422 Intellectual Property
Patents......
1.0 The Basic Structure of a Patent......
1.1 Disclosure......
1.2 Claims......
1.3 Drawings......
2.0 History of Monopolies......
3.0 The Subject Matter of Patents......
3.1 Methods, Uses and Professional Skills......
3.2 Living Subject Matter......
3.3 Deposit of Biological Material as Disclosure and Protection of Selectively Bred Plants......
(a) Plant Breeders’ Rights Act......
(b) Patentability of DNA......
3.4 Patentability of Computer Programs......
3.5 Patentability of ‘Business Methods’ in Canada......
3.6 Combinations and Aggregations......
4.0 Novelty......
4.1 Disclosure and Filing Dates......
(a) Novelty Examples......
4.2 Standard for Anticipation......
5.0 Obviousness......
6.0 Utility......
6.1 Useless Embodiments......
7.0 Patent Ownership......
8.0 Infringement......
8.1 Statutory Provisions......
8.2 Ascertaining Infringement......
(a) Construction of Claims......
(b) Substantial Infringement......
(c) Infringing Use......
(d) Indirect Infringement......
8.3 Remedies for Infringement......
Copyright......
A) Historical Development of Copyright......
1. Bill C-61......
2. Why is There IP?......
3. File-swapping in Canada......
4. Balancing Competing Interests......
5. Basic Copyright Facts......
6. What is Copyright?......
(B) Requirements for Subsistence of Copyright......
1. Subject Matter - Qualifying Work?......
(i) Literary Works......
> Computer Software......
(ii) Dramatic Works......
(iii) Artistic Works......
Hay v. Sloan......
Viceroy Homes......
> Artistic Work v. Industrial Design......
2. Entitlement......
3. Originality......
University of London Press v. University Tutorial Press (1916 UK)......
(i) Compilations......
Feist v. Rural Telephone Service (1991 USSC)......
Tele-Direct v. American Business information (1998 FCA – leave to appeal to SCC denied)......
BC Jockey Club v. Standen (BCCA)......
** CCH Canadian Ltd v. Law Society of Upper Canada (2004 SCC)......
4. Fixation......
Canadian Admiral v. Rediffusion (1954 Ex Ct. Ca)......
Gould Estate v. Stoddart Publishing (OCA)......
Theberge......
CCH, para. 8......
Non-Works......
(C) SOME OF THE RIGHTS COMPRISING COPYRIGHT IN A WORK......
1. To Reproduce......
Ladbroke (Football) v. William Hill (Football)......
2. To Perform In Public......
Canadian Admiral Corp v. Rediffusion......
Canadian Cable TV v. Canada......
3. To Make Contrivances for Mechanical Performance or Delivery......
Warner Bros – Seven Arts v. CESM......
(D) Moral Rights......
Snow v. Eaton Centre......
(E) Neighbouring Rights (Copyright in Non-Works)......
1. Performers’ Rights, ss. 15, 26......
2. Copyright in Sound Recordings, s.18......
3. Performer/Maker’s Right to Equitable Remuneration for Performance in Public of a Sound Recording, s.19......
4. Broadcaster’s Copyright in a Communication Signal, s.21......
(F) Ownership and Assignment......
1. General......
2. Ownership of Works Created During Employment......
University of London Press v. University Tutorial Press......
Beloff v. Pressdam......
3. Joint Authorship......
Neudorf v. Nettwerk Productions......
(G) Term and Registration of Copyright......
1. Term of Copyrights......
2. Registration......
(H) Infringement......
1. Proving Infringement......
Grignon v. Roussel......
Francis Day & Hunter......
(i) Infringement – Literary Works......
Preston v. 20th Century Fox......
(ii) Infringement – Dramatic Works......
Nichols v. Universal Pictures......
Roy Export Co v. Gauthier......
(iii) Infringement – Musical Works......
Francis Day & Hunter......
Grignon v. Roussel......
(iv) Infringement – Artistic Works......
Fetherling v. Boughner......
Theberge v. Galerie d’Art......
Kaffka v. Mountainside Developments – DAMAGES......
