing use of an existing product, service or good or an ongoing subscription, membership, account, loan or similar relationship;

• provide information about an employment relationship;

• deliver a product or service, such as an upgrade;

• fulfill, provide notice of, or enforce a legal obligation;

• are sent on behalf of a registered charity or political party for the purpose of raising funds; or

• are the first message sent following a referral.

Finally, the prohibition on sending CEMs does not apply when sending messages to family or friends or when responding to inquiries or applications.

In order to ensure that your organization is complying with this legislation, it is prudent to review your current practices and list of consents, develop a plan to ensure that future CEMs are compliant and get express consent from any potential recipients.

With an increasing number of businesses advertising and conducting business over the Internet, a question that often arises is whether by virtue of its presence online, a business has use of a trademark in a foreign country even without a brick and mortar presence in that country. As recent cases have demonstrated, when it comes to online activities it is often difficult to determine what constitutes proper trademark use under Canadian trademark laws.

The concept of “use” is important to establishing trademark rights. For example, in Canada a prior user of a mark generally has rights that trump those of a subsequent user of a confusingly similar mark. In add

ition, an assertion of use must eventually be made before a trademark can be registered in Canada. A trademark is “used” on goods where the goods are sold in the normal course of trade, and the mark is shown on the goods or on their packaging in the transfer of the goods. A trademark is “used” on services where the services are performed and the mark is displayed in the performance or advertising of those services. However, depending on the context and the particular services in question, recent Canadian cases have taken somewhat different approaches to the general test for use on services as applied to cyberspace.

Prior to about 2011, use of a trademark on the Internet revolved around whether the goods and services were available to persons in Canada. For example, it was generally considered that in order to have trademark use on online retail store services, the products must be shipped to Canada (in addition to the trademark being shown in the advertising or performance of the online retail store services). Online advertising of services only available abroad was not considered use of a trademark in Canada.

However, in 2011 the definition of use was apparently broadened, at least in relation to retail store services, when a registration for the mark THE SPORTS AUTHORITY was upheld even though the mark’s owner was not operating any stores in Canada and there was no evidence of goods having been ordered over the Internet. The Federal Court of Appeal found that there was use of the mark on retail store services since there had been many Canadian visitors to the website which displayed the mark, and such visitors could gather useful information such as product information and US store locations.

By contrast, a registration for the mark BELLAGIO was partially expunged in 2012 for non-use in relation to hotel and casino services because there were no hotels or casinos operating in Canada. Online access by Canadian visitors to the Las Vegas’ hotel website (through which bookings could be made) did not amount to use on hotel or casino services in Canada. The registration was limited to hotel and casino reservation and booking services.

Subsequent to the Bellagio decision, a registration for the mark VRBO was expunged because of prior use of the same mark by HomeAway.com, Inc., a US company that offered vacation rental services through its website at VRBO.com. The Federal Court noted that although the VRBO.com website was hosted in the US, there was evidence of HomeAway.com, Inc.’s vacation rental services being provided in Canada since the business was advertising and contracting with Canadians to list their properties on the website.

Thus, it can be seen from these cases that while it may not be necessary to have a physical presence or website hosted in Canada to have proper use of a trademark on services, trademark use does require that the services are provided to some extent in Canada—although the degree and nature of such use is still a developing question.

By Amy M. Fong and Sampson Z.Y. Pun

On January 17, 2014, the Federal Court rendered its decision in Abbvie Corporation et al. v. Janssen Inc., a patent infringement case involving Canadian Patent No. 2,365,281, titled “Human Antibodies that Bind Human IL-12 and Methods for Producing” (the “281 Patent”). This is the first Canadian decision to confirm the validity of functional claiming in the biologics area. The court held that the mere fact that the scope of an antibody claim is functionally defined does not automatically render the claim invalid.

The ‘281 Patent disclosed a recombinant antibody that binds to IL-12, a cytokine that plays an important role in mediating the adaptive immune response. The ‘281 Patent also disclosed the use of phage display technology to find a monoclonal antibody that would bind IL-12 with sufficient affinity. IL-12 has been linked with autoimmune disorders (where a person’s own immune system is attacking the person’s own cells and tissues), such as psoriasis. The description of the ‘281 Patent contained data from a double-blind clinical trial in which a candidate antibody, J695, was administered in healthy patients, including a person who had psoriasis. The J695 antibody was shown to reduce that person’s psoriasis symptoms.

The ‘281 Patent had 223 issued claims, but the patentee only asserted claims 143 and 222. The court construed these two claims as being directed to the use of human antibodies, however created, to treat psoriasis, which bind to IL-12 with at least a certain level of stickiness and potency.

The therapeutic agent in STELERA®, the defendant Janssen’s drug, is the antibody ustekinumab, and the drug is approved in Canada for treatment of psoriasis. This antibody was developed using transgenic mouse technology, and is structurally different from and binds to different sites than the J695 antibody described in the ‘281 Patent. However, expert evidence at trial showed that Janssen’s antibody has affinity and potency that fell within the scope of claims 143 and 222 as construed. While Janssen argued that the expert evidence is not admissible, it did not conduct its own testing, and the court found the asserted claims to be infringed by Janssen through induced infringement.

In its defence, Janssen argued that the asserted claims of the ‘281 Patent were invalid because of obviousness, covetous claiming, and insufficiency and lack of enablement. On the issue of obviousness, the court found that the claimed inventions were not self-evident having regard to the prior art. The evidence established that before the invention, there was only a hope that some human disease may be treated by an antigen binding to a cytokine like IL-12. The inventors “got lucky” and found that anti-IL-12 antibodies, with certain traits, can be used to treat psoriasis. This discovery was found by the court to be inventive, and, accordingly, the asserted claims were found to be non-obvious.

