snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

Impending Lapse of PIPA Creates Uncertainty

Posted in Privacy
Roland Hung

On November 15, 2013, the Supreme Court of Canada struck down the Alberta Personal Information Protection Act (“PIPA”) in Alberta (Information and Privacy Commissioner) v United Food and Commercial Workers, Local 401, 2013 SCC 62 (“United Food”), and despite a one-year stay to allow for necessary amendments, delay on the part of the Alberta government has caused PIPA’s lapse to become an inevitability.

The SCC found that sections of PIPA violated the right to freedom of expression enshrined in s. 2(b) of the Canadian Charter of Rights and Freedoms (the “Charter”). Further, the SCC found PIPA unconstitutionally overbroad in that it deemed “virtually all personal information to be protected regardless of context,” thus infringing the right to freedom of expression in a manner disproportionate to the government’s objective (United Food at para 25).

At the request of the Information and Privacy Commissioner and Alberta Attorney General, the Court agreed to strike down PIPA in its entirety rather than attempt to judicially craft an amendment in order to bring PIPA into compliance with the Charter. To ensure the Alberta Legislature had sufficient time to respond, the Court stayed their declaration of invalidity until November 15, 2014 – less than a month away.

In response to the decision, Alberta’s Information and Privacy Commissioner sent an open letter on December 20, 2013, to the Minister of Justice and Solicitor General and the Minister of Service Alberta, proposing amendments designed to bring PIPA into compliance with the United Food decision. The Commissioner emphasized the importance of private-sector privacy legislation for Albertans, and proposed only such changes as were necessary to bring PIPA into compliance, rather than begin a lengthy review process which could bring PIPA into jeopardy by failing to meet the November 15, 2014 deadline.

On September 22, 2014, the Commissioner sent a second open letter to the Minister of Justice and Solicitor General, the Minister of Service Alberta, and the Premier, setting out the Commissioner’s concerns over PIPA’s impending lapse. In doing so, the Commissioner emphasized again the unique benefits afforded to Alberta’s citizens and businesses in having strong private sector privacy legislation with provincial oversight.

However, the Alberta government has not tabled any amendments to PIPA, and the Alberta Legislature has now been prorogued, meaning the next session will not begin until November 17, 2014. PIPA’s lapse is unavoidable. There has been some discussion that Jim Prentice, the Premier of Alberta, will make attempts to seek an extension of the suspension of the declaration of invalidity. However, as of the date of the publication of this blog, there has not been any further movement on that front.

This said, it is important to realize that the lapse of PIPA does not create a total legislative void in privacy legislation.

The federal Personal Information Protection and Electronic Documents Act, SC 2000, c. 5 (“PIPEDA”) will apply in the event of PIPA’s lapse, as PIPEDA also purports to apply to private sector privacy rights where the province has not regulated in a “substantially similar” manner. Therefore, when PIPA lapses, there will be no “substantially similar” privacy legislation in place in Alberta, and PIPEDA will apply. PIPEDA is narrower in scope and will impact Albertans’ privacy rights differently. In her September 22, 2014 open letter, the Commissioner commented,

“[i]f PIPA is allowed to lapse, Alberta’s citizens and businesses will lose the unique benefits afforded by the legislation, including: mandatory breach reporting and notification to affected individuals, local enforcement without court involvement, and protection for the access and privacy rights of employees of provincially regulated private sector businesses.”

PIPEDA only applies in the narrower context of activities undertaken for commercial purposes, and does not give citizens the benefit of a separate administrative complaint process with provincial oversight. PIPEDA also lacks a business transaction exemption, an exemption for personal employee information, and lacks provisions restricting cross-border data transfers.  This means that certain protections afforded employees in Alberta will not be so readily available under PIPEDA.

Despite the differences between PIPA and PIPEDA, our advice to citizens and businesses in Alberta in the wake of PIPA’s lapse is to go about business as usual and ensure continued compliance with PIPA.[1] The best practice is to maintain existing policies and procedural safeguards protecting personal information in the care of your business; whatever lapse or delay may occur in re-enacting PIPA does not entail a legislative void for the protection of privacy in Alberta.


[1] A convenient guide for businesses attempting to ensure compliance with PIPA can be found on the Alberta Privacy Commissioner’s website: “A Guide for Businesses and Organizations on the Personal Information Protection Act,” Service Alberta, Brochures and Guides (November 2008), online: <http://servicealberta.ca/pipa/resources/brochures-and-guides.cfm#jm_guide for B&O>.

