2013 IP Year in Review: To Go Where No One Has Gone Before

Giuseppina D’Agostino is the Founder and Director of IP Osgoode, the Founder and Director of the IP Intensive Program, the Founder and Director of the IP Osgoode Innovation Clinic, and an Associate Professor at Osgoode Hall Law School.

2013 ushered in renewed changes to the intellectual property law terrain in Canada and around the world.  New treaties were formed, legislation was proposed, and cases were decided that will surely have an impact on how scholars view the field and how the law is practised.

Patents

2013 was a busy year for patent law on both the domestic and international fronts.

Following the landmark Teva v Pfizer “Viagra” decision in 2012, Canadian courts continued to develop and clarify the patent law doctrine of sufficient disclosure.  2013 also saw a number of contentious issues brought before the courts. In particular, these issues included the treatment of selection patents, what constitutes sufficient disclosure, and a clarification of the “promise of the patent” utility analysis.  Some of these matters were explored in two important cases from the Federal Court and the Federal Court of Appeal (Teva Canada Limited v Novartis AG and Sanofi-aventis v Apotex Inc, respectively), where the courts clarified the “promise of the patent” doctrine (for an in-depth analysis of those two cases see here and here).  In addition, the Federal Court of Appeal explored the controversial doctrine of sound prediction in Bell Helicopter Textron Canada Ltée v Eurocopter, a rare non-pharmaceutical appellate level patent case. The judgement loosened the requirements for sufficient disclosure in sound prediction and rejected the premise that the doctrine only applied to certain areas of technology.

2013 also saw the largest ever patent infringement damage award in Canadian history.  In Merck & Co., Inc. v. Apotex Inc., the court awarded Merck over $119 million in damages, plus interest, for Apotex’s infringement of Merck’s patent for the anti-cholesterol drug lovastatin. This case is perhaps a signal that patent litigation will continue to be a very important area of focus in the Canadian legal and business sectors.

In the US, the prominent legal battles involving patents owned by Apple continued to rage on, with the United States Court of Appeals for the Federal Circuit altering a decision rendered by the International Trade Commission in relation to key features of the modern smartphone (i.e. multi-touch functionality and a method of determining if a touch is a “finger touch”).

In the controversial debate around the patent eligibility of isolated gene sequences, the US Supreme Court issued a judgement in the long running Myriad Genetics case that reversed the lower court’s decision and ruled against the patentability of isolated DNA sequences in their natural form. This decision contrasts with other countries’ approach (such as Australia) and sets a precedent that will undoubtedly have future ramifications in Canada.

Canadian patent laws were also the focus of international attention in 2013 due to their influence on transnational trade. In May, a report from the Office of the United States Trade Representative (USTR) expressed serious concerns about Canadian patent laws. This was followed by a $500 million NAFTA complaint launched by the pharmaceutical company Eli Lilly, which alleged that Canada breached NAFTA by allowing its courts to invalidate two of its patents. These incidents led to the much anticipated announcement of the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union in October. Although the full text of the agreement has not yet been completed and ratified, there are two main effects that the agreement is expected to have on Canadian patent law: (1) the addition of up to two years of patent restoration for innovative pharmaceuticals, and; (2) the granting of a “right of appeal” for innovative pharmaceutical companies under the Patented Medicines (Notice of Compliance) Regulations, which is a right that is currently only available for patent challenges from a generic pharmaceutical company. This agreement contains some long sought changes to Canadian patent law, and although the ultimate impact of CETA on intellectual property laws in Canada remain to be seen, the impact will undoubtedly be a significant one.

Last, but certainly not least, in a rare landmark patent decision from the developing world, the Indian Supreme Court invalidated a pharmaceutical patent owned by Novartis that had been widely upheld internationally. This decision raised uncertainty over the status of intellectual property protection in India and other developing countries, representing a concern for the future of the pharmaceutical industry in these types of economies.

Trade-marks

The past year showcased the importance of the Internet, social media, and global branding in the field of trade-marks. Long viewed as an area of intellectual property limited by its territorial focus, developments in trade-mark law both in Canada and abroad emphasized the importance of global integration for trade-mark value and protection.

Canada continued to revise its Trade-Marks Act, with a new draft of the legislation (formerly Bill C-56, see IPilogue coverage here) fast-tracked after Parliament reconvened in late 2013. The new draft (now Bill C-8) contained provisions meant to bring Canada in line with multilateral anti-counterfeit agreements, and standardized some Canadian trade-mark terminology in an attempt to harmonize the Canadian lingo with terms in use abroad (owners of marks will soon trade in “goods” instead of “wares”, although the distinctive Canadian hyphen in “trade-mark” will remain).

Canada is likely to further integrate its trade with Europe through the Comprehensive Economic and Trade Agreement (CETA), which will require modifications to protections for Geographical Indications (GIs). The increased protection this will afford to GIs may allow for protections for marks which are confusing with marks currently registered in Canada, leading to potential losses for Canadian owners.

In Europe, the European Union stopped short of adopting plain packaging legislation similar to the anti-tobacco regime in Australia, claiming the regulation of packaging fell outside the scope of the Tobacco Products Directive (TPD). However, health concerns continued to drive revisions to packaging, meaning that the plain packaging debate is likely far from over.

In the broader world of marketing and brand management, many Canadian brands went through important changes, with Research In Motion changing its name to the more recognizable brand of Blackberry, in order to “consolidate to a single brand identity.” The Internet and social media sites like Twitter continued to influence public perception of brands, though some firms were more effective than others at making use of new media.

Copyright

November of 2013 marked the one-year anniversary of the amendments to the Copyright Act. The passing of the Copyright Modernization Act created significant debate among the many copyright stakeholders, including academics, lawyers, and students who, in addition to beginning in-depth analysis of the new legislation, continued to marvel over the significance of the copyright pentalogy.