With respect to the invalidity grounds of covetous claiming, insufficiency, and lack of enablement, Justice Hughes addressed these grounds by asking a single question: Is the claim overly broad? Specifically, the court considered whether the patentee is entitled to protection over a broad class of antibodies having certain functional characteristics even though the patentee only disclosed one antibody developed using one method in the specification.

The court found that the techniques used to create these antibodies (phage display and transgenic mice) and the techniques used to measure binding and potency of the antibodies were well known in the art at the relevant time. There was no evidence that any antibody falling within the scope of either claim 143 and 222 was not useful in treating psoriasis or that a person skilled in the art, given the patent, could not have created an antibody satisfying the parameters of the asserted claims. Accordingly, claims 143 and 222 were not found to be overbroad. Justice Hughes noted that the issue of sufficiency, or overbreadth, has to be assessed on a case-by-case basis, and that “there is no simple principle that can be universally applied that would say, for example, that you have shown only one or two antibodies in your disclosure; you cannot claim all that will do the particular trick you have in mind.”

This decision is notable because it is the first decision in Canada to confirm that an antibody claim is not invalid simply because it is functionally defined. This decision may also be used in overcoming Canadian patent examiner’s objections based on claim scope. In recent years, Canadian patent examiners have increased objections under section 84 of the Patent Rules, asserting that the pending claims are broader in scope than the teachings of the description and should be amended to incorporate an “essential element” identified from the disclosure. This case illustrates that a patentee is entitled to claim scope that is broader than the specific embodiments disclosed in the specification, provided there is adequate support for the claimed invention.

As the case was bifurcated, remedies and the amount of damages are to be assessed in a separate hearing. Janssen may also appeal the decision to the Federal Court of Appeal as of right. This decision, and any subsequent appeal decisions, may have significant implications for companies that are already marketing biologics in Canada or seeking to enter the Canadian market with new biologics or biosimilars/subsequent entry biologics.

Finally, the prohibition on sending CEMs does not apply when sending messages to family or friends or when responding to inquiries or applications.

In order to ensure that your organization is complying with this legislation, it is prudent to review your current practices and list of consents, develop a plan to ensure that future CEMs are compliant and get express consent from any potential recipients.

By Vincent K.S. Yip

Patent Prosecution Highway (PPH) programs speed up patent examination procedures and allow applicants to obtain patents quickly by allowing one patent office to benefit from work previously done by another patent office. Most PPH programs are bilateral, i.e., between two patent offices. On January 6, 2014, a new Global Patent Prosecution Highway (GPPH) pilot program was launched. The GPPH pilot program simplifies existing bilateral PPH programs by employing a single set of qualifying requirements for all participating patent offices. So far, participating patent offices include Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, the Nordic Patent Institute, Portugal, Russia, Spain, Sweden, United Kingdom, and the United States.

Under the GPPH pilot program, applicants can make a PPH request based on favourable national or international (PCT) ‘work products’ to any or all of the 17 participating patent offices. A favourable work product includes a Notice of Allowability or, within the framework of the PCT, a favourable written opinion or international preliminary report on patentability.

GPPH pilot program’s eligibility requirements resemble those of existing bilateral PPH programs and include:

• applications filed in participating offices must share a common earliest priority or filing date;

• the office of earlier examination must have found at least one claim allowable; and

• all claims presented for examination under the PPH program must sufficiently correspond to at least one of the claims found allowable by the office of earlier examination.

In addition to the above requirements, to be eligible for participation in the GPPH pilot program in Canada, the Canadian application must not yet have been examined and must be published. An applicant can make a request to have an application opened to public inspection before the expiry of the 18-month confidentiality period. Also, Office Actions issued by an office of earlier examination that are unavailable via an electronic dossier system must be provided (in English or French).

A PPH-qualifying Canadian application is usually examined within several months and, in most cases, the claims allowed in other jurisdictions are also allowed in Canada. According to CIPO, as of September 30, 2013, the grant rate was 88% (compared to 53% for non-PPH applications); the average pendency from a PPH request to the first Office Action was 1.8 months (compared to 18-30 ); the average pendency from a PPH request to a final decision was 5.4 months (compared to 41 months); the average number of Office Actions was 0.6 (compared to 1.5); and the allowance rate without a first Office Action was 43% (compared to 4.5%). This means significant cost and time savings for applicants. However, peculiarities in Canadian patent law require careful consideration when entering the PPH. For example, methods of medical treatment claims are generally not allowed in Canada; however, it may be possible to obtain claims with similar scope through reworded “use” claims.

Also, the Canadian Intellectual Property Office (CIPO) offers a unique strategy for fast-tracking PPH-qualifying applications. The CIPO’s ‘special order’ program provides a first office action within 60 days of making a request and paying the required fee. Such a request can be made only if the application is published and a request for examination has been made. The CIPO can, accordingly, be used as the office of earlier examination for PPH requests in participating offices to expedite prosecution in other patent offices participating in the GPPH pilot program.

In addition to participation in the GPPH pilot program with the patent offices of the countries mentioned above, the CIPO has bilateral PPH programs with the patent offices of China, Germany and Mexico. Notably, the CIPO does not yet have a bilateral PPH program with the European Patent Office (EPO), and the EPO has yet to join the GPPH pilot program.

Most people have heard of copyright, trademarks, and patents, three major categories of intellectual property. But there is a fourth lessor known category, which is growing in importance: industrial designs. An industrial design protects the aesthetic (as opposed to functional) features of a finished article. Generally all physical products with outwardly visible original aesthetic features may be eligible for industrial design protection, from cars to cutlery, lawn chairs to smart phones. Continue reading “Industrial Designs – Intellectual Property’s Secret Weapon” →