Canada and the EU Successfully Conclude CETA: What It Means to the Pharmaceutical Industry

Posted in Intellectual Property, Patents
Sanjaya MendisSteve Mason

On September 26, 2014, Prime Minister Harper announced that Canada and the European Union have successfully concluded negotiations on a new trade agreement, the Comprehensive Economic and Trade Agreement (CETA) that was five years in the making, and publicly released the consolidated text of the agreement.

CETA is deeper in substance and broader in scope than any other such agreement in Canadian history, significantly affecting all economic areas, including the pharmaceutical sector.

The CETA chapter on intellectual property is of particular interest to the pharmaceutical industry, because it will introduce into Canada for the first time:

  • additional (sui generis) patent protection for pharmaceutical products; and
  • effective rights of appeal for Patented Medicines (Notice of Compliance) (PM(NOC)) litigants

Article 9.2: Sui Generis Protection for Pharmaceuticals

The sui generis protection for pharmaceuticals provided for by CETA will allow patent holders to extend patent monopolies (currently 20 years in Canada) on eligible patents in respect of products that are subject to regulatory “delay” when achieving market entry. CETA limits this extra protection to a period of two to five years, calculated as follows:

Period = Authorization date to market product – Filing date of patent application – 5 years

Notably, CETA provides discretion to each member nation to provide further extension to incentivize or reward research in certain target populations, such as pediatrics.

It appears that Canada intends to cap the sui generis protection period at two years, allow Canadian-made generic medicines to be exported during the period of additional protection and provide extra protection only to pharmaceuticals that are approved after CETA takes effect in Canada (i.e., there will be no retroactivity).

Article 9 bis: Patent Linkage/Right of Appeal

Another key provision under CETA is the recognition that litigants under the PM(NOC) Regulations will be “afforded equivalent and effective rights of appeal.” The current regime handicaps innovators’ rights because once a generic is successful at the trial level, the Minister of Health immediately issues a notice of compliance to the generic manufacturer, thereby rendering any appeal moot. A newly established innovator right of appeal should ensure an innovator’s legal rights are fairly and completely adjudicated before generic entry into the marketplace is granted. In addition, there is some speculation that the government is contemplating a mechanism to limit or eliminate subsequent patent infringement actions brought by innovators that are unsuccessful in PM(NOC) applications.

Next Steps

In order for CETA to become enforceable in Canada, it must be ratified and implemented through the passing of specific implementing legislation to amend Canada’s existing laws (e.g. the Patent Act and the Food and Drug Regulations). This implementing legislation will specify the precise terms of sui generis protection and the mechanism for providing effective rights of appeal to PM(NOC) litigants.

Bitcoin accepted here? Funding M&A transactions by way of Bitcoin

Posted in E-Commerce, M&A/Finance
Ana Badour

There is no denying the increasing popularity and notoriety of the virtual currency Bitcoin.  Bitcoin market capitalization currently stands in the billions of dollars, with over 13 million Bitcoins having been mined and made available for circulation.  An increasing number of merchants, including Dell, have begun accepting payment by way of Bitcoin.  The list of goods and services that have been purchased with Bitcoin now includes university tuition, airline tickets, cars, and pizza delivery.  Some companies have started paying employees in Bitcoins.  Canada in particular has been a world leader in Bitcoin ATM’s: the first Bitcoin ATM in the world was installed in Vancouver and a number of Bitcoin ATMs have now been installed in other Canadian cities.  Canada also stands second, behind the US, in global rankings in the amount of venture capital invested in Bitcoin companies according to a recent study by the Montreal Economic Institute.  Will funding M&A transactions by way of Bitcoins in Canada be next? Continue Reading

Technological neutrality and copyright: Supreme Court grants leave to clarify scope in CBC v SODRAC

Posted in Copyright, Intellectual Property
Barry Sookman

The Supreme Court granted leave to appeal on September 4, 2014 in another copyright case, Canadian Broadcasting Corporation / Société Radio-Canada v. SODRAC 2003 Inc. The appeal is from the decision of the Federal Court of Appeal which ruled that broadcasters must pay royalties for ephemeral recordings in accordance with the 1990 decision of the Supreme Court in Bishop v. Stevens.

