Use of Declaratory Judgment before Patent Infringement

Ever wondered if you would infringe a patent but wanted to know before any infringement occurred?

Honeywell International, Inc. and Arkema Inc. are competitors in the field of automotive air-conditioning systems. Honeywell owns certain United States patents covering refrigerant inventions – in this case, innovations for a cooling system with low global warming potential. Arkema was about to enter into certain long-term supply contracts but before doing so, it wanted an advance ruling from the court, to determine whether such conduct would infringe the Honeywell patents. To achieve this, Arkema sought a declaratory judgment under the (US) Declaratory Judgment Act that by entering into contracts with automobile manufacturers, it would not incur liability as an “indirect infringer” of the Honeywell patents.

According to this latest decision, the US Federal Circuit Court of Appeals has ruled that this situation created a controversy that was “sufficiently immediate” to access the relief under the (US) Declaratory Judgment Act.

Read this article from LES: Suppliers May Ask Courts to Rule that They Do Not Indirectly Infringe Patents when They Have Agreed to Supply an Allegedly Infringing Product Even Before Their Customers Have Had an Opportunity to Directly Infringe the Patents.

Thanks to Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. who have posted a link to the decision here.

Calgary – 07:00 MDT

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Bookmark on your iPhone, iPad, Android tablet or mobile device for updates and developments in Canadian intellectual property law, including practical information and commentary on intellectual property business issues, technology commercialization and developments in the law, copyright and patent questions, trade-mark law, software and IT outsourcing, and related areas including privacy and cleantech licensing.

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Thanks to all of our readers. We’ll be taking a break during the month of August, and will resume in September, 2012.

Calgary – 07:00 MDT

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Alberta’s Innovation System



Join us on March 1, 2012, (see our Events page) for the upcoming meeting of the Licensing Executives Society (LES) on The Alberta Innovation System. Technology commercialization has its challenges. However, resources and funding programs are available to support technology development for small and medium sized enterprises (SMEs) in Alberta. Within Alberta, the “innovation system” has undergone reorganization over the past 2 years. In Calgary, Calgary Technologies Inc., (CTI), and University Technologies International, (UTI) have amalgamated to form Innovate Calgary. Across the province, Alberta Ingenuity, Alberta Research Council, iCORE and nanoAlberta have merged into Alberta Innovates – Technology Futures (AITF).

How does this impact licensing professionals, counsel, advisors, SMEs and entrepreneurs? What do you need to know about commercialization support within Alberta? Attend the LES Alberta Innovation System luncheon with our panel: Darren Massey Senior VP, Innovate Calgary, David Reese, Vice President, Licensing, Innovate Calgary and Scott Bass, Alberta Innovates – Technology Futures.  

Calgary 07:00 MST   

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The Frontier of IP (Part 4)


Simple inventions can transform our lives. Consider this: Can we use light bulbs to transmit data wirelessly?mp9003827921.JPG

On TEDTalks, an inventor shows how light from a standard LED bulb can transmit data to a mobile device, in effect acting like a wireless router. When you think about it, the invention is not that revolutionary, since WiFi transmissions use standard radio frequencies, which are simply a different set of frequencies than visible light, both of which are part of the spectrum of electromagnetic radiation. This patent  (OPTICAL FREE SPACE DATA TRANSMISSION US 2011/0069958, by the same inventor, Harald Haas) discloses the use of infrared light (another frequency along the same spectrum) for wireless data transmission in an airplane, describing an invention that would enable safe inflight wireless internet. Somebody tell Alec Balwin to invest.

The use of visible light for data transmission is not new. The first use (also claimed to be the first wireless transmission) was sent by (Canadian inventor) Alexander Graham Bell in Washington D.C. in the year 1880. His patented system was called the Photophone.

Calgary – 07:00 MST

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StartUp Calgary


Their December 1st Launch Party is just a few weeks away: Get tickets here. It’s an annual event for enterprising Calgary technology companies to spend a moment in the spotlight and get support and recognition from the tech community.

