snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Category Archives: Intellectual Property

Subscribe to Intellectual Property RSS Feed

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

Posted in Copyright, Intellectual Property

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… → Read More

SAGD Patents and Applications in Canada

Posted in Intellectual Property, Patents

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… → Read More

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

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… → Read More

YouTube, Facebook, Netflix liable to pay for music in Canada rules Copyright Board

Posted in Copyright, Intellectual Property

On Friday, the Copyright Board released a decision and certified two SOCAN tariffs, Tariffs 22.D.1 (Internet – Online Audiovisual Services) and 22.D.2 (Internet – User-Generated Content). The years covered by the tariffs are 2007-2013. The tariffs were certified based on agreements reached between SOCAN and objectors. Between the objectors and other entities which filed submissions,… → Read More

Canada Patent Litigation: Federal Court Rules “Enhanced Disclosure” Requirement for Sound Prediction Applies Only To “New Use” Patents

Posted in Intellectual Property, Patents

On July 2, 2014, Mr. Justice Rennie of the Federal Court released his judgment and reasons in Astrazeneca Canada Inc v. Apotex Inc., 2014 FC 638 dismissing AstraZeneca’s action for infringement and granting Apotex’s counterclaim for a declaration that Canadian Patent 2,139,653 (the “‘653 Patent”) is invalid. This patent relates to AstraZeneca’s successful drug NEXIUM®… → Read More

Interim Injunctive Relief Against Google as a Tool to Enforce Intellectual Property Rights Worldwide

Posted in Intellectual Property

Facts Following the decision last month in which Google Inc. (“Google”) was ordered by the European Union’s Court of Justice to “forget” certain personal information[1], the Supreme Court of British Columbia (the “Court”) issued an interim injunction on June 13, 2014 against Google to remove certain websites from its worldwide Internet search engines. This interim… → Read More

Federal Court Dismisses Notion that Patents Should be Given Only One Interpretation for All Purposes

Posted in Intellectual Property, Patents

Summary In a pair of simultaneously released decisions on June 13, 2014, Justice O’Reilly allowed Allergan’s applications (the “Applications”) prohibiting the Minister of Health from issuing NOCs to Cobalt (now “Actavis”) (2014 FC 566) and Apotex (2014 FC 567) to market their generic versions of LUMIGAN RC® until the expiry of Canadian Patent 2,585,691 (the… → Read More

PM(NOC) Proceedings: Apotex defeats Bayer’s Canadian patent on oral contraceptive YAZ

Posted in Intellectual Property, Patents

On June 4, 2014 Justice Roger Hughes of the Federal Court released his public reasons for dismissing Bayer’s prohibition application against Apotex in respect of its generic YAZ tablets on the basis that Apotex’s non-infringement allegation was justified. His confidential judgment was issued on May 7, 2014 and Apotex received its NOC the very next… → Read More

Canadian Trademarks: Cathay Pacific wins battle over “Asia Miles” versus “Air Miles”

Posted in Intellectual Property, Trade-marks

On June 11, 2014 Justice O’Reilly of the Federal Court released his decision relating to the registerability of the trademark “Asia Miles” in light of opposition from Air Miles International. The trade-marks opposition board had upheld Air Miles International’s opposition to the registration of “Asia Miles”.  Justice O’Reilly, on an application for judicial review, interfered… → Read More

Notice and notice regime under C-11 coming into force

Posted in Copyright, Privacy

The Government announced today that the notice and notice regime established under C-11 is coming into force. The delay in bringing these provisions into force was a consultations on possible regulations that the regime permitted. The Government announced that the provisions are coming into force without regulations. The regime permits copyright owners to send notices… → Read More

Your Patent Has Been Infringed: Enforcement of Oil and Gas Patents in Canada

Posted in Intellectual Property, Patents

Introduction Patent disputes are on the rise.  101 patent infringement actions were filed in in the Federal Court in 2013 as compared with 48 patent infringement cases in 2012.  As we explained previously, part of that increase is due to an increase in oil and gas patent litigation.  This raises the question; what do you… → Read More

