By Richard Stobbe

A recent survey of the top patent producing corporations in Canada (see this link, courtesy of our colleagues at IPPractice.ca) shows a few interesting trends:

• Despite its fall from grace over the past 4 or 5 years, BlackBerry remains among the top innovators in the country.
• The top five patentees in Canada all make a significant investment in departments that focus on purely on research and development (R&D):
• BlackBerry (419 patents),
• Qualcomm (329 patents),
• Schlumberger (183 patents),
• Procter & Gamble (164 patents),
• LG Electronics (147 patents)
• Innovators in the oil-and-gas/energy sector are not leading the pack, but are well-represented in the top tier: Schlumberger (183 patents), Baker Hughes (121 patents) and Halliburton Energy Services (105 patents), all of whom provide services to companies in the extraction / production sector.
• Innovation in mature consumer sectors – led by BlackBerry, Qualcomm, Procter & Gamble, LG Electronics, General Electric, Microsoft and Honda – is typically incremental in nature. This is a sector where protection for incremental improvements (as opposed to quantum leaps forward) can play an important role in maintaining a competitive edge.

Review your patent strategy with the Field Law Intellectual Property and Technology Group.

Calgary – 07:00 MT

By Richard Stobbe

A recent EU decision by the Court of Justice of the European Union (CJEU) has generated a lot of press since it involves a high profile company – Google – and a tantalizing concept of a “right to be forgotten”. The story stems from the efforts by a Spanish man to compel Google to remove search results that referred to the man’s prior financial history – in fact the references were to bankruptcy-related notices published by a Spanish newspaper years earlier. The online newspaper publication remains in place, but the CJEU’s decision touches on the indexing and display of the results in a Google search, which refer back to that online newspaper publication.

So what does this mean for Canada?

There has, as far as I am aware, no equivalent privacy-related decision relating to removal of search results by search engines in Canada. However, there are analogous rights in Canada for individuals to compel an organization to correct or delete personal information. And that would apply to the organization that has “collected, used or disclosed” the personal information.

In Canada, PIPEDA does contemplate the correction of personal information, the withdrawal of consent, and the deletion of personal information that has been collected. Those provisions still require the individual to make a request or a complaint in order to get a remedy.

In that sense the EU organization (in the EU context) in Google’s position then has to decide on the merits of that request or complaint, so the “right” may be subject to the interpretation of these subjective questions by a Google employee, considering all the different criteria that the EU decision has listed.

In Canada (in the PIPEDA context), the organization does not have to make the same kinds of assessments or value judgements – the question is simply whether the individual is withdrawing consent, or correcting information.

In the EU, the organization has to decide if “in all the circumstances” the info appears to be “inadequate, irrelevant or no longer relevant, or excessive” which requires the exercise of a lot more judgement. And more scope for disagreement.

How this is handled by Google, and how it may influence Canadian decisions on requests for removal of personal information, remains to be seen.

Calgary – 07:00 MST

By Richard Stobbe

Industrial design law in Canada protects the visual features of shape, configuration, pattern or ornamentation which are applied to a product. Functional elements are not protected.

Think of the unique shape of a bottle. The functional elements – such as a handle, a cap or lid – those elements could not be protected by industrial design, but design elements like a curved neck, or say a ridged pattern or other ornamental features could be protected.

If the article or product has been “published” (i.e., it’s been made public or offered for sale or use) then it won’t be eligible for protection. However, if the product or article has been “published”, there is a 12 month grace period in which to obtain registration. So timing is important and protection can be lost if the product launch is not coordinated with IP rights protection.

For protection under the Industrial Designs Act, registration is required, and lasts for 10 years from the date of registration. Note that at the five year point, a maintenance fee is required. After the expiry of the 10-year term, the design is available for anyone in Canada to make, import, rent or sell.

Some points to consider for the use of industrial design law as a tool for strategic IP protection:

• industrial designs (also known as a design patent in the US) can be a perfect fit for companies selling manufactured consumer goods and packaged goods, but can also be a competitive tool for service companies who are trying to protect a product or device that is used or sold as part of a service offering
• industrial design can help fill in the gaps between utility patents, trademarks and copyright
• when considering protection, focus on features that would distinguish your product from competitors, and features that competitors or knock-off infringers would want to copy in order to mimic your products
• the scope and period of protection is much narrower than the scope of a utility patent, but it can be a very useful tool, and much more cost-effective means of obtaining protection in the right circumstances.

Talk to experienced IP counsel for advice on exploring the possible advantages of industrial design law for your organization.

Calgary – 07:00 MDT

By Richard Stobbe

Yesterday draft “anti-patent-troll” legislation was put forward in Washington. This is part of a ground swell of opposition to illegitimate patent demand letters from so-called patent assertion entities (PAEs), or “patent trolls”. This draft legislation, according to the sponsor of the proposed bill, “increases transparency and accountability to help expose and prevent fraudulent infringement claims. It would require patent demand letters to include certain basic information to help companies determine whether a letter is legitimate.”