(v) Secondary or Indirect Infringement......
Fly By Nite v. Record Wherehouse......
(vi) Authorization of Infringement......
CBS Songs v. Armstrad – tape recorders......
SOCAN v. Canadian Assn. of Internet Providers (Tariff 22)......
2. Exceptions to Infringement/ “User’s Rights”......
(i) Fair Dealing......
(ii) Public Interest Defence......
(iii) Parody......
(iv) Home Taping Exemption, s.80......
(v) Special Exceptions......
TRADEMARKS......
1.0 INTRODUCTION & CONSTITUTIONAL ISSUES......
Kirkbi AG v. Ritvik Holdings......
(a) The Definition of “Trademark”......
2.0 DISTINCTIVENESS......
(a) How a Foreign Mark Not Used in Canada Affects Distinctiveness of a Canadian Mark......
Bojangles International v. Bojangles Café......
Philip Morris v. Imperial Tobacco......
Astrazeneca v. Novapharm......
(b) Acquired Distinctiveness......
Molson Breweries v. John Labatt Ltd......
British Petroleum Co Ltd v. Bombardier Ltd......
3.0 USE UNDER SECTION 4......
(a) Use with Wares, s.4(1)......
Nissan Canada Inc v. BMW Canada......
BMB Compuscience Ltd v. Bramalea......
Siscoe Vermiculite Mines v. Munn & Steele Inc......
(b) Use of Services, s.4(2)......
Porter v. Don the Beachcomber......
Saks & Co v. Registrar of Trade Marks......
(c) Use on Exported Goods, s.4(3)......
4. ENTITLEMENT TO REGISTER......
Effigi Inc v. Attorney General......
(a) Advantages of Trademark Registration......
(b) Trademark Application Process......
5.0 REGISTRABLE MARKS......
5.1 Disclaimer Practice......
Lake Ontario Cement Ltd v. Registrar of Trade Marks......
5.2Personal Names......
Gerhard Horn Investments v. Registrar of Trade Marks......
Standard Oil Co v. Registrar of Trade Marks......
Registrar of Trade Marks v. Coles Book Store......
Elder’s Beverages v. Registrar of Trademarks......
5.3 Descriptive Marks......
(a) Clearly Descriptive Marks......
General Motors v. Bellows......
Drackett v. American Home Products......
Imperial Tobacco Ltd. v Benson & Hedges (Canada)......
Provenzano v. Registrar of Trade Marks......
(b) Deceptively Misdescriptive Marks......
(c) Geographically Descriptive Marks......
TG Bright v Institute National des Applications d’Origine......
Atlantic Promotions Inc v Registrar of Trade Marks......
5.4 Name of the Goods or Services......
Canadian Shredded Wheat v Kellogg’s......
6.0 CONFUSING MARKS......
Principles......
Mattel Inc v. 3894207 Canada Inc......
Ultravite Laboratories v Whitehall Laboraties......
7.0 OFFICIAL AND PROHIBITED MARKS......
(a) Public Authority Marks, s.9(1)(n)(iii)......
Ontario Assn of Architects v Assn of Architectural Technologists of Ontario......
ICBC v Registrar of Trade Marks......
Canadian Olympic Association v Allied Corp......
(b) Prohibited Marks - Commercial Designations, s.10......
(c) Geographical Indications......
(d) Olympic and Paralympic Marks......
8.0 DISTINGUISHING GUISES AND TRADE DRESS......
Eli Lilly and Co v. Novapharm......
Dominion Lock Co v Schlage Lock Co......
Remington Rand Corp v Philips Electronics......
9.0 CERTIFICATION MARKS......
10.0 NON-USE OF A TRADEMARK......
10.1 Expungement Under Section 45......
10.2 Expungement for Abandonment......
10.3 Use of a Mark Varying from the Registration......
11.0 LICENSING......
12.0 ASSIGNMENT OF TRADEMARKS......
13.0 INFRINGEMENT......
13.1Infringement Under Sections 19: Use of Identical Mark......
