This week, the Canadian Intellectual Property Office (CIPO) commenced a Patent Cooperation Treaty (PCT) – Patent Prosecution Highway (PPH) pilot project based on PCT work products established by CIPO as the International Searching Authority (ISA) and/or the International Preliminary Examining Authority (IPEA). The project formally began on January 31, 2011, and will run for a period of two years, ending on January 31, 2013.  The corresponding CIPO application must have entered national phase on or after January 31, 2011. During the pilot, CIPO will process PCT-PPH (CIPO ISA/IPEA) requests for advanced prosecution free of charge. For further information, contact the Field  IP Group.

Calgary – 07:00 MST

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

.

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

In our post last month [Business Method Patents in Canada ], we noted the groundbreaking decision that upheld Amazon’s 1-click patent, and established that business methods are patentable in Canada. It now appears the Commissioner of Patents has decided to appeal that decision. The uncertainty is back. Businesses will have to wait until the outcome of this appeal to determine the scope of patentability of business methods in Canada.

Calgary – 08:00 MST

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

It’s not that far-fetched. Companies who sign a contract can agree in advance to resolve their disputes through arbitration.  The law that governs that arbitration, and even the place of arbitration, can all be determined in a “dispute resolution clause”. These kinds of clauses are often overlooked while the parties focus on the business points – such as price, delivery, and deadlines. However, a dispute resolution clause will suddenly be front-and-centre when the parties start squabbling, and one of them wants to get a remedy in Canada. For example, in one recent Alberta case (PetroKazakhstan Inc. v. Lukoil Overseas Kumkol B.V.), arbitration was triggered by one of the parties, and the Alberta Court decided that the breach of contract questions fell within the scope of the arbitration under the law of Kazakhstan.

What about intellectual property licensing agreements?  The same idea holds true. Canadian courts will uphold arbitration clauses. When negotiating your license, spend some time considering the dispute resolution clauses and the potential advantages of arbitration: for example, confidentiality, neutrality, and a resolution process that can be – compared to litigation – relatively quick and inexpensive.  In Bad Ass Coffee Co. of Hawaii Inc. v. Bad Ass Enterprises Inc., a Canadian licensee was held to a clause that compelled arbitration in Utah. The Canadian Court refused to grant a remedy and the licensee was bound by the decision of the US arbitrator.

Related Event: November 4, 2010 – The Licensing Executives Society – Meeting of the Calgary Chapter on the topic of “Arbitration and ADR Clauses in International License Agreements” Presented by Stephen Burns, Bennett Jones and Jim McCartney, McCartney ADR; panel moderated by Richard Stobbe: Link to Register

Calgary – 09:00 MT

In our post earlier this year (Business Method Patents: Amazon Clicks Through) we reviewed the story of Amazon’s battle with the Canadian patent office over its famous  1-click patent. South of the border, the USPTO confirmed the patentability of many of the Amazon’s claims earlier this year.

Yesterday, the Canadian Federal Court handed down its decision upholding the patent. The court was clear: “At its core, the question is whether a ‘business method’ is patentable under Canadian law. …the Court concludes that a ‘business method’ can be patented in appropriate circumstances.”  The court scolded the patent office for rewriting patent law in its rejection of the application. This is a major (and long-awaited) clarification of the law in Canada and will require time to assess its practical impact on patent applications. It is important to note that the Court sent the application back to the patent office to be re-examined, so the patent has not yet issued.

On that point, the Canadian Intellectual Property Office is currently reviewing its Manual of Patent Office Procedure (MOPOP) Chapter 16 – Computer Implemented Inventions. This chapter will need some re-thinking in light of the court’s guidance in Amazon.

In both the Amazon case in Canada, and the recent Bilski case in the US, the courts have indicated that the “machine-or-transformation” test should not be applied to patentability analysis in all cases, and that each application must be determined on its merits. In other words, there has been some guidance but no clear rules to apply to all applications. The state of Canadian law (unless this decision is appealed) is now clear that business methods can be patented in Canada, with careful drafting.

Calgary – 11:30 MT

 

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

Technology commercialization starts with the invention or creation of something marketable – a new device, a tool, an algorithm, a software application.

Before you start to commercialize it, one of the first questions is: Who owns it? If an employee invents something marketable, employers will commonly claim that they own their employee’s invention.  However, in the case of patentable inventions, the Canadian Patent Act is silent on the question of whether an employer has any rights to an invention created by an employee. To the contrary, there is a presumption under Canadian law that an employee is the owner of his or her inventions, unless there is an express contract to the contrary, or the person was employed for the express purpose of inventing or innovating. The case of Techform Products Ltd. v. Wolda provides an interesting review of these issues, in a situation where the employer was ultimately found to have no rights to a valuable patented invention that was created for its business. 

I will be speaking today at UTI‘s Technology Commercialization Series: Commercialization Pitfalls: How to Avoid Them to review ownership issues.   

