snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Monthly Archives: September 2013

Personal Information and Privacy Issues in Business Transactions: Part 2

Posted in M&A/Finance, Privacy

In a previous blog entry we canvassed Canadian privacy legislation and offered businesses a cursory review on how to collect, use and disclose personal information legally in the context of a business transaction. Adding to that information, this entry will look at issues that arise during the due diligence phase of a business transaction and offer tips to assist organizations in complying with privacy obligations.

Due Diligence For Business Transactions

A comprehensive due diligence phase is often undertaken as one of the preliminary steps to help organizations evaluate business transactions. This evaluation looks to the potential value of the transaction … Continue Reading

Patent Litigation in Canada: A U.S. Attorney’s guide to the Canadian Litigation Process

Posted in Intellectual Property, Patents

Canada and the United States are close neighbors. About 300,000 people cross the border each day, and bilateral trade amounts to about $1.6 billion in goods daily.  It is not surprising that patent, and other intellectual property disputes, often involve some element of cross-border litigation.  The Canadian litigation experience is relatively similar to the American experience.  There are, however, some important differences that U.S. attorneys involved in such litigation should be aware of.

  1. Like in the United States, Canada has federal and provincial/state courts. Both can decide patent cases.
  2. Litigation process and procedure is dictated by the rules of civil
Continue Reading

Personal Information and Privacy Issues in Business Transactions: Part 1

Posted in M&A/Finance, Privacy

The free flow of information is essential to all business transactions and presents both opportunities and obligations for the organizations involved. Inadequate appreciation for the complexity of privacy legislation and the related implications can become not only an obstacle but a liability. This will be the first part in a series of articles that canvass the privacy issues that arise during business transactions. Part 1 will review the various legal regimes in Canada that regulate the collection, use and disclosure of personal information during business transactions.  Part 2 will look specifically at issues that arise during the due diligence phase … Continue Reading

Failure to properly wipe data from recycled server costs company $250K, an apology and 160,000 letters of notice

Posted in Privacy

In a tale of best intentions gone wrong, the Office of the Information and Privacy Commissioner of Alberta (“Commissioner”) recently found in Bow Valley College (Re), 2013 CanLII 52666 (AB OIPC) that an educational institution that recycled its servers without ensuring the data on them had been wiped had not met privacy requirements. The decision identifies some key considerations for corporations decommissioning and disposing of technology.


Bow Valley College (“BVC”) had 21 servers it was decommissioning. Mindful of environmental concerns, it contacted a third party, the Electronic Recycling Association of Alberta (“ERA”), … Continue Reading

Eli Lilly seeks arbitration with Canada over IP-related NAFTA Obligations

Posted in Intellectual Property, Patents

This is the latest chapter in the story involving Canada’s judge-made “promise of the patent” doctrine, which is sometimes referred to as the “promise doctrine” or “promise of the patent”. The promise doctrine essentially states that in order to constitute a useful (and therefore patentable) invention, an invention must not only be useful for some purpose, but it must also make good on any promise of utility found in the disclosure of the patent.

On September 12, 2013, Eli Lilly filed a $500 million claim against the Government of Canada over “invalidated patents”, alleging that Canada has “violated its obligations … Continue Reading

Ontario Court of Appeal upholds summary judgment dismissing Apotex’s claim for unjust enrichment and disgorgement of profits

Posted in Intellectual Property, Patents

On September 12, 2013, a panel of three judges of the Ontario Court of Appeal unanimously upheld the decision of the Ontario Superior Court earlier this year to grant partial summary judgment to Abbott and Takeda, denying Apotex’s claim for disgorgement of profits on the basis of unjust enrichment.

The case involved a claim for damages arising from Abbott’s invocation of the Patented Medicines (Notice of Compliance) Regulations, relating to its drug Prevacid®. The PM(NOC) proceedings were ultimately discontinued by Abbott following a settlement agreement between the parties, and Apotex thereafter brought an action in the Ontario Superior Court for … Continue Reading

Cautionary Note for Maufacturers of Communications Technology: Sender of a Text Message Can Be Liable for Distracting a Driver

Posted in Distracted Driver

The dangers of texting while driving are well known, with distracted drivers properly found criminally and civilly responsible for the injuries they cause.  In an interesting twist, the New Jersey Court of Appeal recently held that the person sending the text to a driver may also be held liable.


Teenager Kyle Best and his friend Shannon Colonna were in the habit of texting each other frequently. One afternoon, immediately after punching out of his part time job at 5:41 pm, Best texted Colonna. He then got into his pickup truck and at 5:49, records show he made a 911 … Continue Reading

Protecting an Employer’s LinkedIn Network: Whitmar Publications Ltd v Gamage & Ors

Posted in Social Media


The England and Wales High Court (Chancery Division) recently granted an interlocutory injunction restraining former employees from, among other things, using confidential information gained through the employer’s LinkedIn groups in their new competing business.[1] An employer can use groups on LinkedIn to manage and interact with its employee, customer and supplier networks. As the issue of misappropriation of employer managed LinkedIn networks and materials has not been addressed within Canada as of the date of this blog, this case from the United Kingdom is helpful in determining the application of Canadian law to this new issue and setting … Continue Reading