13.2 Infringement Under s.20: Use of Confusing Mark......
13.3 Gray Marketing......
14.0 DEPRECIATION OF GOODWILL: SECTION 22......
Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltee......
Source Perrier (Societe Anonyme) v Fira-Less Marketing......
15.0 UNFAIR COMPETITION......
15.1 Passing Off at Common Law......
15.2 Statutory Passing Off Under Section 7......
Patents
1.0 The Basic Structure of a Patent
- A patent “specification” refers to the “disclosure” or “description” and the “claims”
1.1 Disclosure
- The purpose of the disclosure is to describe the invention in sufficient detail to allow someone to reproduce the invention once the patent lapses or expires
- The disclosure is addressed to a person “skilled in the art”, not the average layperson
- Fields on the patent cover page
- Title
- Titles of patents are typically broad so that the patent can be construed broadly
- Inventors names and places of residence
- Fewer than 10% of Canadian patents are granted to Canadian inventions
- Filing Date
- Issue Date
- Priority Date
- Class and subclass
- Number of claims
- Sections in the disclosure
- Abstract: one paragraph description of the invention
- Field of the invention: describes the field of art to which the invention pertains, lay-person categories of inventions; typically broad
- Background of the invention: describes the prior art, i.e., similar inventions already in existence, and the shortcoming the invention is trying to overcome
- Summary of the invention: typically a paraphrase of the claims, sometimes omitted from applications entirely because there is a danger that courts may use it to limit the scope of the invention
- Brief description of the drawings
- Detailed description: typically uses numerical references to drawings to describe the invention in detail
1.2 Claims
- Claims: the most important part of the patent because they define the scope of the monopoly
- The drawings and description do not affect the scope of the monopoly
- Claims attempt to use the broadest terminology possible, functional terminology is used to broaden the scope of claims
- In certain jurisdictions, means plus function claims can actually act to narrow the scope of protection
- The breadth of claims is limited by the prior art
- Claims may be independent or dependent
- Independent claims stand by themselves, dependent claims refer to another claim and include all the limitations of that claim and plus at least one more additional limitation
- The function of the claims is to define clearly and with precision the monopoly claimed – to delimit the scope of exclusive rights protected by the patents
- What is not claimed is disclaimed, i.e., aspects described in the disclosure, but not claimed in the claims are dedicated to the public domain
- Claims may cover actions (i.e. methods, processes and uses) in addition to things (i.e. apparatuses, compositions and products)
- Claims are by tradition single sentences. This annoys judges.
- Collier J. from Xerox v. IBM: “Claim 1 (to use an example) of this patent has approximately 178 words. The Gettysburg address has, I understand, 270 words. But the Gettysburg masterpiece uses not only words but punctuation, including periods, to convey its meaning. Claim 1 has no periods. It is one long complicated sentence employing approximately 6 commas. It is said that the Patent Rules…and the Patent Office require that claims be stated in this way - one sentence. I suspect the real answer is that this drafting method is merely traditional. We lawyers are slaves to tradition… In patent suits, claims are often, at best, riddles. When technical words and phrases are all bundled into one huge sentence, the claim passes from riddle to enigma.”
1.3 Drawings
- Not all patents include drawings
- Drawings do not contribute to the scope of the patent’s monopoly
2.0 History of Monopolies
- During the reign of Elizabeth I the Crown often exercised its prerogative power to grant trading monopolies
- The abuse of this practice caused the English Parliament to force the monarch to accept the Statute of Monopolies which prohibited granting monopolies, save for “any manner of new manufactures” granted to the “true and first inventor”
- Originally patents were granted without the need to file a detailed description of the invention
- After about 1700 the custom of filing a written patent specification emerged
- Inventors eventually began to describe both the best means for carrying out the invention in specific terms and the general nature of the invention in broad terms
- It became a requirement in 1883 that a patent end with a set of claims that set out the scope of the monopoly
3.0 The Subject Matter of Patents
- Not all ideas may be patented. A series of cases have delimited the scope of patentable subject matter.
