Category: Uncategorized

Common Patent Misconceptions – Myth #1

Posted on by Debbie Malek

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #1: Even if I file and register a patent, some giant company could still infringe it and would probably win in court if I sued them.

First and foremost, the likelihood of a patent ending up in court is very low. Economic studies (http://faculty.haas.berkeley.edu/shapiro/patents.pdf) have shown that of the total number of patents that are issued every year, only about 1.5% of them are ever litigated, and that only about 0.1% of them are ever litigated to trial. The association between patents and litigation in the minds of the public is likely a result of the relatively more recent patent troll cases, and the disproportionately high media coverage they have received.

If the statistics aren’t enough, businesses and startups should also keep in mind that the laws and regulations in place will not likely allow a smaller company to be unfairly steamrolled in court by a much larger infringer. A good example of this is the case of Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91 (2011), where the Supreme Court of the United States (“SCOTUS”) unanimously upheld a $290 million award against the tech giant Microsoft in a case brought by a Canadian software startup, i4i Limited Partnership (“i4i”). The Toronto-based i4i had alleged that a version of Microsoft Word had infringed its patented method for editing documents.

While litigation can certainly be expensive, and while Microsoft did have much deeper pockets than i4i, the SCOTUS decision, and indeed the lower courts, agreed that Microsoft had willfully violated i4i’s patent rights and that i4i was due compensation for that infringement.

A key take away from the above example is that the success of i4i would never have been possible had they not acquired patent protection for their invention. Without their patent, Microsoft would have been freely able to use the technology, with any recourse for i4i being highly unlikely.

If you are considering obtaining patent protection or have questions relating to patent protection, please feel free to reach out to MBM for a free consultation

T: 613-567-0762
E: patents@mbm.com

Author: Osman Ismaili, Patent Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Are you utilizing your IP to obtain financing and grow your business?

Posted on by Debbie Malek

Intellectual property (IP), including patents, industrial designs and trademarks, is an under-utilized business tool for small medium enterprises (SMEs).  Regardless of company size, IP may be used to:

  • Obtain financing
  • Generate revenue through licensing opportunities
  • Protect and/or expand market share

This is highlighted in the 2019 IP Canada Report from the Canadian Intellectual Property Office in the section entitled “[t]he impact of IP on financing and growth of small and medium enterprises” (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04682.html). In particular, the 2019 IP Canada Report summarized the results of ISED 2017 Survey on Financing and Growth of Small Medium Enterprises.  The following points are of particular interest:

  • While more than half of Canadian SMEs are aware of patents, very few have patents.
  • The proportion of Canadian SMEs holding at least one patent increases as size of SMEs increases.  In particular, 3% of SMEs having 20 to 99 employees hold at least one patent while 15% of SMEs having 100 to 499 employees hold at least one patent.
  • Canadian SMEs aware of IP or holding formal IP obtained more financing as compared to SMEs not aware or not using IP.
  • Canadian SMEs aware of IP or holding formal IP increased domestic and international market expansion as compared to SMEs not aware or not using IP.
  • Canadian SMEs aware of IP or holding formal IP increased growth as compared to SMEs not aware or not using IP.

It is important to start a formal conversation about some forms of IP at the outset of your business, even if you don’t have the funds to invest in it right away. A strategy should be devised to plan for it in the future and allocate some budget to properly protect your IP. An intellectual property professional can help you determine what IP is appropriate for your business and how much to budget for it. Intellectual property, especially for start-ups or an SMEs, is considered to be one of its biggest business assets and as such should be treated with extreme care. An IP professional can help you maximize business opportunities out of your intellectual property if the right strategy is in place.

For more information please contact:

Kay Palmer, Ph.D., Senior Patent Agent
T: 613-801-0452
E: kpalmer@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Class action lawsuits may be available for copyright infringement cases in some instances

Posted on by Debbie Malek

Despite the fact that it didn’t work out in this case, it appears that reverse class action lawsuits may be possible in copyright infringement situations.

In Voltage Pictures, LLC Canada v Salna, 2019 FC 1412, the Federal Court (“FC”) dismissed a motion for certification brought by Voltage Pictures, LLC and six other film production companies (collectively, “Voltage”).

Voltage brought the motion to certify the proceeding as a class action after identifying what it believed to be three possible infringers. Voltage’s classification of infringers included an “Authorizing Infringer,” which is a person, such as an internet subscriber, who has not taken reasonable steps to prevent infringement from occurring on an internet account controlled by them, or who has authorized an unlawful copy of a film.