Calgary – 07:00

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Patents: The Basics


In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

  • Canadian Patents: Patents protect inventions, such as a process, machine, manufactured article, or composition of matter, or any new and useful improvement to an existing invention. Patents provide the patent owner with the right to exclude others from making, selling, or using the patented invention for a period of 20 years from the date of filing. In exchange, the patent owner must fully disclose the invention. To be patentable, the invention must be new (in other words, be the first in the world); it must be useful (functional and operative); and it must be non-obvious (in other words, it shows “inventive ingenuity” and is not obvious to someone skilled in that area).  Abstract ideas, a mathematical formula or algorithm, or scientific principles are not patentable.
  • Best Practices:
    • Non-Dislosure: Any public disclosure of the invention prior to filing can result in loss of patentability. Canada has a 12 month grace period, permitting the filing of a Canadian patent application within one year of disclosure, but this grace period is not available in most countries.
    • Patent Searching:  A patentability search is recommended before the patent application is prepared. The search and opinion will confirm the patentability of the invention, and can provide insight to a patent agent on how to craft the patent application.
    • Provisional Patent: In the US, inventors can file what is known as a “provisional patent application”, and while there is no exact equivalent in Canada, it is possible in Canada to file a simplified form of a patent application, which is often used as a way to quickly secure a filing date. Some inventors fall into the trap of thinking “I’ve got a provisional patent” since an application of this type has been filed. But a provisional will never be examined and will never issue as a patent. Think of this as an incomplete application, since that’s what it is. The provisional or incomplete application must be followed up with a complete application within 12 months in the US, and within 15 months in Canada, after which the patent rights will be lost.  
    • Use a registered patent agent: Even the Canadian Intellectual Property Office warns of unauthorized and incompetent advisors who are not qualified to prosecute patent applications before the patent office. 
  • Patents Outside Canada:  Patent rights are granted country-by-country, so an issued patent in Canada is not enforceable in the United States, for example, without obtaining patent rights in that country.  A patent application must be filed in each country. Canadian inventors can apply for foreign patents from within Canada through the Patent Cooperation Treaty (PCT), which provides a standardized international filing system. Through the PCT, a Canadian company can access the application process for 142 PCT member countries.
  • Design Patent: See Industrial Design.

For more information and assistance with your patent and intellectual property needs, visit Field’s Intellectual Property & Technology Group. 

Calgary – 07:00 MDT

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Banff Venture Forum


The Banff Venture Forum is in one month: October 6 and 7, with streams focussing on information technology, cleantech and life sciences. This is a well-attended networking event that serves as a showcase for emerging technology companies from across North America. Also see the  Road to Banff Pitch Competition (Alberta).

Calgary – 10:30 MDT 

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CleanTech Investment


A recent article in the Globe and Mail shows that VC and government investment in Canadian cleantech remains strong, but the markets are not responding due to the relatively small size and short-term underperformance of the sector.  In Alberta, cleantech investment has been given a boost by the federal government’s Sustainable Development Technology Canada (SDTC) fund, which announced $53 million for 17 new funded projects in July, four of which are either based in Alberta or have a direct connection to Alberta technology.

SDTC is now accepting applications under the NextGen Biofuels Fund™, and information on the Fund and applications details are available at  On a related note, the Global Clean Energy Congress takes place in Calgary in November.

Calgary – 07:00 MDT

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Good Faith: The Atomic Bomb of Patent Law?


In a recent Federal Court of Appeal decision in Canada (Corlac Inc. and National Oil Well Canada Ltd. v. Weatherford Canada Ltd., 2011 FCA 228) the court clarified whether there is a general duty of good faith on the part of patent applicants in Canada. Paragraph 73(1)(a) of the Patent Act is clear that a patent application is considered abandoned if the applicant does not “reply in good faith” to the examiner. However, once the patent issues, any “good faith” duty is extinguished since the duty relates only to good faith in the prosecution of the patent application. The court has clarified that any alleged breach of this duty cannot be used to attack the validity of an issued patent. Post-issuance, other remedies must be used, such as section 53(1), for allegations of misrepresentation.

In Canada, this clarification of the law helps to allay fears that an “inequitable conduct” doctrine was creeping into Canadian law (for example, G.D. Searle & Co.  et al. v. Novopharm Limited et al. (in 2007) and Janssen-Ortho Inc. v. Apotex Inc. (in 2008) both explored these concepts).

This marks a distinction from US patent law, where the inequitable conduct doctrine can be used to attack an issued patent. Even in the US, the United States Court of Appeals for the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011), has scaled back the impact of this approach, calling it the “atomic bomb” of patent law. In patent law, this is one bomb that has been defused in Canada.

Calgary – 07:00 MDT


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Update: Clean Technology Patents in Canada

The Canadian Intellectual Property Office announced last week that the new clean-tech patent rules are now in force. The new rules officially came into force on March 3, 2011. This will permit applicants to obtain expedited prosecution of applications when the invention is related to green technology. This requires a declaration by the applicant that the technology, when commercialized, would help to “resolve or mitigate environmental impacts or conserve the natural environment and resources”.  For further information, see CIPO’s page on Expedited Examination of Patent Applications Related to Green Technology

Related Reading:
CleanTech & Clean Energy: Innovation vs Patents

CleanTech in Calgary

The National Post interviewed Richard Stobbe for an article on the plan to fast-track cleantech patent applications: “Canada plays catch-up on cleantech patents“

Calgary – 07:00 MDT

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VenturePrize Reminder


A reminder: The Annual TEC VenturePrize Business Plan Competition is still open. The submission deadline for registration for the VenturePrize Fast Growth Competition is February 24, 2011, 4:00 p.m.

