Insights on Canadian Technology and Intellectual Property Law

NPEs Beware: Contorted Construction of a Patent Will Attract Elevated Costs

Posted in Intellectual Property, Patents, Telecommunications
Andrew ReddonSteve MasonFiona LegereBart Nowak

On January 4, 2017, the Honourable Justice Locke of the Federal Court of Canada released his decision in Mediatube Corp. et al. v. Bell Canada, 2017 FC 6. This was a patent infringement action in respect of Canadian Patent No. 2,339,477 (the “‘477 Patent”) by the plaintiffs, NorthVu Inc. (patent owner) and MediaTube Corp. (licensee) against Bell Canada  (including former Bell Aliant Regional Communications, Limited Partnership, together “Bell”). The plaintiffs alleged that Bell infringed the ‘477 Patent through the delivery of its digital Internet Protocol Television (“IPTV”) services called Fibe TV and FibreOp TV. The Plaintiffs sought damages in excess of $350 million as well as a significant punitive damages award.

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Fintech Regulatory Developments: 2016 Year in Review

Posted in Fintech, Regulatory Compliance
Kirsten ThompsonAna BadourHeidi GordonLaure FouinJessica Firestone

This year was a tremendously active year for Fintech in Canada and internationally, and 2017 promises to be even more so.  In the Fall of 2016, we co-authored a comprehensive report together with the Digital Finance Institute, “FinTech in Canada: British Columbia Edition” on the state of the Canadian Fintech ecosystem, highlighting a number of the then-current industry and regulatory developments.  As we head into 2017, we provide a brief summary of some of last year’s Fintech regulatory developments in Canada and globally, and some developments to watch for in the upcoming year. Continue Reading

Update: CETA Ratification to Implement Changes to the Patent Act, PM(NOC) Regime and Trade-marks Act Moving Swiftly in Canada

Posted in Uncategorized
Sanjaya MendisRobert Glasgow

Canada’s sweeping trade deal with the European Union is expected to be implemented early next year. As reported previously, the government of Canada has tabled Bill C-30 to ratify CETA, which proposes significant changes to the Patent Act and the PM(NOC) regime, as well as  geographic indications under the Trade-marks Act.

Bill C-30 will receive Royal Assent, and become law in Canada, once it passes through both the House of Commons and the Senate.

On December 13, 2013, Bill C-30 passed a second reading in the House of Commons by a comfortable margin of 266 to 39. Bill C-30 was subsequently referred to the Standing Committee on International Trade.  The committee members are reviewing the bill clause by clause, and holding hearings with government officials, and experts to gather information.  The committee can then propose amendments or changes to the bill.

Once the committee has finished its review, the House of Commons will complete a third reading to debate and vote on the bill. Bill C-30 will then moves to the Senate chamber, where members of the Senate follow a similar process as the House of Commons.

At this current pace, it is expected that Bill C-30 will receive Royal Assent by the end of Q1 2017, signifying CETA’s formal ratification in Canada. Once Royal Assent is received, the proposed amendments to the Patent Act  and Trade-marks Act bringing Canada into compliance with its CETA obligations will be in place.  It is expected that draft amendments to the PM(NOC) Regulations will be released shortly thereafter.

Ontario Enacts Ban on the Expiry of Rewards Points

Posted in Fintech, Regulatory Compliance
Ana BadourJames ArcherClaire GowdyLara Nathans

On December 6, 2016, Bill 47 – Protecting Rewards Points Act (the “Act”), amending Ontario’s Consumer Protection Act, 2002 (the “CPA”), received Royal Assent.  The Act was first introduced on October 20 as a private member’s bill.

The primary effect – and stated purpose – of the Act is to prohibit the expiry of rewards points under consumer agreement due to the passage of time. Any provision to the contrary in any consumer agreement will be rendered void, with retroactive effect to October 1, 2016, such that all points purporting to expire after October 1, 2016, will need to be reinstated. However, subject to what may be provided in the regulations – yet to be issued – a rewards program may still be terminated and accumulated rewards may expire if the agreement so provides. Continue Reading

US Exploring Special Purpose National Bank Charters for Fintech Entities

Posted in Fintech
Ana BadourLaure Fouin

On December 2, 2016, the United States’ Office of the Comptroller of the Currency (OCC) announced that it would move forward with considering applications from Fintech companies to become special purpose national banks. The OCC also published a paper discussing the issues and conditions that it will consider in granting special purpose national bank charters (the “OCC Paper”). Continue Reading

Government of Ontario Announces Launch of Consultations to Cut Red Tape in Financial Services and Insurance Regulation

Posted in Fintech
Ana BadourAndrea Schneider

On December 1st, the Ontario Government announced it was launching consultations seeking public input to identify any “unclear, outdated, redundant or unnecessarily costly” financial services or insurance regulation in Ontario, with the aim to modernize and improve such regulation and achieve a regulatory regime that supports innovation and growth, while at the same time protecting the public interest. These consultations specifically include the following:

  • Provincial credit union legislation
  • Provincial mortgage brokering legislation
  • Provincial loan and trust corporations legislation
  • Provincial insurance legislation
  • the Financial Services Commission of Ontario (“FSCO”) Act.