The FC found that Voltage’s proposed reverse class proceeding should not be certified as it had failed to fulfill all of the requirements in Rule 334.16 of the Federal Courts Rules. Voltage had not met the low threshold requirement that the pleadings disclose a reasonable cause of action with respect to Authorizing Infringers who are internet subscribers, under the Copyright Act. Further, Voltage had failed to the meet the requirement that there be an identifiable class of two or more people, as two of the identified respondents were not internet subscribers at the relevant time.

 

For more information please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613-801-1099
E: smiller@mbm.com

Co- Author: Osman Ismaili, Patent Associate

 
This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation

 

Review of the Last 100 Decisions of the Canadian Commissioner of Patents

Posted on by Debbie Malek

The Canadian Commissioner of Patents with the assistance of the Patent Appeal Board (PAB) review patent applications that were rejected by Examiners during prosecution. The PAB is an advisory body that includes a Chair and several senior officials of the Patent Office with previous experience as patent examiners. The members of the PAB have not participated in the prosecution of the application to ensure that the review is impartial.

We have conducted an informal review of the last 100 Commissioner’s decisions to gain insight into what type of rejections are being appealed to the Commissioner of Patents and what an Applicant’s likelihood of success is. The decisions were issued between March 23, 2016 and August 5, 2019.

Out of 100 decisions:

12 of the applications under review ultimately issued to patent.

  • 7 of the 12 cases that ultimately issued to patent, the rejections were not considered justified.
  • 5 of the 12 cases that ultimately issued to patent required PAB directed amendments.
  • Only 1 of the 12 cases that ultimately issued to patent included a subject matter rejection.
  • 7 of the 12 cases that ultimately issued to patent included an obviousness rejection.
  • 7 of the 12 cases related to biological or chemical fields.

88 of the applications under review ultimately did not issue to patent.

  • In almost half of these cases a statutory subject matter rejection was made.
  • In 23 of these cases, the only rejection was the statutory subject matter rejection.
  • 17 of these 23 cases included rejections relating to the meaning of art.
  • 21 of these 23 cases included rejections that the claims were directed to a mere plan.
  • 56 of these cases included an obviousness rejection.

Based on our informal review of the last 100 decisions, we believe that Examiner’s decisions to reject applications are generally in-line with the PAB. We further believe the Patent Office will require clarification from the Federal Court with respect to subject matter rejections.

For more information please contact:

Claire Palmer, Ph.D., Senior Patent Agent
T: 613-801-0450
E: cpalmer@mbm.com

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Amendments to the Canadian Patent Rules: Key Changes & Their Impact on the Patent Practice in Canada

Posted on by Debbie Malek

Canada has revised its patent regime to implement the Patent Law Treaty. The new Patent Rules along with corresponding amendments to the Patent Act are set to come into force on October 30, 2019. Most of the changes are intended to streamline and harmonize administrative procedures and formalities with other international intellectual property offices.

Below is a summary of the most noteworthy changes that would require significant practice adjustments and preparation by both the applicants and the agents.

WITH RESPECT TO PCT APPLICATIONS FILED ON OR AFTER OCTOBER 30, 2019:

1. Elimination of “Late” national phase entry at 42-months as a matter of right

The current practice allows an applicant to enter CA national phase after the 30-month deadline and up to 42 months from the priority date, as a matter of right, by paying a $200 late entry fee.

Under the new Rules, the “late” entry is only possible by submitting a statement to the Canadian Intellectual Property Office (CIPO) that the failure to enter the national phase at the 30-month deadline was “unintentional”, in addition to the required filing fee and a $200 late entry fee for reinstatement of rights. Canadian Intellectual Property Office (CIPO) still reserves the right to accept or reject this statement.

It is therefore advisable going forward to consider the 30-month national phase entry deadline as a non-extendible deadline under the new Rules.

2. Translation required at the time of national phase entry

Submission of the English or French translation for a foreign language patent application is an absolute requirement in order to submit an application in Canada.

3. Filing fee required at the time of national phase entry

Payment of filing fee is an absolute requirement to enter the national phase in Canada, with an exception that if an attempt to make a fee payment at the time of filing is unsuccessful, then the filing fee can be paid within 2 months from the date of the attempted payment.

4. Certified copies of priority documents required at the time of filing

If the certified copies of the priority application were not filed during the international phase, it will be necessary at the time of national phase entry in Canada to submit a copy to CIPO, or refer to a digital library that is accepted by CIPO.

