Archive for the 'Patents' Category

Drone Patents

By Richard Stobbe

Last month, Amazon made its first delivery via drone with its Prime Air service. Remember, this is an e-commerce company not a drone manufacturer. Amazon is pushing the limits in the use of unmanned aerial vehicles (UAVs) and is laying the groundwork for an IP protection portfolio for this technology, even where it does not apparently benefit Amazon’s core business. This shows that innovation can open up other product channels that could be licensed, for example, to drone manufacturers. For instance, Amazon’s newest issued patent relates to a mini-drone to assist in police enforcement. Think of a traffic stop which is accompanied by the whine of a small pocket-sized drone that can monitor and record the interaction or chase bad guys.
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Other innovations are squarely within Amazon’s core competencies of order fulfillment. Another recently issued patent seeks to protect drones from being hacked and rerouted en route.

Another application filed in April 2016 describes an aerial blimp-like order fulfillment center utilizing UAVs to deliver items from above. This shows that the growth in drone-related patents will not all be related directly to the individual drones, but rather will relate to the evolving ecosystem around the use of UAVs, including remote control technologies, payload innovations, docking infrastructure, and commercial deployments such as the Death Star of e-commerce.

 

 

Calgary – 07:00

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IP Licenses & Bankruptcy Laws (Part 1)

By Richard Stobbe

When a company goes through bankruptcy, it’s a process that can up-end all of the company’s contractual relationships. When that bankrupt company is a licensor of intellectual property, then the license agreement can be one of the contracts that is impacted. A recent decision has clarified the rights of licensees in the context of bankruptcy.

In our earlier post – Changes to Canada’s Bankruptcy Laws – we reviewed changes to the Bankruptcy and Insolvency Act (BIA) back in 2009. These changes have now been interpreted by the courts, some seven years later.

In Golden Opportunities Fund Inc. v Phenomenome Discoveries Inc., 2016 SKQB 306 (CanLII),  the court reviewed a license between a parent and its wholly-owned subsidiary. Through a license agreement, a startup licensor, which was the owner of a patent covering an invention pertaining to the testing and analysis of blood samples, licensed a patented invention to its wholly-owned subsidiary, Phenomenome Discoveries Inc. (PDI). PDI, in turn was the owner of any improvements that it developed in the patented invention, subject to a license of those improvements back to the parent company.

PDI went bankrupt. The parent company objected when the court-appointed receiver tried to sell the improvements to a new owner, free and clear of the obligations in the license agreement. In other words, the parent company wanted the right to continue its use of the licensed improvements and objected that the court-appointed receiver tried to sell those improvements without honoring the existing license agreement.

In particular, the parent company based its argument on those 2009 changes to Canada’s bankruptcy laws, arguing that licensees were now permitted keep using the licensed IP, even if the licensor went bankrupt, as long as the licensee continues to perform its obligations under the license agreement. Put another way, the changes in section 65.11 of the BIA should operate to prohibit a receiver from disclaiming or cancelling an agreement pertaining to intellectual property. The court disagreed.

The court clarified that “Section 65.11(7) of the BIA has no bearing on a court-appointed receivership.” Instead the decision in “Body Blue continues to apply to licences within the context of court-appointed receiverships. Licences are simply contractual rights.” (Note, the Body Blue case is discussed here.)

The court went on to note that a receiver is not bound by the contracts of the bankrupt company, nor is the receiver personally liable for the performance of those contracts. The only limitation is that a receiver cannot disclaim or cancel a contract that has granted a property right. However, IP license agreements do not grant a property right, but are merely a contractual right to use. Court-appointed receivers can disclaim these license agreements and can sell or dispose of the licensed IP free and clear of the license obligations, despite the language of Section 65.11(7) of the BIA.

Calgary – 10:00 MT

 

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How long does it take to get a patent?

By Richard Stobbe

Patent advisors are often asked this question. In Canada, CIPO has published the first-ever IP Canada Report, which contains an interesting trove of IP statistics. Among the infographics and pie-charts is a series of bar graphs showing the time to issuance for Canada patents.