2013 was also a year when American copyright law aligned with Canadian copyright law in a US case where, Leonard, an American Photographer, was successful in his copyright claim against Stemtech.  The US District Court found that the licence agreement for use of Leonard’s photographs was limited to printed publications, and did not implicitly grant Stemtech the right to use the works on their website. This decision was consistent with the earlier Supreme Court of Canada’s decision in Robertson v Thomson Corp.

Perhaps the most troubling case for visual artists in 2013 was the “resolution” of the “5pointz” graffiti issue, which questioned whether a property owner’s interests could prevent an artist from invoking their moral rights. In the case of 5pointz, that meant white washing the walls of a building complex that featured over 20 years of accumulated graffiti in advance of a planned demolition of the building to make way for multi-million dollar residential development. This case illustrated the limited role of moral rights in the US. By refusing to grant an injunction against the demolition of the 5pointz complex, the court gave a firm signal of their unwillingness to accept the argument that the destruction constituted damage to an artist’s reputation.

Ongoing issues concerned the copyright challenges presented by the evolving digital sphere. Here the presentation at Osgoode by Douglas Pepper, the President of Random House Publishing, highlighted some concerns for the future of the printed book in the digital world of copyright.

Moreover, Google’s recent success in defending claims of copyright infringement with respect to its Google Library Project will illuminate the future of the printed page and its transition into the digital world. In the District Court for the Southern District of New York, Google adopted a fair-use defence, and obtained a favourable decision which found that the scanning and making available of snippets of over 20 million books to users without the authors’ authorization was not copyright infringement.

Even without precedential value in the Canadian court system, this case may provide groups with stronger arguments for future fair dealing claims associated with education and/or research attempting to align these with CCH Canadian v LSUC. Also, Google’s actions are sure to affect Canadian authors in some way since some of the scanned works are likely to have Canadian authors attached to them.

IP Osgoode in 2013

While the IP landscape bubbled with activity, so did IP Osgoode.  2013 marked IP Osgoode’s fifth anniversary. During this milestone year, with the help of IP Osgoode staff and an army of eager students, the IPilogue, the Innovation Clinic, and the IP Intensive Program at Osgoode Hall Law School continued with great success due in part to a number of exciting new collaborations. The IP Intensive program offered three new placements, The Canadian Broadcasting Corporation, Apotex Inc., and Cobalt Pharmaceuticals Company. We look forward to the fall of 2014, where we hope to forge new partnerships and add to the diverse array of placement organizations for the IP Intensive program. Now in its third year of operation, IP Osgoode’s Innovation Clinic in enjoying great success as it continues to expand its pro bono services and clientele base. Through IP Osgoode’s recent partnership with York University’s Innovation York, we hope to further extend our networks within York University and the Greater Toronto Area.

As part of our IP Osgoode Speaker Series, we were pleased to feature the Honourable Justice Marshall Rothstein of the Supreme Court of Canada to discuss the role of advocacy in intellectual property litigation and Douglas Pepper, the President of Random House Publishing, to discuss the book publishing industry. IP Osgoode also co-sponsored a visit from Professor Victor Nabhan as a Genest Global Faculty and invited Professor Nabhan to teach a seminar course entitled “International and Comparative Copyright Law” for the fall term.  IP Osgoode also spearheaded the creation of a new seminar course called “Commercializing IP” and welcomed Ed Fan and Loreto Grimaldi as course instructors for the winter 2014 term. In keeping with IP Osgoode’s mission to increase cross-disciplinary collaborations with faculties and organizations across York University, Canada, and around the world, this new seminar course is open to students from both Osgoode and the Lassonde School of Engineering at York University.

IP Osgoode hosted two ground-breaking events in 2013.   The first conference, entitled “Sparking Innovation with Students: Examining the Student Role from Invention to Commercialization”, was co-hosted with the Canadian Intellectual Property Office (CIPO). This full day conference focused on the various roles of student researchers in commercializing intellectual property and the policies adopted by various organizations and institutions with respect to intellectual property ownership and knowledge mobilization.  Ontario Assistant Deputy Minister Bill Mantel and Sylvain Laporte, CIPO’s CEO, provided the keynote speeches.

IP Osgoode’s second notable event in 2013 was a full-day symposium entitled “User-Generated Content (UGC) under Canadian Copyright Law Symposium”, which featured a number of esteemed speakers and explored the Copyright Modernization Act’s novel UGC provision.

As 2014 unfolds, IP Osgoode aims to continue to drive a leadership role in the intellectual property law debates. We hope to hear from you and that will join us in this journey.

Top 10 most read IPilogue articles of 2013

1. User-Generated Content Under Canadian Copyright Law
2. Mario Bouchard: Copyright Quintet opus 1. no.1, by McLachlin et al
3. Graham Henderson’s 5 Easy Steps to Fixing Canada’s Music Industry
4. The Rise and Fall [and Rise Again?] of BlackBerry
5. Reflecting On A Day Of Discussions Surrounding The Important Student Role From Invention To Commercialization
6. Court Grants Largest Patent Infringement Damages Award in Canadian History
7. Sitting This One Out: SCC Refuses to Clarify “Promise of a Patent” Doctrine
8. Acknowledging Copyright’s Illegitimate Offspring: User-Generated Content and Canadian Copyright Law
9. Bill C-56 Remedies: Rights Holders Can All Feel a Little Safer
10. Access Copyright Initiates Lawsuit Against York University

With contributions from Adam Falconi on Patents, David Bowden on Trade-marks, and Mona Zarifian on Copyright.