Calgary – 10:00 MT

Since when are bow ties a patent issue? Since clothier Brooks Brothers was sued for a false-marking claim, related to the long-expired patent for the “Adjustolox” mechanism on their bow ties. Since the patents have expired but are still marked on the product, the company is technically open to a false-marking claim, and the appeals court in the U.S. recently ruled in Stauffer v. Brooks Brothers, Inc., No. 2009-1428, -1430, -1453 (Fed. Cir. Aug. 31, 2010) , that virtually anyone has standing to bring a lawsuit for false marking claims.

In our earlier post (Patent Marking: Update for Canadian Patent Owners), which addressed the Forest Group decision (Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009)),we noted that false-marking claims are, in the US, one of many strategies being used by competitors.  We also note that earlier this year, in the US decision in Pequignot v. Solo Cup (Federal Circuit Court of Appeals, June 10, 2010), the appeals court also decided that knowingly marking a product with expired patents creates a rebuttable presumption of an intent to deceive the public. In the Solo Cup case, the company was successful in rebutting the presumption by gathering evidence of its decision-making process, and convincing the court that its intent was to minimize manufacturing costs, not to deceive the public.

From a Canadian patent case, here’s another patent strategy: in one of the rare cases considering a patent infringement court case versus a patent re-examination before the Canadian Intellectual Property Office (CIPO), the Federal Court recently “froze” the re-examination proceedings, until the outcome of the patent infringement trial. In Prenbec Equipment Inc v Timberblade Inc. 2010 FC 23, the court decided that the nature of the evidence, and the ability to cross-examine witnesses, meant that the trial was the better venue to decide the issues. This is an important consideration in assessing tactics in the midst of patent litigation.

Calgary – 18:00 MT

 

 

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

• Canadian Copyright Reform (with Parliament breaking for the summer, there will be no further Parliamentary debate on Bill C-32 until September);
• The US Supreme Court’s decision in the Bilski case (relating to patentability of business methods and software);
• Changes to the Canadian rules in assessing patentability for “computer-implemented inventions”;
• The Canadian Intellectual Property Office’s plans to expedite the examination of so-called “green technology” patent applications;
• Developments in licensing, trade-marks, internet law and trade-secret law.

Have a good summer. 

Calgary – 09:00 MT

The Canadian Intellectual Property Office has released a draft version of Chapter 16 of the Manual of Patent Office Practice (MOPOP), relating to “Computer-Implemented Inventions”. The chapter is open for public review and comments between June 16, 2010 and August 19, 2010 and is available through the MOPOP Updates web page. The current revision process provides more detailed guidance and examples regarding computer-implemented inventions. 

This development in Canada is being closely watched in parallel with the pending release of the Bilski review of business-method patents and computer-implemented inventions in the US.

Calgary – 09:00 MT

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:

• CleanTech Fast Track in the US
• Should Canada Fast Track CleanTech Patents?  

Calgary 09:30 MT

Patent enforcement and defence strategy often involves a coordinated approach, including patent infringement litigation, patent reexamination before the USPTO, and complaints filed with the International Trade Commission, a U.S. trade panel that can ban importation of infringing goods.  

The i4i suit against Microsoft provides a good case-study. In its long-running patent infringement dispute against Microsoft, the Canadian tech company i4i has won another battle (though the war is far from over). Microsoft challenged the vailidty of i4i’s patent, and the USPTO recently upheld the patent’s validity.

Microsoft appealed the original trial decision, and that appeal was dismissed. Microsoft filed another appeal for a en banc re-hearing, and that appeal was dismissed. The options are now to pursue the appeal up to the US Supreme Court, or appeal the USPTO’s reexamination decision.

Related Posts:

Calgary – 09:00 MT

Industrial design is often overlooked while its flashier cousins – patents, copyright and trade-marks – hog the spotlight.  In both Canada (which uses the term industrial design) and the US (which refers to a design patent), this category of intellectual property only provides protection for ornamental and not functional aspects of the design of the article.  In the recent US Federal Circuit Court of Appeals decision in Richardson v. Stanley Works, Inc., No. 09-1354 (Fed. Cir. Mar. 9, 2010), the court reviewed two design patents claiming an ornamental design for multifunction carpentry tools. Stanley, the owner of the “Fubar” tool (shown left)was sued by Richardson, the owner of the “Stepclaw” tool (shown right) . The Court was clear that the patented design is for a multi-function tool that has several functional components, and that “a design patent, unlike a utility patent, limits protection to the ornamental design of the article.”  The Court found that the only similarities between the two tools were those of unprotectable functional elements, and thus no infringement occurred.

Calgary – 07:00 MST

Do you have a patent in the US or are you a licensee of a US patent? Are your products marked correctly?

Canadian patent owners should review patent marking requirements in the US, in light of the recent Forest Group decision (Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009)).  This decision has reinterpreted the false marking provisions of U.S. patent law to expand the fines that can be imposed on patent owners and their licensees.  If an article is falsely marked with an incorrect patent number, the fine can be up to $500 for each falsely marked article. An article is falsely marked, for example, if the patent number is incorrect, or if there is a false suggestion that a patent is issued or pending, or a false claim that a particular issued patent covers the product.  

