snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

“Not Necessarily Regulation, but Regulation as Necessary”: Canadian Senate Committee Weighs in on Regulation of Digital Currency

Posted in Regulatory Compliance, Virtual Currency
Ana BadourClaire Gowdy

In March of 2014, the Minister of Finance tasked the Standing Senate Committee on Banking, Trade and Commerce to examine the use of digital currencies. The Committee pursued an extensive fact-finding mission in Canada and in the United States, speaking with, amongst others, representatives from regulatory bodies, financial institutions, digital currency interest groups, law enforcement, and universities. The long-anticipated, 64-page report was published this month with a clear message: while there are steps to take to address the risks digital currencies could pose in money laundering, terrorist financing, and tax evasion, the federal government should tread carefully in developing regulations for digital currency so as not to restrict or stifle its use and development. Continue Reading

BC Privacy Act Does Not Oust Facebook’s Forum Selection Clause: BC Court of Appeal

Posted in Privacy, Social Media
Keith Rose

How do operators of global services deal with the panoply of legal systems around the world? One common strategy relies on choice of law and forum selection clauses in Terms of Use agreements. These clauses purport to determine in advance what law will apply to disputes and where they will be heard. Canadian courts tend to enforce such agreements, on the basis that the parties are generally best-placed to decide for themselves how to govern their affairs. Such agreements promote certainty, which courts (and parties) usually finds comforting.

However, local laws sometimes modify or invalidate these kinds of agreements. For example, in 2011, the Supreme Court of Canada ruled that the B.C. Business Practices and Consumer Protection Act overrode an arbitration clause in a consumer contract.

A similar issue recently arose when a B.C. resident tried to initiate a class action lawsuit in B.C. against Facebook. Continue Reading

Bill C-65: Canada Moves to Implement the Marrakesh Treaty

Posted in Copyright, Intellectual Property
Keith Rose

On June 8, 2015, the Minister of Industry introduced Bill C-65, with the short title Support for Canadians with Print Disabilities Act. This Bill amends provisions of the Copyright Act dealing with exceptions intended to facilitate access to alternate format works by the visually impaired and other persons with so-called “print disabilities”. These changes are intended to implement (and enable Canada to accede to) the Marrakesh Treaty, as announced in the federal budget. (See pp. 21, 281, 286.)

The proposed amendments broaden the exception in section 32, including by removing the exclusion of large print books and by expressly addressing distribution of, or providing access to, the accessible works.

The Bill also proposes a number of changes to the provisions in section 32.01 dealing with export of accessible format works, including to permit direct exports to beneficiary persons in other countries, subject to some conditions, and to remove conditions on the nationality of the author.

Additionally, the proposed amendments include conforming changes in section 41.16, which would broaden the existing exemption permitting circumvention of technological protection measures for the benefit of persons with perceptual disabilities to expressly include doing so in order to permit the exercise of the exceptions set out in sections 32 and 32.01.

Hospital Privacy Breach Results in OSC Laying Charges

Posted in Privacy
Kirsten Thompson

The Ontario Securities Commission (“OSC”) has announced a series of criminal and quasi-criminal charges following an investigation related to the misuse of confidential patient information from the Rouge Valley Health System and the Scarborough Hospital. The OSC charges stem from allegations that a RESP sales representative purchased stolen maternity patient labels from a hospital nurse over a two-and-a-half-year period. The health information of approximately 14,000 new mothers was allegedly compromised.

This comes 6 months after a separate review by the Information and Privacy Commissioner of Ontario (“IPC”) which determined that Rouge Valley Health System failed to put in place “reasonable technical and administrative safeguards to protect patient information.” In an Order issued in December 2014, the IPC found the hospital was not in compliance with its obligations under the Personal Health Information Protection Act, 2004 (“PHIPA”) and ordered the hospital to implement changes to its electronic information systems, revise its privacy and audit policies, as well as deliver privacy training to all staff. Continue Reading

Federal Court of Appeal Clarifies Misunderstanding: Factual Basis and Line of Reasoning Need not be Disclosed in the Patent

Posted in Intellectual Property, Patents
Sanjaya MendisSteve MasonSteven TannerAndrew Reddon

Summary

In a decision released on June 3, 2015 (2015 FCA 137), a unanimous Federal Court of Appeal (“FCA”) dismissed Apotex’s appeal of Justice O’Reilly’s order prohibiting the Minister of Health from issuing a NOC to Apotex to market its generic version of LUMIGAN RC® until the expiry of Canadian Patent No. 2,585,691 (the “‘691 Patent”).