The consultations come as Ontario is in the process of creating a new provincial financial services regulator, the Financial Services Regulatory Authority of Ontario (the “FSRA”), which will replace and consolidate existing provincial financial services regulators, including FSCO. For more detail about the FSRA, please see our earlier legal update “Review Panel Recommends Creation of New Ontario Financial Services Regulator”. The Ontario government recently confirmed in its intention to move forward with the creation of the FSRA in its fiscal update on November 14, 2016.

The consultation process is open until January 31, 2017 with a final report detailing the findings to be made available July 31, 2017.

The consultations do not extend to securities regulation (given the ongoing efforts to harmonize these regulations nationally through the proposed Cooperative Capital Markets Regulatory System) or banking regulation (falling under federal jurisdiction).

For more information about our firm’s Fintech expertise, please see our Fintech group’s page.

Chatbots, Open Data and Sandboxes: Trending Topics from the 2016 Money20/20 Conference

Posted in Fintech
Kirsten ThompsonAna BadourMatthew FlynnClaire Gowdy

With 10,000+ attendees, including more than three thousand companies from seventy-five countries, Money20/20 is the largest annual global event focusing on payments and financial services innovation. The 2016 conference in Las Vegas this October featured a packed agenda of talks by industry and thought leaders on a broad range of current and emerging Fintech issues, as well as an exhibition area featuring Fintech companies, investors, incubators, venture capitalists, consultants, regulators and lawyers. A team of McCarthy lawyers attended again this year and report back on some of the hottest topics of the 2016 conference: machine learning and artificial intelligence (AI), open data and regulatory sandboxes/innovation hubs. Continue Reading

Cheese, olives and other agricultural products to get geographical indication protection under CETA

Posted in Intellectual Property, Trade-marks
Daniel G.C. GloverTaha QureshiJulia Johnson

Canada’s latest trade deal is set to expand the protection of geographical indications to a wide array of agricultural products.

On October 30, 2016, Canada and the European Union signed the Comprehensive Economic and Trade Agreement (“CETA”). A day later, the Government of Canada tabled Bill C-30 (the “Bill”) for the purpose of implementing CETA into the country’s legislative landscape. One of the primary operative effects of CETA, as a trade agreement, is that it will eliminate 95% of all existing tariffs applied to goods traded between the two jurisdictions. Apart from the direct economic impact however, CETA also has important intellectual property implications for producers of covered goods.

Under Canada’s current legislation, protection of geographical indications extends to only wine and spirits. For example, covered products such as “Cognac” and “Champagne” can only be labelled as such if they originate from those geographic regions. Specifically, the Canadian Trade-marks Act (the “Act”) currently defines Geographical Indications (“GI”) as an indication (word or symbol) that identifies a wine or spirit as originating in the territory, region or locality of a member of the World Trade Organization, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin.

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CETA Implementation in Canada: Bill C-30 Brings Significant Changes to the Canadian Patent System

Posted in Intellectual Property, Litigation, Patents
Steve MasonDavid TaitSteven TannerFiona LegereChristopher Thompson

Changes are coming swiftly, as the federal government moves to implement the Comprehensive Economic and Trade Agreement (“CETA”) just days after it was signed by Prime Minister Trudeau in Brussels at the end of October 2016.

These changes will significantly impact biologic/pharma patents in two major ways. First, they will implement, for the first time, a Canadianized version of patent-term restoration. Second, they will revamp the current framework for linkage between patents and the approval of biosimilar/generic drugs in Canada by giving innovators the right of appeal, by changing the nature of the PM(NOC) proceedings to a more U.S.-style approach, and by providing for finality in such litigation.

Importantly, amendments to the PM(NOC) Regulations have yet to be published.  Bill C-30 proposes changes to the Patent Act that will provide legislative authority for the amendments to come.

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New Rules for US DMCA Agent Registration

Posted in Copyright
Keith Rose

One of the central features of the U.S. Digital Millennium Copyright Act (or DMCA)for online service providers is the combination of the Notice and Takedown regime and the corresponding Safe Harbour provision. Provided that online service providers properly carry out their obligations under these provisions, including by promptly removing infringing content when they receive compliant notices, they are shielded from liability for copyright violations by their users.

This system has critics among service providers, right holders, and users. But it has underpinned the explosion of user content-based services ranging from Facebook and YouTube to small community bulletin boards.

A critical element of this regime is the obligation for service providers to publicly designate a DMCA Agent, as the point of contact for notices from right holders. The US Copyright Office operates a public directory of DMCA Agents.

On November 1, 2016, the US Copyright Office announced changes to the rules governing the registration and maintenance of DMCA Agents.  The key features of the new rules, which take effect on December 1, 2016, are as follows. Continue Reading