5. Restoration of priority

CIPO will accept the restoration of priority attained at the International Phase. If priority is not restored at the international phase, then the priority may be restored in the Canadian national phase application by filing a request within one month from date of the national phase entry, along with establishing that restoration is required due to an unintentional error.

WITH RESPECT TO DIRECT ENTRY APPLICATIONS BASED ON PARIS CONVENTION FILED ON OR AFTER OCTOBER 30, 2019:

1. Filing fee and translation NOT required at the time of filing

The payment of the filing fee can be delayed up to 3 months from the date of the Notice issued by CIPO, along with a $150 late fee.

The submission of the English or French translation for a foreign language patent application can be delayed up to 2 months from the date of the Notice issued by CIPO.

2. Certified copies of priority documents are required within 4 months from the filing or 16 months from the earliest priority date

If certified copies of each priority document are not submitted or made available to CIPO from a digital library within the prescribed time, then CIPO will issue a Notice.

Failure to comply with the requirements by the date set by the Notice would result in the priority claim being considered to have been withdrawn.

3. Restoration of priority

Restoration of priority is available if the Canadian application is filed within 14 months of the priority date, and a request for restoration is filed within 2 months from the Canadian filing date, along with the statement that the error was unintentional.

ABANDONMENT AND REINSTATEMENT OPTIONS

Under current practice, if a Canadian patent application (National Phase or Direct Entry) is deemed abandoned for failure to comply with a due date established for any of the actions described below, the application can be reinstated within 12 months from the date of abandonment by requesting reinstatement, paying a $200 government fee, and taking the action that was required to avoid abandonment.

Under the new Rules, the date of abandonment and reinstatement procedures vary depending upon the cause for abandonment.

For failure to request examination due on or after October 30, 2019

  • CIPO will issue a Notice requiring that the request for examination be filed with payment of the exam fee and a $150 late fee within 2 months of the date of the Notice.
  • The application can be maintained in good standing by requesting examination and paying the $150 late fee prior to the due date set by the Notice.
  • Failure to comply with the requirements set out in the Notice will result in abandonment of the application. Reinstatement can be requested within the 12 month period after the date of abandonment.
  • Within 6 months from the original examination deadline, the application can be reinstated, as a matter of right, by requesting examination, paying the $150 late fee and a $200 reinstatement fee.
  • After 6 months from the original examination deadline, the application can only be reinstated if the applicant can also establish to the commissioner’s discretion that the deadline was missed despite the “due care” required by the circumstances was taken.

For failure to pay maintenance fee due on or after October 30, 2019 for a pending application or a patent

  • CIPO will issue a Notice requiring that the maintenance fee be paid with a $150 late fee by the later of: either 2 months after the date of the Notice or 6 months after the missed deadline.
  • The application can be maintained in good standing by paying the maintenance fee and the $150 late fee prior to the due date set by the Notice.
  • Failure to comply with the requirements set out in the Notice will result in abandonment of the application. Reinstatement can be requested with the 12 month period after the date of abandonment.
  • After the abandoned date, the application can only be reinstated if the applicant can establish to the commissioner’s discretion that the deadline was missed despite the “due care” required by the circumstances was taken, and by paying the maintenance fee, the $150 late fee and a $200 reinstatement fee.

For failure to respond to an Office Action mailed on or after October 30, 2019

  • If a response is not submitted by the due date of 4 months from the date of the requisition (extendible up to 2 months), the application will be deemed abandoned immediately.
  • The reinstatement procedure remains unchanged from current practice, and the application can be reinstated within 12 months of the date of the abandonment, as a matter of right, by submitting the outstanding Office Action response, requesting reinstatement and paying a $200 government fee.

For failure to pay final fee in response to a Notice of Allowance mailed on or after October 30, 2019

  • If the final fee is not paid by the due date of 4 months from the date of the Notice of Allowance, the application will be deemed abandoned immediately.
  • Reinstatement procedure remains unchanged from current practice, and the application can be reinstated within 12 months of the date of the abandonment, as a matter of right, by paying the final fee, requesting reinstatement and paying a $200 government fee.

THIRD PARTY RIGHTS

The new rules introduce the notion of third-party rights to use the invention post-grant, if an applicant fails to pay their maintenance fees and/or to request examination within 6-months from the initial due date (and the due date is after October 30, 2019).

These third-party rights limit the liabilities faced by a third party when a patent application is reinstated or a patent is restored 6 months after the initial due date by paying the maintenance fees and/or if the application is reinstated 6 months after the initial due date for requesting examination.

