snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Monthly Archives: May 2013

PM(NOC) Proceedings: Cobalt Defeats Bayer’s Canadian Patent on Oral Contraceptive YASMIN

Posted in Patents

On May 29, 2013 Justice O’Reilly of the Federal Court dismissed Bayer PM Notice of Compliance (NOC) proceeding against Cobalt.  The issue before the Court was whether Cobalt’s proposed generic product would infringe a single claim (claim 13) in a Canadian Bayer patent to drospirenone, an active ingredient in Bayer’s YASMIN contraceptive. The Court determined that Cobalt’s non-infringement allegation was justified.  For the full written decision see: Bayer Inc. v. Cobalt Pharmaceuticals Company 2013 FC 573.… Continue Reading

Federal Privacy Commissioner proposes changes to PIPEDA to address challenges of Big Data

Posted in Privacy, Regulatory Compliance

On May 23, 2013, the Office of the Privacy Commissioner of Canada (the “Privacy Commissioner”) has released a position paper (“Position Paper“) calling for substantial changes to the Personal Information Protection and Electronic Documents Act(“PIPEDA”).

The Privacy Commissioner argues that PIPEDA is currently insufficient to meet the challenges posed by the advent of technology that allows organizations to collect, use, and disclose an unprecedented amount of data which include personal information (“Big Data”). Big Data poses challenges both with respect to the security of Canadians’ data, and the manner in which … Continue Reading

Tech Law Summit 2013 Recap – Six Minute Lawyer Sessions: Thinking Beyond

Posted in Consumer Protection, Copyright, E-Commerce, Intellectual Property, Regulatory Compliance

At McCarthy Tétrault’s Toronto Technology Law Summit, Bram Abramson, Daniel Glover, James Archer, Bob Nakano, Pat McCay, Naseem Malik, and David Tait, were featured in the Six Minute Lawyer panel. Each lawyer provided brief updates on a variety of topical and timely tech law issues, ranging from the regulation of commercial communications to tax issues.

Unsolicited Telecommunications Rules

Bram Abramson provided an overview of the CRTC Unsolicited Telecommunications Rules (“UTRs”), which are overseen by the Commission’s Compliance and Enforcement Section.  These rules cover unsolicited phone calls or faxes for the purpose of solicitation.  … Continue Reading

Pfizer Liable to Apotex for Section 8 Damages: Amount to be Determined

Posted in Intellectual Property, Patents, Regulatory Compliance

In a judgment pronounced on May 10, 2013, Justice O’Reilly of the Federal Court of Canada, granted Apotex’s claim against Pfizer for section 8 damages under Canada’s Patented Medicines (Notice of Compliance) Regulations, SOR/93-133.  The sole issue before the Court was whether Apotex had a valid claim to damages.  The amount is to be determined in a subsequent proceeding.  For the full written decision see: Apotex v. Pfizer Canada Inc., 2013 FC 493.

The section 8 claim arises out of a failed prohibition proceeding.  In early 2000, Apotex sought approval for its generic version of ZITHROMAX (azithromycin), … Continue Reading

How to “.Com”ply with Disclosure Rules for Digital Advertising

Part 2: Tips for Businesses Advertising Online in the U.S.

Posted in Consumer Protection, E-Commerce, Regulatory Compliance

In Part 1 of this blog series on digital advertising, we canvassed the disclosure rules in light of the recent the U.S. Federal Trade Commission’s recent publication, “.com Disclosures, How to Make Effective Disclosures in Digital Advertising”. In Part 2 of this blog series, we will set out some tips and guidelines to assist businesses in complying with the disclosure rules and avoid falling afoul the FTC.

Entities conducting business online in the U.S. ought to consider whether its advertising meets these guidelines:

  1. Prominent and Unavoidable: Disclosure should be at least as large as the related claim and
Continue Reading

Is your patent being infringed in Canada? Top 5 things to consider before launching the lawsuit

Posted in Intellectual Property, Patents



Whether this is your first time enforcing your Canadian patent, or you’re a frequent flyer in the Canadian courts, it is important to cover your bases before firing off a claim.  Prudent planning will help to ensure that legal and financial resources are deployed efficiently.  Although not exhaustive, here are the top 5 things to consider before issuing your statement of claim.

  1. In what jurisdiction should the lawsuit be pursued?  The plaintiff can choose between the Federal Court and the provincial courts.  Each has unique rules.  Consider where best to commence the action.  For example, summary judgment might
Continue Reading

How to “.Com”ply with Disclosure Rules for Digital Advertising

Part 1: Avoiding Deceptive Advertising in the Digital Age

Posted in Consumer Protection, E-Commerce, Regulatory Compliance

Does the medium matter? According to the U.S. Federal Trade Commission’s recent publication, “.com Disclosures, How to Make Effective Disclosures in Digital Advertising”, consumer protection laws apply equally to all forms of media and devices, including smartphones, tablets, Facebook, Twitter and the internet. The new FTC guidance, released on March 12, 2013, is an update to the FTC’s 2000 publication, “Dot Com Disclosures”.

As a general rule, the FTC requires that an advertiser provide additional information when an ad makes a claim, express or implied, that might be misleading without more information. To be effective, that … Continue Reading

Status Update: Social Media and the Service of Documents

Posted in Social Media

State Representative Jeff Leach of Texas recently proposed a bill that has generated significant discussion about the utility of social media in litigation proceedings. The yet untitled bill, HB No. 1989, proposes to allow substituted service in Texas through a social media website if a court finds that the social media account belongs to the defendant, is regularly accessed, and such service is likely to result in actual notice.

Texas is attempting to create with legislation a process that courts in Canada, Australia, New Zealand and the United Kingdom have developed through common law. Generally, courts in these jurisdictions … Continue Reading

McCarthy Tétrault Launches Ontario Employment Blog

Posted in Uncategorized

For those who may be interested, McCarthy Tétrault has just launched our sixth blog, the Ontario Employer Advisor. This blog offers the firm’s perspectives on the latest legal developments applicable to the workplace and of interest to our clients, particularly in Ontario. It provides our insights on legislative and regulatory developments, as well as new case law, with practical tips for employers and their human resources professionals when managing the workforce. We welcome you to visit the blog.… Continue Reading