Evolving Law of Trade Dress in a Digital World

Posted in Intellectual Property, Trade-marks

In an increasingly crowded market, businesses are investing heavily into unique customer experiences to boost brand identity and loyalty. As expected, there is a growing need to protect the design and other distinguishing elements incorporated into the products, packaging as well as off and online customer experiences. Collectively, these features are known as the trade-dress… → Read More

Patent Law Historical Observations: Oil and Gas

Posted in Intellectual Property, Patents

We recently posted an article reviewing the year past in oil and gas patent litigation.  We analyzed new Federal Court cases and issued decisions and provided commentary on future implications.  You can read that article here. This article continues that analysis by looking backwards in time; specifically to oil and gas patent litigation for the… → Read More

Hyperlinks Not a Copyright Infringement, According to the Court of Justice of the European Union

Posted in Copyright, Intellectual Property

Overview In Svensson v Retriever Sverige AB, the Court of Justice of the European Union (the “CJEU”) recently ruled that hyperlinks to freely available Internet content do not amount to a copyright infringement. The Svensson case involves a dispute between journalists and a media search service company.  Svensson, Sjögren, Sahlman and Gadd (the “Journalists”) wrote… → Read More

McCarthy Tétrault files brief in U.S. Supreme Court

Posted in Copyright, Intellectual Property

On March 3, McCarthy Tétrault partner Steven Mason filed an Amicus brief in the United States Supreme Court in the high profile Aereo case in support of the broadcasters and studio appellants who are challenging Aereo’s business model of re-transmitting TV broadcasts  over the Internet without paying retransmission royalties. The brief argues that the international, bi-lateral and… → Read More

McCarthy Tétrault receives four Benchmark Canada awards

Posted in Awards and Recognitions, Intellectual Property, Patents

McCarthy Tétrault is delighted to announce that Euromoney Legal Media Group’s Benchmark Canada named partners Andrew Reddon and Steven Mason as Canada’s Intellectual Property Litigators of the Year – Patents. The award is in recognition of Mr. Reddon and Mr. Mason’s exceptional knowledge of patents and superior trial skills. The pair’s recent successes include their… → Read More

A Massive House-Cleaning: Canadian Government Tables Five New IP Treaties

Posted in Intellectual Property, Patents, Trade-marks

On January 28, 2014, the Government of Canada signalled its intent to transform  its intellectual property regimes by tabling five intellectual property law treaties in Parliament. If implemented into domestic law, these treaties would harmonize Canada’s trade-mark, patent and industrial design legislation with its major trading partners. Following a 21-sitting-day waiting period, the Government will… → Read More

New Jersey District Court dismisses proposed antitrust class action over LAMICTAL patent settlement

Posted in Intellectual Property, Patents

On January 24, 2014, the District Court released its reconsideration opinion again dismissing a previously-dismissed proposed antitrust class action against GSK and Teva under the “rule of reason” test set down in the 2012 U.S. Supreme Court’s Actavis decision. In doing so, the Court made some important statements about Actavis: It does not allow scrutiny… → Read More

The Treacherous Gap Between Goods and Services in Trade-marks Law

Posted in Intellectual Property, Trade-marks

Although it may seem arbitrary to a layperson, the gap in legal treatment between trade-marks for goods and trade-marks for services is treacherous for trade-mark owners. This gap can result in the loss of valuable rights, or the inability to enforce important trade-mark registrations. The recent NetJets case discussed below highlights how even a valuable… → Read More

Do you need to examine inventors located in Canada as a part of your patent lawsuit?

Posted in Intellectual Property, Patents

Almost invariably, defendants in a patent lawsuit seek to examine the inventors of the patent or patents in issue.  But, what do you do if an inventor resides in Canada?  Generally, non-Canadian courts are not able to assert personal jurisdiction over Canadians and, therefore, cannot compel them to give evidence under oath for the purposes… → Read More