Given the broad language of these new rules, patent owners will need to consider carefully before delaying the payment of maintenance fee outside the initial 6 months window as they may lose the ability to enforce against third parties that commit, or make serious and effective preparation to commit, an “infringing” act, not only during the window of reinstatement/restoration period but also potentially for the life of the patent.

To emphasize and highlight: In our opinion the two changes that depart most significantly from the current practice are:

1.  the elimination of the option for “Late National Phase Entry” at 42 months from the priority date as a matter of right.

2.  the introduction of third-party rights to use a patented invention because of non-compliance with deadlines relating to payment of maintenance fees and/or request for examination.

 

For more information, please contact:

Poonam Tauh, Partner & Patent Agent
T: 403-800-9018
E: ptauh@mbm.com

Suzanne Hof, Senior Patent Agent
T: 613-801-0510
E: shof@mbm.com

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Planning ahead: how to protect your business when you’ve licensed-in critical IP and the licensor is going under?

Posted on by Debbie Malek

Starting November 1, 2019, important changes are coming into force to the Canadian Bankruptcy and Insolvency Act (BIA) and the Canadian Companies’ Creditors Arrangement Act (CCAA) that are directly related to intellectual property. These changes will better protect licensees of intellectual property when the licensor becomes insolvent by allowing a licensee in good standing to continue to use the licensed IP, despite licensor’s financial troubles.

In particular, the changes clarify that a licensee that “continues to perform its obligations under the agreement in relation to the use of the intellectual property” can continue to use the IP, including enforcement of the use exclusivity, during the term of the agreement, even if:

  • the IP is sold in a BIA restructuring
  • the IP is disclaimed or sold in a BIA liquidation
  • the IP is disclaimed or sold in a receivership
  • the IP is sold in a CCAA restructuring

As a licensee wishing to continue to take advantage of the licensed IP, it is critical that you continue to meet all obligations in the licensing agreement.

In order to properly plan ahead, it is our recommendation that a licensing agreement always include contingency arrangements in the event of the licensor’s insolvency. Always have the licensing agreement reviewed by an IP lawyer. These contingency arrangements should specify:

  • provisions detailing what licensee’s obligations are in the event that a licensor cannot meet their on-going obligations in the event of insolvency.  For example, if a licensor receives payments for on-going support activities, the licensee should specify in the agreement that these payments will be payable only if licensor is able to complete these on-going support activities.
  • provisions detailing who will maintain the IP in good standing in the event that the licensor can no longer continue to financially support the IP.

Having appropriate contingency in place in the event of licensor insolvency will help better protect licensee’s business.

For more information please contact:
Claire Palmer, Senior Patent Agent
T: 613-801-0450
E: cpalmer@mbm.com

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Canada’s Trademark laws will see major changes in June 2019

Posted on by Debbie Malek

It has been announced on November 14, 2018 in the Canada Gazette (Part II, Volume 152, Number 23) that amendments to the Canadian Trade-marks Act will be coming into force on June 17, 2019. On the date of this announcement, the new Trademarks Regulations, which also will be coming into force on June 17, 2019, have been published. By virtue of these changes, there will be notable impacts on Canadian trademark regime in many aspects including registration process, and Canadian Trademark law will be in line with major international trademark treaties such as the Singapore Treaty on Law of Trademarks (Singapore Treaty), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).

Some of the important changes to Canadian Trademarks law are summarized below:

  • Expanded definition of “Trademark”: The definition of “Trademark” will be expanded to include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”;
  • Increased Government Filing and Renewal Fees: Filing fees and renewal fees will increase and will be charged on a per class basis:
    1. The Government filing fee will be $330 for the first class and $100 for each additional class (currently the fee is $250, regardless of how many classes you file in).
    2. The Government renewal fees will be $400 for the first class and $125 for each additional class (currently the renewal fee is $350, regardless of how many classes you renew in). For  trademarks with multiple classes, there is a significant cost savings to renew before June 17, 2019, and even for trademarks with only one class of goods and services there is still a small saving of $50.To illustrate with numbers: the cost of renewing a trademark with 6 courses after June 17, 2019 will be: $400 (1st class) + ($125 x 5 additional classes) = $1,025 in government fees vs. $350 in government fees if renewed before June 17, 2019.
  • Adoption of the Nice classification system: Goods and services in a trademark will need to be classified according to the Nice Agreement classification system, as in many other countries;
  • Date of first use will no longer be required: Identifying the date of first use of a trademark in Canada will be removed from the application;
  • Declarations of use not required for a “proposed use” application: Applicants will no longer be required to file a declaration of use in order for the application to proceed to registration;
  • Ability to divide and merge applications: A trademark application can be divided to expedite the registration process, especially when there is opposition to certain goods or services. Divided applications and registrations can be merged later;
  • New registration period: The registration period for trademarks will be shortened from 15 years to 10 years and the renewal of a trademark registration will be required every 10 years. Terms for existing trademark registrations will remain 15 years; and
  • International filing through a single application: Canada will be joining the Madrid Protocol. As such, will be able to file a trademark application in multiple countries (that are members of the Madrid Protocol) through a single application.