Figure 25 – Average time period in months for the three main stages of the patent process (Courtesy of CIPO)

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Over the past four years, the patent office in Canada has been able to shave months off the delivery time, but the average is still in the neighbourhood of 80 months, or roughly 6 1/2 years.  Certainly some patents will issue sooner, in the 3 – 4 year range, and some will take much longer.  There are strategies to influence (to some degree) the pace of patent prosecution.

And remember, this is the time to issuance from filing. The time to prepare and draft the application must also be factored in.

Ensure that you get advice from your patent agent and budget for this period of time, it’s a commitment.  More questions on patenting your inventions? Contact us.

 

Calgary – 07:00 MT

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Licensees Beware: assignment provisions in a license agreement

By Richard Stobbe

Let’s say a company negotiates a patent license agreement with the patent owner. The agreement includes a clear prohibition against assignment – in other words, for either party to transfer their rights under the agreement, they have to get the consent of the other party.  So what happens if the underlying patent is transferred by the patent owner?

The clause in a recent case was very clear:

Neither party hereto shall assign, subcontract, sublicense or otherwise transfer this Agreement or any interest hereunder, or assign or delegate any of its rights or obligations hereunder, without the prior written consent of the other party. Any such attempted assignment, subcontract, sublicense or transfer thereof shall be void and have no force or effect. This Agreement shall be binding upon, and shall inure to the benefit of the parties hereto and their respective successors and heirs. [Emphasis added]

That was the clause appearing in a license agreement for a patented waterproof zipper between YKK Corp. and Au Haven LLC, the patent owner.  YKK negotiated an exclusive license to manufacture the patented zippers in exchange for a royalty on sales. Through a series of assignments, ownership of the patent was transferred to a new owner, Trelleborg. YKK, however, did not consent to the assignment of the patent to Trelleborg.  The new owner later joined Au Haven and they both sued YKK for breach of the patent license agreement as well as infringement of the licensed patent.

YKK countered, arguing that Trelleborg (the patent owner) did not have standing to sue, since the purported assignment was void, according to the clause quoted above, due to the fact that YKK’s consent was never obtained: “Any such attempted assignment, subcontract, sublicense or transfer thereof shall be void and have no force or effect.” (Emphasis added) In other words,   YKK argued that since the attempted assignment of the patent was done without consent, it was not an effective assignment, and thus Trelleborg was not the proper owner of the patent, and thus had no right to sue for infringement of that patent.

The court considered this in the recent US decision in Au New Haven LLC v. YKK Corporation (US District Court SDNY, Sept. 28, 2016) (hat tip to Finnegan). Rejecting YKK’s argument, the court found that the clause did not prevent assignments of the underlying patent or render assignments of the patent invalid, since the clause only prohibited assignments of the agreement and of any interest under the agreement, and it did not specifically mention the assignment of the patent itself.

Thus, the transfer of the patent (even though it was done without YKK’s consent) was valid, meaning Trelleborg had the right to sue for infringement of that patent.

Both licensors and licensees should take care to consider the consequences of the assignment provisions of their license, whether assignment is permitted by the licensee or licensor, and whether assignment of the underlying patent should be controlled under the agreement.

Calgary – 07:00 MST

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Brexit’s impact on IP Rights

By Richard Stobbe

The  UK’s Chartered Institute of Patent Attorneys (CIPA) has released a helpful 12-page summary entitled The Impact of Brexit on Intellectual Property, which discusses a number of IP topics and the anticipated impact on IP rights and transactions, including:

  • EPC, PCT and UK patents
  • Community trade marks
  • Trade secrets
  • Copyright
  • IP disputes and IP transactions

It is CIPA’s position that IP rights holders should expect “business as usual” in the next few years, since existing UK national IP rights are unaffected, European patents and applications remain unaffected, and the UK Government has not even taken steps to trigger “Article 50” which would put in motion the formal bureaucratic machinery to leave the EU. This step is not expected until late 2016 or early 2017, which means the final exit may not occur until 2019.

Canadian rightsholders who have UK or EU-based IP rights are encouraged to consult IP counsel regarding their IP rights.