Field Law is a proud sponsor. See this link for details.

Calgary – 07:00 MST

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CleanTech & Clean Energy: Innovation vs Patents

Check out Field Law’s CleanTech and Clean Energy practice area.
Is innovation encouraged or stifled by the current patent regime? It’s an old debate which is constantly being reignited. An article by Prof. Guaragna from UBC’s Sauder School of Business argues that the monopoly granted to patent holders has the effect of choking innovation and development in battling climate change, because inventors have to tiptoe through a patent minefield in order to bring new “green technologies” to market. In international negotiations in the past – notably in Copenhagen in 2009 – there was a controversial call to deny patent protection for inventions that help mitigate climate change. The idea is that making these inventions open will ensure the technologies are implemented and used, rather than having them act as roadblocks to development.  

Since 2009, developing countries (including Canada) have moved in the exact opposite direction – by fast-tracking cleantech patent applications to remain competitive in the international marketplace (See: Update: Green Technology Patents in Canada).

Prof. Guaragna argues that patent reform is unlikely to strip away patent rights in the near future, but “open-source” licensing can provide a solution that functions within the existing patent regime. Open source licensing is well known in the software industry, but is in its infancy in other fields such as climate change and life sciences.  Patent pooling can be used as an open source licensing tool:

  • Patent pooling has been successful in commercial applications – for example the DVD licensing pool licenses the dozens of patents for DVD technology – DVD-ROM drives, players, decoders, and discs; a similar pool was established for RFID technology.  
  • Patent pooling is typically voluntary but has also been put to effective use by the US government when it mandated pooling of aircraft patents in 1917 as the US entered the First World War.
  • The Medicines Patent Pool has been established by the international community to deal with HIV treatment in the developing world.
  • Can a CleanTech Patent Pool be next? The Eco-Patent Commons is the closest thing so far… but Canada is not a contributor.

Related Reading:

  1. Open Source Resources
  2. WIPO review of CleanTech patent pools [PDF]
Calgary – 07:00 MST
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CleanTech in Calgary

The Global Clean Energy Congress and Exhibition will be coming to Calgary from November 1 – 3, 2011.  This should be an excellent venue for showcasing local technologies in the cleantech sector. 

In related news, the Canadian Intellectual Property Office’s proposal to amend the patent rules to permit expedited examination of patent applications related to green technology is moving forward. The comment period is closed, and the draft rules (Rules Amending the Patent Rules – Canada Gazette I – October 2, 2010) are being reviewed. As argued by the Intellectual Property Institute of Canada (PDF), this proposed mechanism could be abused “by applicants wishing to accelerate examination of applications having only a dubious connection to green technology.” Further changes are expected before the program is implemented.

Related Reading: The National Post interviewed Richard Stobbe for an article on the plan to fast-track cleantech patent applications: “Canada plays catch-up on cleantech patents“

Calgary – 07:00 MST

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Intellectual Property Law in 2011


Thanks 2010, intellectual property and internet law had an interesting ride. Here are a few issues to watch in 2011:

Canadian Copyright Reform and Anti-Spam Law:  Around this time last year, we predicted that copyright reform wouldn’t come to Canada until 2011 at the earliest. So far that appears to be holding true. However, Canada did make headway in the anti-spam department, with the passing of the Fighting Internet and Wireless Spam Act (hardly a poetic name, but we’ll take what we can get from Ottawa).  Canada’s anti-spam legislation received royal assent on December 15, 2010.  Meanwhile, the Canadian copyright reform bill was introduced in 2010 and the debate will continue when Parliament resumes at the end of January.

And the courts continue to tackle copyright issues piece by piece. News came in late December that a copyright “fair dealing” case will be going to the Supreme Court of Canada in 2011 (SOCAN v Bell).

Clean Tech Law: 2011 may prove to be a break-out year for Canadian Clean Tech companies, as private investment and government incentives provide a boost to companies in this technology-intense sector.  The law surrounding the uses, protection and licensing of clean technologies in Canada will gain traction in 2011.

App Law: This fascinating area of law shows no signs of slowing, as app developers continue to push the boundaries in their use of copyright materials, trade-marks and personal information of consumers, as the technology gallops forward. In December another iPhone-related class action suit was announced, naming Apple and a number of app developers as defendants (Lalo v. Apple, Inc et al, case 5:10-cv-05878).