The U.S. law permits anyone to sue for the penalty and split any award with the federal government, so this has become another strategic tool in the marketplace.  Since the December 2009 decision, competitors have been scrutinizing (and suing) each other to determine if there is any basis for a false-marking suit.  

Canadian patent owners, licensees and manufacturers are advised to obtain advice to review their internal patent-marking policies, and to review the terms of patent license agreements to address patent-marking obligations.

Related Event: See our Events page (link to the right)

Calgary – 10:00 MST

Many companies in Canada and the US are waiting for clarity on the software and business-method patent debate.

• In the US, we’re watching the proposed Patent Reform Act of 2010,
• A ruling from the US Supreme Court is expected on the Bilski appeal ;
• In Canada, we’re waiting for the decision in the Federal Court appeal of the Patent Appeal Board’s rejection of Amazon’s 1-click patent, and 
• CIPO has announced that it will introduce MOPOP amendments relating to Computer implemented inventions.

Patent offices on both sides of the border are issuing rejections, but one (in)famous software patent has been re-examined and upheld.  The USPTO recently completed in lengthy review of Amazon’s controversial 1-click patent and confirmed the patentability of many of the original claims.  Amazon has avoided the defeat of a re-examination and rejection and has in fact emerged with a narrower but arguably more defensible set of claims.  This is good news for Amazon, but does little to settle the wider debate, since the 1-click patent has become a poster-child for patent reform, and this decision merely fuels the debate further. The patent is set to expire in September, 2017.  

Calgary – 07:00 MST

In the 1990s, researchers at the University of Saskatchewan developed a transgenic variety of flax known as CDC Triffid, which was genetically designed to be herbicide-resistant. The crop received regulatory approval in the mid-1990s, but was never adopted by Canadian farmers for commercial use, because of fears that its use would close export markets such as the European Union, which has a zero-tolerance for GMO foods.

Those fears have now materialized. The flax industry is scrambling to discover why CDC Triffid seeds appear to have propogated in Western Canadian flax fields, despite having been “decommissioned” fifteen years ago.  This story has all the makings of a science-fiction tale (indeed, the name of the crop comes from a sci-fi novel about carnivorous plants).  The intellectual property issues are also interesting, since the original research would have produced an invention subject to intellectual property rights – likely patentable in the same way that the transgenic crops developed by Monsanto and others have been patented (though there is no indication that CDC Triffid was ever the subject of a patent).

The most recent case where Monsanto enforced its patent rights over a farmer was in the 2009 case of Monsanto Canada Inc. v. Rivett, 2009 FC 317 (CanLII), where a farmer was hit with a damage award for his unauthorized use of Monsanto’s patented canola seeds.  In that case, the court reviewed the concept of the “innocent user” who finds a patented higher life form has “escaped” and started growing on his land. As noted in Infringement of Patent on Higher Life Form “Life forms have a way of getting up and moving around: seeds propagate and blow away, creatures crawl, viruses replicate and invade.”  The Triffid case is a perfect illustration.

Calgary – 07:00 MST

There a few recent updates from the Canadian Intellectual Property Office (CIPO):

1. Trade-marks: Is Canada finally going to join the Madrid Protocol? CIPO has just a opened a consultation on a Proposal to amend the Trade-marks Act. The proposed amendments focus on  “new business practices and improved international standards”. This may re-ignite the debate about whether Canada should ratify the Madrid Protocol. 
2. Patents: CIPO launched three new two-year Patent Prosecution Highway pilot projects with Japan, Denmark, and Korea, which supplements the ongoing project with USPTO.  The procedures of the Canada-US PPH pilot project will be harmonized with the newly-introduced programs.
3. Patents: There is a new Chapter 12 of the MOPOP on Subject-Matter & Utility and a revised Chapter 13 of the MOPOP on Examination of Applications.  Note that the subject of business-method and software patents (covered by Chapter 16, Computer-Implemented Inventions) is being revised by the Patent Office and proposed revisions are expected by Spring 2010.

Calgary – 11:00 MST

The court injunction preventing infringing sales of Microsoft Word (see: Microsoft Loses Patent Appeal) went into effect on Monday. While the company says it is complying with the court order, MS has submitted another appeal in the patent infringement case, asking a panel of 11 judges of the US Federal Circuit Court of Appeals to review the case and quash the original judgment.

Typically, appeals are heard by a three-member panel.  Microsoft already tried that and lost in December, 2009.  Any review of a decision of the US Federal Court of Appeals should properly be made to the US Supreme Court, but Microsoft’s latest tactic is referred to as an “en banc rehearing”, a type of review at the Federal Court of Appeals level which can be permitted for “precedent-setting questions of exceptional importance”.  The court will decide if this question qualifies for such a rehearing, and if not, then Microsoft will likely take the appeal up to the Supreme Court.

Calgary – 9:00 MST