Calgary – 07:00 MST

 

 

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Protective Order for Source Code

 
By Richard Stobbe

A developer’s source code is considered the secret recipe of the software world – the digital equivalent of the famed Coca-Cola recipe. In Google Inc. v. Mutual, 2016 BCSC 1169 (CanLII),  a software developer sought a protective order over source code that was sought in the course of U.S. litigation. First, a bit of background.

This was really part of a broader U.S. patent infringement lawsuit (VideoShare LLC v. Google Inc. and YouTube LLC) between a couple of small-time players in the online video business: YouTube, Google, Vimeo, and VideoShare. In its U.S. complaint, VideoShare alleged that Google, YouTube and Vimeo infringed two of its patents regarding the sharing of streaming videos. Google denied infringement.

One of the defences mounted by Google was that the VideoShare invention was not patentable due to “prior art” – an invention that predated the VideoShare patent filing date.  This “prior art” took the form of an earlier video system, known as the POPcast system.  Mr. Mutual, a B.C. resident, was the developer behind POPcast. To verify whether the POPcast software supported Google’s defence, the parties in the U.S. litigation had to come on a fishing trip to B.C. to compel Mr. Mutual to find and disclose his POPcast source code. The technical term for this is “letters rogatory” which are issued to a Canadian court for the purpose of assisting with U.S. litigation.

Mr. Mutual found the source code in his archives, and sought a protective order to protect the “never-public back end Source Code files”, the disclosure of which would “breach my trade secret rights”.

The B.C. court agreed that the source code should be made available for inspection under the terms of the protective order, which included the following controls. If you are seeking a protective order of this kind, this serves as a useful checklist of reasonable safeguards to consider.

Useful Checklist of Safeguards

  1. The Source Code shall initially only be made available for inspection and not produced except in accordance with the order;
  2. The Source Code is to be kept in a secure location at a location chosen by the producing party at its sole discretion;
  3. There are notice provisions regarding the inspection of the Source Code on the secure computer;
  4. The producing party is to test the computer and its tools before each scheduled inspection;
  5. The receiving party, or its counsel or expert, may take notes with respect to the Source Code but may not copy it;
  6. The receiving party may designate a reasonable number of pages to be produced by the producing party;
  7. Onerous restrictions on the use of any Source Code which is produced;
  8. The requirement that certain individuals, including experts and representatives of the parties viewing the Source Code, sign a confidentiality agreement in a form annexed to the order.

A Delaware court has since ruled that VideoShare’s two patents are invalid because they claim patent-ineligible subject matter.

Calgary – 10:00 MST

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“Wow Moments” and Industrial Design Infringement

By Richard Stobbe

An inventor had a “wow” moment when he came across a design improvement for cold-weather visors – something suitable for the snowmobile helmet market. The helmet maker brought the improved helmet to market and also pursued both patent and industrial design protection. The patent application was ultimately abandoned, but the industrial design registration was issued in 2010 for the “Helmet Face Shield” design, which purports to protect the visor portion of a snowmobile helmet.

AFX Licensing, the owner of the invention, sued a competitor for infringement of the registered industrial design. AFX sought an injunction and damages for infringement under the Industrial Design Act.  The competitor – HJC America – countered with an application to expunge the registration on the basis of invalidity. HJC argued that the design was invalid due to a lack of originality and due to functionality.

Can a snowmobile visor be protected using IP rights?

A registrable industrial design has to meet certain criteria: (i) it must differ substantially from the prior art (in other words it must be “original”); (ii) it cannot closely resemble any other registered industrial designs; and (iii) it cannot have been published more than a year before application for registration.

Visor-Capture

In AFX Licensing Corporation v. HJC America, Inc., 2016 FC 435 (CanLII),  the court decided that AFX’s industrial design registration was valid but was not infringed by the HJC product because the court saw “substantial differences” between the two designs. In summarizing, the court noted the following:

“First, the protection offered by the industrial design regime is different from that of the patent regime… the patent regime protects functionality and the design regime protects the aesthetic features of any given product.” (Emphasis added)

The industrial design registration obtained by AFX does “not confer on AFX a monopoly over double-walled anti-fogging face shields in Canada. Rather, it provides a measure of protection for any shield that is substantially similar to that depicted in the ID 964 illustrations, and it cannot be said that the HJ-17L meets that threshold.”