Significantly, on the issue of sound prediction the FCA held that the elements of sound prediction need not be disclosed in a patent if they would be self-evident to the skilled person. The Federal Court of Appeal has previously stated this principle in obiter in relation to the requirement that there be a “line of reasoning” linking the factual basis for the prediction and the prediction itself. However, the issue was squarely before the Court on this appeal and the Court’s ruling is a ratio of the case. Further, the Federal Court of Appeal held that any element of the test for sound prediction that would be self-evident to the skilled person need not be disclosed in the patent. Continue Reading

Google’s Patent Purchase Program: In the public interest or a monopoly on patent rights?

Posted in Intellectual Property, Patents
Fiona LegereMarissa Caldwell

On April 27th, 2015 Google announced the launch of its Patent Purchase Promotion. The “experiment,” as Google calls it, allows patent owners, or those otherwise authorized to sell a patent, to set a price for their patent and offer it for sale to Google. The Promotion is Google’s attempt to “remove friction from the patent market” and “help improve the patent landscape and make the patent system work better for everyone.” By offering to buy patents direct, Google is attempting to provide an alternative to the lure of selling one’s patent to a non-practicing entity, more commonly known as a patent troll. Continue Reading

Manitoba Court Interprets the Common Law Tort of Intrusion Upon Seclusion

Posted in Privacy
Roland Hung

Grant v. Winnipeg Regional Health Authority et al., 2015 MBCA 44 (“Grant”), is a successful appeal of the decision of the motion judge, which upheld the decision of the Master striking parts of an amended statement of claim as disclosing no reasonable cause of action. In doing so, the Manitoba Court of Appeal (the “Court”) held that the tort of intrusion upon seclusion, as set out in Jones v Tsige, may allow family members, who claim to have suffered as a result of a breach of a privacy interest of another member, to advance a claim in their own right. Continue Reading

Coming Soon: .bank and .insurance Domain Names

Posted in Intellectual Property
Ana BadourSophie Gupta

In 2008, the Internet Assigned Numbers Authority (“IANA”), the nonprofit organization overseeing global IP address allocation, began the process of creating and auctioning new top-level domains. Since then, the Internet Corporation for Assigned Names and Numbers (“ICANN”), has confirmed a number of new ‘generic’ top level domains (“gTLD”), including two new “community-based gTLDs” for the financial services community, <.bank> and <.insurance>. “Community-based gTLDs” are top level domain names that are restricted to a specific community. fTLD Registry Services, LLC (“fTLD”), an organization founded and operated by a consortium of banks and insurance companies and their trade associations, was granted the right to operate <.bank>, on September 25, 2014, and <.insurance> on February 19, 2015. Continue Reading

Restoring the Balance: Canada Reaffirms Intended Purpose of PM(NOC) Regulations

Posted in Patents
Martin BrandsmaSteven TannerDavid Tait

Industry Canada has sponsored proposed amendments to the Patented Medicines (Notice of Compliance) Regulations (the “PM(NOC) Regulations”) that broadens the eligibility to list patents on the Patent Register. These amendments are a direct response to the “perfect match” doctrine recently endorsed by Canadian courts. They reaffirm Health Canada’s long-standing practice regarding patent listing. In so doing, Industry Canada is seeking to restore the balance between innovators and their generic competitors as intended by the PM(NOC) Regulations. Continue Reading

PM(NOC) proceedings: Federal Court of Appeal affirms stringent product specificity requirements for listing patents in Canada

Posted in Patents
Bart NowakDavid Tait

The Federal Court of Appeal has affirmed the stringent product specificity requirements for listing a patent against a drug for purposes of the PM(NOC) Regulations in its recent decision in ViiV Healthcare ULC et al. v. Teva Canada Limited et al., 2015 FCA 93.

In this proceeding, Teva and Apotex brought motions under the PM(NOC) Regulations arguing that a patent listed against ViiV’s KIVEXA drug was not eligible for purposes of paragraph 4(2)(a) of the Regulations. KIVEXA is a combination drug that contains two medicinal ingredients. The patent at issue explicitly claims one of these ingredients. Continue Reading