- Under the Statute of Monopolies only a new “manner of new manufacture” could be patented
- A method or process is a manner of manufacture if it (a) results in the production of some vendible product, or (b) improves or restores to its former condition a vendible product or (c) has the effect or preserving from deterioration some vendible product to which it is applied. (NRDC’s Application (Australian High Court))
- A method which results in an effect that (1) alters the natural state of affairs and (2) has practical utility or market value, qualifies as a vendible product (NRDC’s Application (Australian High Court))
- Canada’s Patent Act provides a specific definition for invention:
“invention” means any new and useful art, process,
machine, manufacture or composition of matter, or any new
and useful improvement in any art, process, machine,
manufacture or composition of matter;
- s. 27(8) holds that abstract theorems may not be patented:
(8) No patent shall be granted for any mere scientific
principle or abstract theorem.
3.1 Methods, Uses and Professional Skills
- Professional skills are not patentable; methods which belong to a professional field are not manual arts or skills and are not patentable (Lawson v. Commissioner of Patents)
- Where effectiveness of a methods depends on the skill of the professional skill of practitioner, this may indicate that the method belongs to a professional field and is unpatentable (Re Dixon Application)
- Methods of applying a substance to a human body are not patentable because any effect the method has on the human body is not an effect on a material object (Tennessee Eastman)
- The use of a known substance for a new purpose, including the purpose of treating disease, is patentable (Re Application for Patent of Wayne State University)
- Note the distinction between claiming a new method of treatment, and a new use for treatment
- The discovery of the new use provides all the inventive ingenuity required for patentability
- The patentee may obtain protection for both the idea (use) and the method for carrying it out
- The method of carrying out the use, or the practical embodiment, does not required inventive ingenuity
- Therapeutic uses of substances are not methods of medical treatment because (Apotex v. Wellcome)
- (1) the administration of the substance requires the application of professional skill and judgment, and
- In other words, administration = use + professional skill; therefore the patented use does not cover professional skill
- (2) the economic benefit of the new use occurs through the manufacture and sale of the substance and not simply an increase in the efficacy of the day to day practice of physicians and other medical professionals
- Diagnostic methods are patentable
- Cosmetic methods are not patentable
3.2 Living Subject Matter
- All new life forms which are
- (1) produced en masse as chemical compounds are prepared, and
- (2) are formed in such large numbers that any measurable quantity will possess uniform properties and characteristics
- are patentable (Re Application of Abitibi Co.)
- Deposit of an new life form that is capable of self-reproduction in a publicly accessible culture collection I sufficient to satisfy the disclosure requirements of s. 36 (Re Application of Abitibi Co.)
- Higher life forms are not patentable (President and Fellows of Harvard College v. Commissioner of Patents (Harvard Mouse))
- Higher life forms grow out of lower life forms
- Life forms are not manufactures
- The line between higher life forms and lower life forms is based on common sense
3.3 Deposit of Biological Material as Disclosure and Protection of Selectively Bred Plants
- Pioneer Hi-bred addressed the patentability of selectively bred plant species
- SCC decided the case on the basis of incomplete disclosure rather than patentable subject matter
- In the course of the reasons, the court held that deposit alone was not sufficient to satisfy the disclosure requirement
- The Canadian Patent Act now includes a provision providing for biological deposits as part of a patent specification:
38. (1) In all cases in which an invention admits of representation
by model, the applicant, if required by the Commissioner, shall
furnish a model of convenient size exhibiting its several parts in
due proportion, and when an invention is a composition of matter, the
applicant, if required by the Commissioner, shall furnish specimens
of the ingredients, and of the composition, sufficient in quantity
for the purpose of experiment.
(2) If the ingredients or composition referred to in subsection (1)
are of an explosive or dangerous character, they shall be furnished
with such precautions as are specified in the requisition therefore.
