Insights on Canadian Technology and Intellectual Property Law

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

7 Practical Lessons from CRTC’s First CASL Enforcement Decision

Posted in Anti-Spam
Keith RoseDaniel G.C. GloverCharles MorganKirsten Thompson

Although CASL has been in force since July 1, 2014, the Canadian Radio-Television and Telecommunications Commission (“CRTC”) has conducted its investigations and levied its penalties in a generally non-public manner. Until now, the CRTC’s Compliance and Enforcement branch had publicly commented on only one Notice of Violation (“NoV”) under CASL. We understand that an undisclosed number of other NoVs have been issued without public comment.

All other public CASL enforcement actions have taken the form of negotiated “undertakings” which are forms of settlements reached in confidential, closed door negotiations with the enforcement branch. This atmosphere of secrecy has made it difficult for organizations across Canada to understand the law and assess their risks.

This has now changed, at least to a degree. On October 26, the Commission issued its first written reasons in a decision under s. 25(1). Continue Reading

Canada’s Federal Court of Appeal Confirms Different Patent Claims Can Have Different Promised Utilities

Posted in Intellectual Property, Patents
Rebecca CraneDavid Tait

In Teva Canada v. Novartis Canada 2016 FCA 230, the Federal Court of Appeal confirms that in assessing the utility of a patented invention, different patent claims can have different promised utilities.

This decision was made in Teva’s appeal from the Federal Court’s judgment (2015 FC 770) in which the Minister of Health was prohibited from granting an NOC to Teva in respect of its generic version of Novartis’ EXJADE® (deferasirox).

The only issue on appeal was whether the lower court erred in law in its construction of the so-called “promise of the patent”. Continue Reading

2016 FATF Mutual Evaluation Report for Canada Released: Implications for Canadian Fintechs

Posted in Fintech
Ana BadourYaroslavna Nosikova

The Financial Action Task Force (FATF) released its Mutual Evaluation Report (the “Report”) for Canada on September 1, 2016, outlining its assessment of current anti-money laundering (“AML”) and counter-terrorist financing (“CTF”) measures in Canada. The FATF is an independent inter-governmental body that develops and promotes global AML/ CTF policies and sets global standards. This Report assesses Canada’s level of compliance with the FATF 40 Recommendations and the level of effectiveness of Canada’s AML/CFT regime.

The prior 2008 Mutual Evaluation Report issued by the FATF rated Canada as non-compliant in a number of areas. Since then, a number of amendments to the Proceeds of Crime (Money Laundering) and Terrorist Financing Act (“PCMLTFA”) and associated regulations have been introduced to address some of the issues identified in the 2008 evaluation, including with respect to politically exposed persons and persons dealing in virtual currencies. For details in respect of some of these amendments, refer to our prior legal update “Anti-Money Laundering Update: Final Amendments to Regulations to the Proceeds of Crime (Money Laundering) and Terrorist Financing Act Released”.

The Report states that Canada largely has a strong legal framework and competent authorities dealing with money laundering and terrorist financing risks. In addition, the 2015 Canadian self-assessment (Assessment of Inherent Risks of Money Laundering and Terrorist Financing in Canada) was also rated as being of good quality. However, the Report identified gaps in the Canadian AML/CTF regime in a number of sectors, including the legal industry, the real estate industry, online casinos, dealers in precious metals and stones, trust companies, life insurance companies, and, most notably for Fintechs, money services businesses (“MSBs”). In addition, the Report noted concerns with respect to the identification of beneficial ownership and transparency in Canada and transparency of legal persons and arrangements.

The Report specifically refers to a number of anticipated upcoming regulatory developments that will be relevant to Fintechs, including amendments in respect of MSB activities, prepaid cards and virtual currencies. Continue Reading

Canada’s Competition Commissioner Emphasizes Innovation, Highlights Fintech Market Study

Posted in Fintech
Dan DolinerAna BadourKirsten ThompsonDonald Houston

Canada’s Commissioner of Competition, John Pecman, spoke on October 6th, 2016 to the Canadian Bar Association’s Competition Law Fall Conference, addressing the link between competition and innovation and providing updates on the Fintech market study launched by the Competition Bureau earlier this year. Continue Reading

FinTech takes flight: Insights from the 2016 Canada FinTech Forum

Posted in Fintech
Jason PhelanCharles Morgan

McCarthy Tétrault was a sponsor of the recent 2016 Canada FinTech Forum held in Montreal on September 20-21, 2016.  Steve Forbes was the conference’s keynote speaker.  McCarthy’s introduced the excellent conference panel on blockchain in the financial services industry, with Haskell Garfinkel (PWC) as moderator and Jerry Norton (CGI UK), Todd McDonald (R3), Sujan Menezes (Microsoft) as co-panelists.  The number of attendees at the conference more than doubled over the 2015 conference, demonstrating the ever-growing level of interest in the nascent FinTech industry for both start-ups and incumbents. Below, we set out a high level summary of some of the insights we took away from the conference. Continue Reading

Federal Court Dismisses Motion for Particulars of the Patent’s Inventive Concept and Promise of Utility

Posted in Intellectual Property, Litigation, Patents
Kaitlin SoyeSanjaya MendisSteven Tanner

In a recent decision, the Federal Court dismissed a motion by Apotex seeking particulars from (or to strike paragraphs from) Allergan’s pleading relating to the prior art,  inventive concept, promised utility and sound prediction of utility of the patents at issue.

In this case, Allergan Inc. (“Allergan”) brought an infringement action against Apotex and AA Pharma in respect of two patents relating to Allergan’s drug ALPHAGAN P. Apotex filed a statement of defence and counterclaim, seeking to impeach Allergan’s patents.  In its defence  to counterclaim, Allergan denied Apotex’s invalidity allegations. Continue Reading

Claim For Section 8 Damages Struck But Novel Cause Of Action Survives In Ontario Suit Re: Viagra® Patent

Posted in Intellectual Property, Patents
Sanjaya MendisDavid Tait

In this decision (2016 ONSC 4966), the Ontario Court dismissed Apotex’s claim for damages under s. 8 of the NOC Regulations in the face of a motion to strike. Apotex’s other relatively esoteric claims were, however, left for another day. These claims include alleged false and misleading statements under s. 7 of the Canadian Trade-Marks Act, unjust enrichment, nuisance, and conspiracy. Pfizer failed to establish that these claims were doomed to fail. The high standard applicable on these motions was not met.

Apotex pursues Pfizer in the Ontario Court for alleged losses relating to Apotex’s delay in access to the generic VIAGRA® (sildenafil) market.

In November 2012, the Supreme Court of Canada found certain allegations of invalidity in respect of one of Pfizer’s sildenafil patents justified. The SCC used some troubling language in its decision. It has been suggested that Pfizer gamed the patent system by failing to properly disclose its invention to the public.

We blogged about that decision previously. Since its release, Apotex (and others) have been using the decision as a platform to bring varied suits against Pfizer over this drug and its patent strategy. Continue Reading