Recommendation given the new legislation: if you have clients who are considering filing trademarks, especially multi-class applications, there could be significant cost savings if filed before June 17, 2019. As mentioned above the current Government Fee for filing regardless of how many classes you file in is $250, however, after June 17, 2019, the government filing fee will be $330 for the first class and $100 for each additional class. The same is applicable for renewals, it is recommended to renew before June 17, 2019, especially multi-class applications, as renewal fees will be going up, $400 for the first class and $125 for each additional class. Even if you renew now, before June 17, 2019, the new term (10 or 15 years) will be calculated from the actual renewal due date NOT when you paid the renewal fee.

For more information, please contact:

Randy Marusyk, Co-Managing Partner
T: 613-801-1088
E: rmarusyk@mbm.com

Co-Author: Hyun Woo Choi, Articling Student

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

The Price of Privacy: Canada’s Top Court Rules, ISPs must disclose the identity of illegal downloaders at a “reasonable” cost

Posted on by Debbie Malek

The Supreme Court of Canada sided with Rogers Communications in a recent 9-0 decision ruling that requires companies seeking to pursue copyright violators to remunerate internet service providers (ISPs) for looking up names of subscribers suspected of illegal activity.[1]

The Internet has long protected the identity of users participating in file sharing networks facilitating the rapid sharing of copyrighted content. The Government of Canada enacted the “notice and notice” regime as part of the Copyright Modernization Act in 2012 to deter online copyright infringement while balancing the rights of interested parties. Under the “notice and notice” regime, a rights owner is able to forward notice of alleged infringement to an ISP, the ISP is then obliged to forward the notice of infringement to the alleged wrongdoer. The “notice and notice” regime is “the first step in a process by which rights holders can go after those they allege are infringing… Then the rights holder can use that when they decide to take the alleged infringer to court.”[2] An ISP is not required to disclose the identity of a user who has received a notice of infringement under the “notice and notice” regime. ISPs are only required to disclose the identity of an individual who has received notice of infringement from a rights holder under a Court granted Norwich order, an extraordinary remedy that enables a rights holder to discover the identity of infringers from an internet intermediary like an ISP.

The recent ruling of Canada’s top Court in Rogers Communications Inc. v Voltage Pictures creates a new precedent allowing ISPs to charge rights holders for the costs associated with pursuing copyright violators in compliance with a Norwich order.

Voltage Pictures, the production studio behind I Feel Pretty and Oscar winning films including Dallas Buyers Club and The Hurt Locker, first brought the matter to trial in the Federal Court in 2014.[3] Voltage put forward a reverse class action and moved to compel Rogers Communications to provide the personal information of alleged infringers at no cost.[4] Rogers was originally ordered by the Federal Court to disclose the identity of the alleged infringer to Voltage and Voltage was ordered to pay Rogers $100 per hour, plus HST, for the time spent assembling the information. The decision was appealed to the Federal Court of Appeal, where it was found that Rogers was entitled to reasonable costs of the actual act of disclosure but the remainder of associated costs incurred by Rogers in compliance with a Norwich order was not recoverable.

As a result the recent Supreme Court decision, ISPs can now charge a “reasonable amount” for the efforts associated with looking up subscribers suspected of illegal activity under a Norwich order. However, the steps untaken by an ISP to comply with a Norwich order that overlap with an ISP’s obligations under the “notice and notice” regime may not be recoverable. The determination for what constitutes a “reasonable cost” was sent back to the lower court for a final decision. As a result of this Supreme Court decision, the amount of costs associated with identifying internet users suspected of illegal activity may impact the way in which rights holders pursue infringers. The traditional method of suing many internet users for copyright infringement at once may become cost prohibitive for rights holders like movie production studios upon the determination of what an ISP can reasonably charge for compliance with a Norwich Order.