(a) Plant Breeders’ Rights Act
- As an alternative to patent protection, it is possible to protect new plants created through breeding under the Plant Breeders’ Rights Act
- The Plant Breeders’ Rights Act provides protection for all plant species, except algae, bacteria and fungi, and entitles the holder of a plant breeders’ rights registration to the exclusive right to:
- sell (and produce in Canada for the purpose of selling) propagating material of a new plant variety;
- make repeated use (if such use is necessary) of propagating material to commercially produce another variety; and
- if the variety is ordinarily marketed for purposes other than propagation, to use such plants or parts thereof commercially as propagating material in the production of ornamental plants or cut flowers
- In order to qualify for plant breeders’ rights protection, a candidate variety must be distinct, uniform, and stable in its essential characteristics
- The term of protection is 18 years, measured from the date of issuance of the Certificate of Registration
- A plant is not patentable subject matter, per se, because plants are higher life forms (i.e., multicellular living organisms)
- The genes and modified cells that make up a plant are patentable subject matter (Monsanto Canada Inc. v. Schmeiser)
- Whether protection extends to plants containing patented genes and cells is a question of infringement, not validity (subject matter patentability)
- A person whose tissue is used to develop cell lines has no property right in the cell line (Moore v. Regents of the University of California)
(b) Patentability of DNA
- Patent protection is available for isolated and purified DNA fragments, full length genes and the proteins they encode
- DNA fragments are treated no differently from other chemical compounds derived from a natural source
- In order to be patentable, the fragments must have some useful purpose, such as synthetic probes used for forensic identification, identification of tissue type or origin, chromosome mapping etc.
- On 20 June 2006, the CIPO made an announcement that “The Patent Office takes the position that animals at any stage of development, from fertilized eggs on, are higher life forms and are thus not patentable subject matter under section 2 of the Patent Act. Totipotent stem cells, which have the same potential as fertilized eggs to develop into an entire animal, are considered to be equivalents of fertilized eggs and are thus higher life forms and are not patentable subject matter.”
- This announcement flatly contradicts the majority in Harvard Mouse
3.4 Patentability of Computer Programs
- To determine whether a computer invention is patentable, first determine what has been discovered, and then determine whether the discovery is traditionally patentable subject matter (Schlumberger Canada Ltd. v. Commissioner of Patents)
- The fact that a computer is or should be used to implement discovery does not change the nature of the discovery (Schlumberger Canada Ltd. v. Commissioner of Patents)
- Since Schlumberger, the CIPO has issued guidelines for the patentability of computer-related inventions
- 1. Unapplied mathematical formulae are considered equivalent to mere scientific principles or abstract theorems which are not patentable under section 27(8) of the Patent Act.
- 2. The presence of a programmed general purpose computer or a program for such computer does not lend patentability to, or subtract patentability from, an apparatus or process.
- 3. It follows from 2, that new and useful processes incorporating a computer program, and apparatus incorporating a programmed computer, are directed to patentable subject matter if the computer-related matter has been integrated with another practical system that falls within an area which is traditionally patentable. This principle is illustrative of what types of computer-related applications may be patentable, and is not intended to exclude other computer-related applications from patentability.
- According to the CIPO’s guidelines, the key is to obtaining patent protection is characterizing the discovery as being a practical system that falls within an area which is traditionally patentable
3.5 Patentability of ‘Business Methods’ in Canada
- The law in Canada has not gone nearly as far as the US
- A process that includes a practical element is patentable subject matter (Diamond v. Diehr (209 USPQ 1 – USSC 1981))
- Any process that produces a “useful, concrete and tangible result” is patentable (State Street Bank)
- CIPO is moving towards a “vendible product” test which does not really accord with the state of the law in Canada
3.6 Combinations and Aggregations
- “Mere juxtaposition of parts is insufficient for patentability. The elements must combine for a unitary result. If any element in the arrangement gives its own result, without and result flow from the combination, then there is no invention.” (Domtar Ltd. v. MacMillan Bloedel Packaging Ltd.)
- In other words, each piece of the combination must perform some function that contributes to the result of the combination, the result being something more than the sum of essentially independent functions
- A practical test is removing the elements one at a time: If any one of them were removed and the otherswould continue to perform their own individual function it is merely an aggregation, not a combination.
4.0 Novelty
4.1 Disclosure and Filing Dates
- The test for novelty in Canada is set out by s. 28.2 of the Patent Act:
28.2 (1) The subject-matter defined by a claim in an application for