In the Court of Appeal, CBC argued that Bishop v Stevens was no longer good law, having been overruled by a series of decisions of the Court which had, in various circumstances, made references to the principle of technological neutrality in construing the Copyright Act. CBC particularly relied on the decision of the Supreme Court in ESA v SOCAN which it contended had fundamentally changed the well established law that broadcasters payment of royalties to communicate works to the public did not affect their obligations to also pay royalties in respect of reproductions made to effect the communications. Continue Reading

CASL’s inscrutable computer program provisions to be tackled by CRTC

Posted in Anti-Spam
Barry Sookman

With the computer program sections of Canada’s anti-spam/anti-malware law (CASL) coming into force in January 2015, the CRTC has now started reaching out to the public for questions they want guidance on in FAQs or bulletins. I attended such a session last week (on September 9, 2014) at an IT.CAN Public Affairs Forum Roundtable. The attendees were Dana-Lynn Wood (Senior Enforcement Officer, Electronic Commerce Enforcement, CRTC) Kelly-Anne Smith (Legal Counsel, Legal Sector CRTC), and Andre Leduc (Manager of the National Anti-spam Coordinating Body, Industry Canada). Continue Reading

Granting Trademark Protection to the Design and Layout of Retail Stores

Posted in Intellectual Property, Trade-marks
Cristel Chabot-Lapointe

On July 10, 2014 the Court of Justice of the European Union (the “CJEU”) issued its decision in Apple Inc. v. Deutsches Patent und Markenamt[1] and recognized the possibility to register a three-dimensional representation of the design and layout of a retail store as a Community Trade Mark.

In May 12, 2010, Apple Inc. (“Apple”) filed two applications for marks that are described mainly as the design and layout of a retail store.[2] The United States Patent and Trademark Office (the “USPTO”) granted registration on January 22, 2013. The trademarks are each represented by a three-dimensional representation of the front and inside of an Apple store. One of the representations is in black and white and the other is in colour and includes steel gray, light brown and black. Both trademarks were registered in association with services within Class 35 of the Nice Classification system which includes “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto.” Continue Reading

“Objectively Reasonable” and Privacy: Recent Developments

Posted in Privacy
Roland Hung

The ubiquitous and rapidly-evolving nature of technology has recently necessitated serious consideration of our “reasonable expectation of privacy.”  This concept is at the core of Canadian privacy law. In particular, the concept is a key part of the Charter test for s. 8, the right to be secure against unreasonable search and seizure. The Supreme Court of Canada (“SCC”) grappled with these questions in R v Cole[1] and R v Vu[2], and more recently, the British Columbia and Ontario Courts of Appeal applied these Charter principles to couriered packages and USB keys in R v Godbout[3] and R v Tuduce[4], respectively. Continue Reading

When Does an Employer own Copyright in a Photograph Made by an Employee?

Posted in Copyright, Intellectual Property
Keith Rose

An employee takes a photograph of a customer on the employer’s premises.  The employee has a signed employment agreement which states that all materials developed during the term of the contract are property of the employer.  The employer obtains a copy of the photograph and uses it in social media.  Later, the employee is terminated for cause.

The former employee sues for copyright infringement and, in the case of Mejia v. LaSalle College International Vancouver Inc., 2014 BCSC 1559, wins.  (The case also involved wrongful dismissal and defamation claims which were unsuccessful.) Continue Reading

SAGD Patents and Applications in Canada

Posted in Intellectual Property, Patents
Timothy EllamSteven TannerAllyson Hopkins

INTRODUCTION

In 1979, Dr. Robert Butler and his research team filed a Canadian patent application for the oil recovery technology known as Steam Assisted Gravity Drainage (“SAGD”).  Over thirty years later, SAGD technology has become a formative oil-recovery process, with over two hundred patent applications filed in Canada relating to SAGD technology.

SAGD operations have increased primarily due to its potential to enhance bitumen recovery.[1]  Patent applications have been filed in respect of many aspects of SAGD technology, including the orientation of the wells, the composition of the wells themselves, and the infrastructure that is required to process the bitumen recovered from the producing wells.

This article reviews the growth in patent applications relating to SAGD technology since its inception. Continue Reading

B.C. Supreme Court Breathes Life Into New Breed of Potential Pharma-Related Class Action Whereby Innovator Profits Are At Risk

Posted in Intellectual Property, Patents
David TaitSteven TannerBrandon Kain

In Canada, innovator drug companies can protect their market exclusivity from generic copycats by asserting patents against the generic manufacturer in litigation under the PM(NOC) Regulations. Until now, the consequences of losing PM(NOC) litigation was the potential payment of damages to the generic whose market access was delayed by the litigation. These so-called “section 8 damages” are limited to the actual loss suffered by the generic during that specific period of delay. Public policy is such that the profits earned by the innovator during that period cannot, however, be disgorged pursuant to section 8 of the PM(NOC) Regulations. Continue Reading