snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

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

Chung c. Brandy Melville Canada Ltd.: When Using Photographs Posted on Instagram Can Result in Copyright Infringement

Posted in Copyright
Anaïs GalpinEmily Hutchison

Photographer Edmond Chung’s fashion photos of Brandy Melville Canada Ltd. (“Brandy Melville”) employee Catherine Moisan were destined to be viewed on Instagram and Facebook. However, Brandy Melville’s unauthorized use of one of his photographs led Edmond Chung on a years-long effort to seek redress from the retailer for breach of his copyright. Edmond Chung finally succeeded in his efforts this April 2016 when the Court of Quebec’s Small Claims Division condemned Brandy Melville to pay Edmond Chung $5,000.00 for copyright infringement. [1] This decision is good news for creators seeking to share their work with a larger audience as it attests that copyright persists, even when a protected work is shared over social media. Continue Reading

New IP3 patent purchase program is industry’s latest attempt to combat trolls

Posted in Intellectual Property, Patents
Fiona LegereLinda El-Halabi

In May 2016, the Allied Security Trust, a non-profit industry group, announced the launch of the Industry Patent Purchase Program, otherwise known as IP3. This new initiative brings together technology industry leaders including Facebook, IBM, Microsoft, and Adobe, to establish a patent marketplace in an effort to create an opportunity for patent owners to both protect their intellectual property, and acquire valuable patents.

The IP3 follows the footsteps of previous initiatives by tech industry leaders, including an initiative spearheaded by Google last year, the Patent Purchase Promotion Program, that invited companies and start-ups to sell their patents to Google.

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The LinkedIn Lawyers: The Impact of Article 145 of the Code of Professional Conduct of Lawyers on Social Media Use

Posted in Social Media
Mason GordonAlex Derstenfeld

Unknowingly, many Quebec lawyers may be in breach of ethical obligations regarding Social Media use.

Quebec’s new Code of Professional Conduct of Lawyers (the “Code”) came into force on March 26, 2015 and replaced a previous iteration of the law. Parts of the Code were adapted to the needs of society in an increasingly technological age; however, Article 145, concerning lawyers’ advertising, remained untouched. Article 145 states that: “In his advertising, a lawyer may not use or allow to be used an endorsement or statement of gratitude concerning him.” Its strict application implies that any endorsement, including any posted online, may be in violation of the Code. Continue Reading

“Impairing the Core”: Supreme Court Rules that Municipalities Cannot Interfere with Federal Authority Over Cell-Tower Locations

Posted in Telecommunications
Vivian Ntiri

On June 16 the Supreme Court of Canada handed down its decision in Rogers Communications Inc. v. Châteauguay (City), 2016 SCC 23. After reviewing and applying the doctrine of interjurisdictional immunity, the Court reaffirmed the Federal government’s jurisdiction over radiocommunication and allowed Rogers’ appeal.

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Thinking of Buying or Selling a Fintech Target? Due Diligence Issues Unique to Fintech M&A

Posted in Fintech, M&A/Finance, Startups, Virtual Currency
Ana BadourGenevieve PintoJake IrwinHeidi Gordon

Although many of the same considerations related to the acquisition or sale of any technology company apply, regulatory and compliance considerations are key in the fintech space.

Fintech M&A activity, in both the Canadian market and globally, is expected to be on the rise over the next few years. In its 2016 Report, FinTech: Prepare for a Wave of M&A, UK-based investment bank FirstCapital, predicts that fintech M&A deal flow will increase “as financial incumbents look to catch up with widespread innovation from new entrants, the internet majors scale up in financial services and the technology/software majors add new technology to deepen their offerings in this sector”.

Like with the acquisition or sale of any technology company, strategic due diligence is a critical component of the fintech M&A process. However, in addition to the typical focus on issues related to intellectual property and information technology, due diligence in the fintech space requires careful consideration of several unique issues as described below.

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