See more at: this link

This proposed law approaches the issue from a consumer protection angle, using Federal Trade Commission (FTC) authority and state Attorney General authority for enforcement.

Another anti-patent-troll bill passed by the US House in 2013 is now stalled in the Senate. Congress may be stalled but the fact that patents are within federal jurisdiction has not prevented state legislatures from passing consumer-protection laws which target PAEs. I attended a lunch yesterday at which the Attorney General of Vermont spoke about his state’s efforts to deploy state-level consumer protection laws against PAEs. A case involving a well-known PAE by the name of MPHJ Technology is currently before the Vermont courts. The debates and the legislative responses are far from over.

Do we need anti-patent troll laws in Canada?

Calgary – 07:00 MDT

 
By Richard Stobbe

The basic question “are APIs eligible for copyright protection?” has consumed much analysis (and legal fees) during the lawsuit between Oracle and Google, which started in 2010. (For more reading on our long-running coverage of the long-running Oracle vs. Google patent and copyright litigation, see below.)

The basic premise of Oracle’s complaint against Google is that the wildly popular Android operating system copied 37 Java API packages verbatim, and inserted the code from those APIs into the Android software. This copying was done without a license from Oracle. Therefore, says Oracle, copyright infringement has occurred. In a 2012 decision, the district court decided that the Java APIs were not subject to copyright protection. Therefore, said the lower court, there was no infringement. The US Federal Court of Appeals has reversed that finding.

In a 69-page decision released on May 9, 2014, the appeal court has decided that these Java APIs are subject to copyright protection, and concluded as follows: “Because we conclude that the declaring code and the structure , sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court’s copyrightability determination with instructions to reinstate the jury’s infringement finding as to the 37 Java packages . Because the jury deadlocked on fair use, we remand for further consideration of Google’s fair use defense in light of this decision.”In short, Google has infringed Oracle’s copyright, and the question to be determined now is whether Google has a “fair use” defense to that infringement.

The EFF has called the decision dangerous since it exposes software developers to copyright infringement lawsuits. However, for software vendors, it may help strengthen the controls they place on developers to maintain standards and cross-compatibility through licensing. After all, that was (in theory) one of the complaints raised by Oracle – that its “write once, run anywhere” Java principle was violated when Google mis-used the Java APIs to essentially bring Android out of compatibility with the Java platform.
Related Reading:

• API Copyright Update: Oracle & Google …and Harry Potter
• Update on Oracle vs. Google
• Copyright: Apps and APIs
• Copyright Protection for APIs
• SDKs and APIs: Do they have copyright protection?

Calgary – 07:00 MDT

By Richard Stobbe

A recent WIPO Survey assessed the use of alternative dispute resolution (ADR) clauses in various technology transactions, and the results make for interesting reading for anyone who is in the business of negotiating technology deals. The goal of the survey was to establish trends in the use of ADR to handle technology-related disputes, and almost 400 participants from 62 different countries participated. A few takeaways:

• Overall, the use of ADR clauses appears to be on the increase, as compared to the use of litigation in court.
• Almost all of the respondents (94%) indicated that dispute resolution clauses are the subject of contract negotiations. In other words, negotiators are paying attention to these clauses, and not merely defaulting to the clause that is proposed by the other side, or comes with the precedent agreement.
• Respondents were asked to estimate the percentage of their technology-related agreements that led to disputes. The results were:
• License Agreements (25% of Respondents)
• R&D Agreements (18% )
• NDAs (Non-Disclosure Agreements) (16%)
• Settlement Agreements (15%)
• Assignments (13%), and
• M&A Agreements (13%).
• The most common dispute resolution clauses according to respondents were:
• Court litigation (32%)
• Arbitration (30%)
• Mediation (12%)
• Multi-tier clauses (17% of all clauses) in which mediation is deployed prior to court litigation, arbitration or expert determination.
• Regarding time and cost, the estimates of respondents were as follows, and remember there are averages, and most would involve patent international disputes:
• Court litigation (home jurisdiction) took approximately 3 years; and amounted on average to US$475,000
• Court litigation (foreign jurisdiction) took on average 3.5 years; and amounted to US$850,000.
• Arbitration was shorter, at 1 year; the cost added to US$400,000.
• Mediation was shortest, at 8 months, and 91% of Respondents indicated that mediation costs were under US$100,000.

Interestingly, 25% of respondents indicated that “management time of business executives and wasted time of other participants in proceedings, lost productivity and lost business opportunities” represented important factors when assessing the costs of dispute resolution.

See: FULL PDF REPORT: Results of the WIPO Arbitration and Mediation Center International Survey on Dispute Resolution in Technology Transactions

Calgary – 07:00