snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: intellectual property

Canadian Patent Litigation: Five Things to Watch in 2018

Posted in Intellectual Property, Litigation, Patents

2017 was a significant year for Canadian patent law — one marked by the Supreme Court abolishing the so-called ‘Promise Doctrine’ of utility, as well as several other significant changes. Here’s a look at five things to watch for in patent litigation in the coming year.

1. Promise Doctrine Abolished

On June 30, 2017, the Supreme Court of Canada, released a landmark patent decision AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, abolishing Canada’s so-called ‘Promise Doctrine’ (our commentary here). Under the Promise Doctrine, patents could be invalidated if various heightened utilities construed from the patent were … Continue Reading

Canada’s Federal Court of Appeal Says Infringers Cannot Dictate the Remedy

Posted in Intellectual Property, Litigation, Patents

When a patent is infringed in Canada, a successful plaintiff can elect damages, or an accounting of the profits the defendant made by infringing. Unless there is an equitable reason to refuse an accounting of profits, the choice belongs to the plaintiff.[1]

In Apotex Inc. v. Bayer Inc., 2018 FCA 32, the Federal Court of Appeal ruled in no uncertain terms that the infringer does not get to dictate the remedy. The infringer, Apotex, raised a novel argument that it could impose an accounting of profits on Bayer. In the Court below, Justice Fothergill rejected Apotex’s argument, holding … Continue Reading

McCarthy Tétrault and IP Osgoode Co-host FinTech IP Symposium

Posted in Intellectual Property, Patents, Startups

On March 9, McCarthy Tétrault and IP Osgoode jointly hosted a symposium titled Effective IP Strategy to Drive Innovation in the Financial Services Sector.  This event brought together academics, business people, and lawyers for a discussion of how technological change is transforming the financial service sector and pushing incumbents and disruptors alike to think carefully about their IP strategies.

After introductory remarks from Barry Sookman and Giuseppina D’Agostino, the event set a brisk tempo and covered a lot of ground in two short hours.  The discussion was organized around three panels.

The first panel, moderated by Matt FlynnContinue Reading

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

Posted in Intellectual Property, Patents

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
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Granting Trademark Protection to the Design and Layout of Retail Stores

Posted in Intellectual Property, Trade-marks

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 … Continue Reading

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 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 … Continue Reading

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement

Posted in Intellectual Property, Trade-marks

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement  

On July 22, 2014, the B.C. Court of Appeal dismissed the claim of B.C.’s provincial auto insurer, the Insurance Corporation of British Columbia (ICBC), that a personal injury lawyer’s registration and use of domain names incorporating its official mark “ICBC” violated the Canadian Trade-Marks Act. 

In Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 the Court held that the domain names <icbcadvice.ca> and <icbcadvice.com> did not infringe ICBC’s rights as internet users will … Continue Reading

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, the heavyweights affected by the tariffs participated including Apple, Yahoo!, YouTube,  Netflix, Facebook, Cineplex, the members of the Canadian Association of Broadcasters (CAB), and the Canadian ISPS Rogers, Bell, and Shaw.

The decision of the Board is important. Its significance extends to both the … Continue Reading

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® (esomeprazole).

Justice Rennie found the invention of the ‘653 Patent was novel and non-obvious, but nevertheless invalidated the patent for promising an improved therapeutic profile which was not soundly predicted.

While Justice Rennie canvassed a number of legal issues, his … Continue Reading

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 injunction is part of an underlying action launched by Equustek Solutions Inc., a company that manufactures and sells complex industrial networking devices, (“Plaintiff”) against Datalinks and related companies (“Defendants”).

In the underlying action, the Plaintiff … Continue Reading

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 “‘691 Patent”) in 2026.

Allergan was represented by Andrew Reddon, Steven Mason, Steven Tanner and Sanjaya Mendis of McCarthy Tétrault LLP.

Background

Allergan originally marketed a 0.03% bimatoprost (“Bp”) containing formulation for treating glaucoma called LUMIGAN, … Continue Reading

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 with the Board’s findings and sent it back for reconsideration.

For the full written decision see: Cathay Pacific v. Air Miles International, 2014 FC 549.

This decision is important to the law of trademarks for the following reasons:

  1. Use of a mark includes
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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 do when you discover that your patent has been infringed?

Prosecuting Infringers

On April 23, we met with in-house counsel and other industry leaders at our new Calgary office to discuss the eleven steps that a patent holder in the oil and gas sector … Continue Reading

Enforcing an Intellectual Property Judgment in Canada

Posted in Intellectual Property

Whether we are talking about patents, trademarks, copyright or other forms of intellectual property, they need to be enforced and protected. One outcome of IP litigation can be a monetary award, for example, an award of damages. Organizations sometimes find themselves in a position where a final award in an IP case must be enforced against an individual or a company located in Canada. This happens, for example, where the Canadian defendant has no meaningful assets located in the foreign jurisdiction. It happens more often than one might think.

Essentially, a foreign judgment is viewed as a contractual obligation that … Continue Reading

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 of a lawsuit.  If a Canadian witness does not willingly provide evidence, commission evidence may be sought via the enforcement of what are called “letters of request”.  Essentially, these represent a foreign court’s request that a Canadian court order someone to appear and be examined … Continue Reading

Hot Off the Press – Doing Business in Canada 2012

Posted in Copyright, Intellectual Property, M&A/Finance, Patents, Privacy, Trade-marks

If your organization is currently thinking about establishing or acquiring a technology business in Canada, the 2012 edition of Doing Business in Canada, written by McCarthy Tétrault, will prove to be a valuable resource. The guide provides a broad overview of the legal considerations that non-residents should take into account to help ensure their success as they enter into a business venture in Canada. Each section offers timely information, up-to-date legislative provisions and insightful commentary on different areas of law. After downloading the guide, we encourage you to consult one of our lawyers for a more comprehensive analysis … Continue Reading

Tech Law Summit Recap – Key Developments in IP Law

Posted in Copyright, Intellectual Property, Patents, Trade-marks

The recent McCarthy Tétrault Technology Law Summit included a panel on “Key Developments in IP Law,” featuring James Skippen, Chairman and Chief Executive Officer, WiLAN Inc. and McCarthy Tétrault partners Beth MacDonald, David Gray and Barry Sookman. Paul Armitage, another McCarthy Tétrault partner, moderated the panel.

Patents

James Skippen commented on the growing awareness of the value of intellectual property, and patents, in particular. He observed that, instead of being a neglected asset class, patents are playing a more prominent role, and may even, in some circumstances, exceed the value of a company’s other assets. 

After describing WiLAN Inc.’s  history … Continue Reading

AQT Survey Reports on Market Conditions and Strength of Quebec ICT Sector

Posted in Intellectual Property, M&A/Finance

A recent survey of Quebec-based Information and Communication Technology (ICT) businesses revealed some encouraging results and identified some obstacles to growth and investment. SOM, on behalf of the Quebec Technology Association (AQT), surveyed over 650 Quebec ICT businesses with between 4 to 500 employees and analyzed the data collected from 495 of these businesses. The survey was sponsored by Canada Economic Development and McCarthy Tétrault.

Here is a summary of some of the key results from the survey.

  1. Most Quebec ICT businesses are currently growing. Of the businesses surveyed, 67% indicated that their revenues had increased during the last fiscal
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