Insights on Canadian Technology and Intellectual Property Law

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

Allegations Against Canadian Tenofovir Patent Found Unjustified (Again)

Posted in Intellectual Property, Patents
Martin BrandsmaDavid Tait

Gilead’s Canadian Patent 2,261,619 (the “619 Patent”)—the compound patent for tenofovir disoproxil fumarate (“TDF”)—is no stranger to Canadian courts. Adding to its litigious history, the Federal Court recently dismissed each of Apotex’s claims in an application under Canada’s NOC Regulations to find—for a second time—allegations relating to the 619 Patent’s validity unjustified. Continue Reading

CASL’s private right of action

Posted in Anti-Spam
Barry Sookman

Canada has the most onerous anti-spam/anti-malware law (CASL) in the world. In less than a year, July 1, 2017, it is going to become even worse. That’s when the private right of action (PRA) comes into force.

Since its inception, the anti-spam and anti-malware portions of the Act (ss.6-9) have been enforced by the CRTC. But when the PRA becomes law organizations big and small including charities, small businesses and even children marketing their first lemonade stands – and their officers, directors and agents – could become liable for millions of dollars in penalties.

Organizations throughout the country that send commercial electronic messages (CEMs) or that distribute computer programs – and that is nearly everyone in the country because of CASL’s over-breadth – are becoming increasingly worried about the PRA. Firms that specialize in giving advice related to CASL such as my firm, McCarthy Tétrault, are seeing a major uptick and renewal of CASL compliance work. Organizations are spending valuable time and resources – time and resources that could be spent investing in their businesses and innovating – to try and avoid the costly and frivolous class action suits expected to be brought once the PRA bell goes off. Continue Reading

Federal Court Rules on Health Canada Importation Ban

Posted in Litigation
Kaitlin SoyeDavid Tait

This case (Apotex v. Canada (Health), 2016 FC 673) involves a very unique set of circumstances. An underlying Health Canada decision was found to have been made for an improper purpose and carried out unfairly. This decision was apparently perpetuated in identical form in a subsequent decision without an evidentiary or lawful basis to do so and the subsequent decision was, therefore, found to be unlawful as well. Continue Reading

Canada implements expanded WTO agreement eliminating tariffs on certain high tech products

Posted in Regulatory Compliance
Linda El-Halabi

In December 2015, over 50 WTO members, including Canada, gathered at the Nairobi Ministerial Conference, and agreed to the expansion of the Information Technology Agreement (ITA), a WTO agreement that aims to eliminate tariffs on IT products. The ITA was originally concluded by 29 participants in 1996. It now has over 82 participants, representing around 97 per cent of world trade in IT products.

On July 1, 2016, the expanded ITA finally came into effect, eliminating tariffs on 201 tech and information-related products valued at over $1.3 trillion per year. An expansion of the agreement was necessary given recent technological innovations. The products affected by this expansion include certain parts of smartphones such as touchscreens, as well as MRI machines and video-game consoles. Continue Reading