Business Method Patents: We predicted that some clarity would come out of the Bilski review (in the US) and the Amazon 1-click patent (in Canada). In the US, the Supreme Court handed down its decision in the Bilski review, generally upholding the lower court decision, but cautioning that the machine-or-transformation test is not the only patentability test to be applied.  In Canada, the decision in October in the Amazon case upheld the patentability of business method patents, but the waters were immediately muddied again, when it was announced in November that the decision was being appealed (See: Amazon Business Method Case to be Appealed).

Calgary – 07:00 MST

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Canada’s Clean Energy Strategy

Should Canada develop a national clean energy strategy?

There have been calls for a coordinated national approach to leverage Canada’s ability to compete for investment in the clean-energy market, which was worth over $160 billion in 2009. Earlier this year, a report was released to review the rationale for national coordination on this issue [Link to Report: Towards a National Clean Energy Strategy].

Momentum is building: for example, part of this national investment in cleantech is underway through the federal incentives and investment in clean technologies, including through SDTC (Sustainable Development Technology Canada). Alberta has the potential to leverage its own expertise in energy development to take a lead in this arena and Alberta companies have cornered 15% of SDTC funding. The Alberta government also offers various incentives in the biofuels sector (the Bioenergy Producer Credit Program) as well as funding for GHG-reduction technologies through the Climate Change and Emissions Management Fund. CIPO’s recent announcement about a fast-track program for cleantech patents also helps Canada keep pace with the US, UK and South Korea.

Related Reading: The National Post interviewed Richard Stobbe for an article on the plan to fast-track cleantech patent applications: Canada plays catch-up on cleantech patents

Calgary – 13:00 MST

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Climate Change Bill Killed

The proposed Climate Change Accountability Act was passed by the House but killed in the Senate on Wednesday, marking an end to this attempt to set Canadian targets for atmos­pheric greenhouse gases. The bill also touched on funds or incentives for technology that could be implemented to reduce GHG emissions and the establishment of a federal carbon-credit trading scheme.
Calgary – 08:00 MST

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Update: Green Technology Patents in Canada

Today the Canadian Intellectual Property Office (CIPO) closed its 30-day comment period on proposed changes allowing for fast-tracking of clean tech patent applications. CIPO currently permits expedited examination of a patent application upon request and payment of a fee. The Patent Rules will be amended to expand the existing criteria to allow accelerated examination of patent applications relating to “green technologies.”  There is no definition of “green technologies”. To take advantage of the fast-track program, applicants must submit a declaration as to the technology’s ability to “resolve or mitigate environmental impacts or conserve the natural environment and resources if commercialized.” No additional fee would be required.  It will be interesting to see how the process will ultimately be implemented, how declarations will be scrutinized, and how much quicker examination will take place. No additional CIPO resources have been committed to this program, so it remains to be seen whether success in expediting a high volume of green technology inventions will draw resources away from routine examinations.

With comments closed, the changes to the Patent Rules can proceed to the next stage. Canada will then join the US, Australia, Israel, Japan, South Korea and the UK in a fast-track program for cleantech patents.  The USPTO is also planning to extend and expand its own Green Technology Pilot Program.

Calgary – 09:00 MT

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Clean Energy Patents on the Rise

The Clean Tech sector is IP-intense, and patent protection strategy is front and centre for most clean tech companies. According to the Clean Energy Patent Growth Index (CEPGI), patent filings are on the rise in the Clean Tech sector. Results from the second quarter of 2010 show that U.S. issued patents are up in this sector almost 60 percent over the second quarter of 2009.  For Canadian companies in the Clean Tech industry, intellectual protection strategies will often start with patent prosecution in the US and internationally through the PCT international patent application system.  Canadian inventors can take advantage of the “IPC Green Inventory”, which was developed by the IPC Committee of Experts to facilitate patent searches relating to so-called Environmentally Sound Technologies (ESTs). 

Patent filings are up, and stock-market performance is encouraging in an otherwise rocky financial landscape. The Canadian S&P/TSX Clean Technology Index (launched in March, 2010) has now been up for 6 months tracking the results of TSX-listed companies whose core business is in “green technologies and sustainable infrastructure solutions.” 

Calgary – 09:00 MT

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Summer Break will be taking a break over the summer. We’ll be back in the Fall to pick up developments such as:

Have a good summer. 

Calgary – 09:00 MT

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Canada to Fast-Track CleanTech Patents

Today, the Canadian Intellectual Property Office (CIPO) announced that it is developing a protocol to expedite the examination of patent applications related to “green technology”. Proposed amendments to the Patent Rules would be published for comment in the Fall of 2010, meaning that the fast-track program would not likely take effect until late 2010 or early 2011. 

When it is implemented, the program will make Canada more competitive internationally in this growing industry, since the US, UK, South Korea, and Australia have all implemented similar fast-track programs to earmark cleantech inventions for expedited examination.

Our earlier posts:

Calgary 09:30 MT

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