For more information please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613-801-1099
E: smiller@mbm.com

Co- Author: Lisa Crimi, Articling Student

 
This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation

 

Another Win for MBM – Increased Cost Awards by the Federal Court – The New Normal?

Posted on by Debbie Malek

Successful litigants in Canada’s Federal Court are experiencing a positive shift in the quantum of costs that are awarded by the Court. For years, cost awards have been based on a tariff which typically provides only modest compensation of a party’s actual legal fees. In the past, awards in excess of the standard set by the tariff were considered uncommon.

The recent decision of Weldpro Limited v Weldworld Corp et al (2018 FC 312), where the respondents were successfully represented by Scott Miller and the MBM litigation team, confirms there is an emerging trend by the Federal Court to award costs at a higher level of compensation than the standard level set by the tariff in the right circumstances.

In Weldpro, the applicant made a claim for passing off contrary to paragraphs 7(b) and (c) of the Trade-marks Act. In addition to naming the corporate respondent as a party, the applicant pursued the corporate respondent’s director, Mr. Kocken.

The Court’s decision was entirely in favour of the respondents. In awarding costs to the respondents, the Court took into consideration that there was no shared or split success in the case and that while the issues at play were relatively straightforward, the applicant unnecessarily complicated the proceedings which, on their face demonstrated little chance of success. It was also remarked that the applicant failed to advance the best available evidence and that the allegation of personal misconduct against the corporate respondent’s director was little more than a bald assertion that was not pursued in any fashion in the course of the hearing.

In departing from the standard level of compensation set by the tariff, the Court awarded the respondents a fixed sum amounting to about 23% of the actual legal costs, using the tariff only as a rough guide.

Notably, the award included reimbursement of Mr. Kocken’s travel expenses to attend the hearing. The Court provided that being named as a personal respondent understandably triggered Mr. Kocken’s desire to be present at the hearing.

The Weldpro decision establishes the ongoing opportunity for a winning party to receive an award of increased costs from the Federal Court. Further, litigants should be aware that cost consequences may result from a claim for personal liability against an individual party if such allegations are unfounded and unaddressed at the hearing of the matter.

 

For more information please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613-801-1099
E: smiller@mbm.com

Co- Author: Erin Creber

 
This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation

Intellectual Property Considerations in the New CPTPP & NAFTA Negotiations

Posted on by Debbie Malek

When the United States pulled out of trade negotiations for the Trans-Pacific Partnership agreement (the “TPP”), many considered the agreement to be dead. However, Canada and the other ten countries originally part of TPP negotiations have managed to breathe new life into the agreement.

At the World Economic forum in January 2018 in Davos, Canadian Prime Minister Trudeau announced that Canada and the other ten TPP countries had reached an agreement on a revised TPP,[1] now renamed the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (the “CPTPP”). Member countries are working towards signing the agreement by early March 2018.[2] While the new CPTPP will be different in a number of ways, of particular importance are the changes that were made to the agreement’s intellectual property (IP) provisions following the departure of the US from negotiations.

During the original TPP negotiations, the US had insisted for certain IP provisions related to patentable subject matter, patent term adjustment, copyright term of protection and technological protection measures (TPMs), among others, to be strengthened. At the time, many of these provisions were considered one-sided and quite controversial because they would require other TPP member countries to undergo extensive and expensive legislative reforms, including Canada. In agreeing to the reworked CPTPP, Canada has endorsed the suspension of a number of these IP provisions. A list outlining the suspended IP provisions can be found here.[3]

With this new CPTPP as a backdrop, it will be interesting to see how Canada will now approach the negotiation table with the US for a revised NAFTA. It is expected that the US will attempt to negotiate for IP provisions similar to those in the original TPP.[4] Whether Canada will push back against the US for IP provisions more in line with those in the new CPTPP, only time will tell.

 

For more information, please contact:

Randy Marusyk, Co-Managing Partner
T: 613-801-1088
E: rmarusyk@mbm.com

Co-Author: Robert Di Battista

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

[1] https://globalnews.ca/news/3989224/commentary-tpp-deal-a-win-for-trudeau-and-a-win-for-canada/

[2] http://www.macleans.ca/politics/ottawa/canada-tpp-members-agree-to-revised-deal-without-the-u-s/

[3] http://dfat.gov.au/trade/agreements/tpp/news/Documents/annex-2.pdf

[4] http://www.michaelgeist.ca/2018/01/dont-make-tpp-mistake-canada-needs-maintain-progressive-approach-ip-nafta

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