The infringement claim and the expungement counter-claim were both dismissed.

Calgary – 07:00

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BREXIT and IP Rights for Canadian Business

 
By Richard Stobbe

Yesterday UK voters elected to approve a withdrawal from the EU.  What does this mean for Canadian business owners who have intellectual property (IP) rights in the UK?

The first message for Canadian IP rights holders is (in true British style) remain calm and keep a stiff upper lip. All of this is going to take a while to sort out and rights holders will have advance notice of the various means to protect their rights in an orderly fashion. The British are not known for rash actions — ok, other than the Brexit vote.

Rights granted by the EU Intellectual Property Office (EUIPO), will be impacted, although the extent of the impact is still to be negotiated and settled. The UK’s membership in WIPO (the World International Property Organisation) is independent of EU membership and so will not be affected by this process. Similarly, the UK’s participation in the European Patent Convention is not dependent on EU membership.

Current speculation is that EU Trade Marks will continue to be recognized as valid in the EU, although such rights will not be recognized in the UK. This may require Canadian rights holders to submit new applications for those marks in the UK, or there may be a negotiated conversion of those EUIPO rights into national UK rights, permitting these registered marks to be recognized both in the EU and the UK.

Copyright law should not be dramatically impacted, since many of the rights of Canadian copyright holders would benefit from international copyright conventions that predate the EU era. However, UK copyright law was undergoing a process to become aligned with EU laws. For example, recent amendments to the UK Copyright, Designs and Patents Act 1988 were enacted in 2014 to implement EU Directive 2001/29, and the fate of these statutory amendments remains unclear at the moment.

Again, this won’t happen overnight.  Many bureaucrats must debate many regulations before the way forward becomes clear. That’s not much of a rallying cry but it is the reality for an unprecedented event such as this. The good news? If you are a EU IP rights negotiator, you will have steady employment for the next few years.

 

Calgary – 10:00 MST

 

 

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The IP Dimensions of 3D Printing: a recent decision

By Richard Stobbe

align-capture.PNGThere has been much speculation about the impact of 3D printing on the enforcement of IP rights. But very few decisions. Now, finally, a case you can sink your teeth into: ClearCorrect v. ITC, 2014-1527 deals squarely with a patent infringement allegation which focuses on 3D-printing technology.

This case relates to the production of orthodontic appliances known as teeth aligners. According to patents owned by Align Technology, their aligners “are configured to be placed successively on the patient’s teeth and to incrementally reposition the teeth from an initial tooth arrangement, through a plurality of intermediate tooth arrangements, and to a final tooth arrangement…” as listed in the ’880 patent. (As soon as you see the word “plurality”, you just know you’re reading a good patent.)

ClearCorrect, a competitor of Align Technology, produced aligners by means of 3D-printed digital models of aligners. ClearCorrect electronically transmitted digital files to its subsidiary ClearCorrect Pakistan (thus skirting the US patent rights) where digital models of the aligners were created and configured. ClearCorrect Pakistan then electronically transmitted these digital models back to ClearCorrect US, where the digital models were 3D-printed into physical models. From there, aligners were manufactured using the physical models.

The patent owner alleged that the transmission of these digital three-dimensional models should be stopped at the border, just like any infringing “article” would be stopped. Typically, an owner of US patent rights can employ the resources of the ITC to stop and seize articles – take for example, a piece of equipment or a consumer product – which infringes a US patent. This prevents the infringing articles from being imported into the US, even if they are manufactured overseas. In this case, the court had to decide if digital three-dimensional files constituted “articles” for these purposes.

In the end, the court considered articles to be “material things” and decided that the 3D-printable digital files were not “articles”. Thus, the ITC lacked jurisdiction to prevent the entry of these files into the US. (Exactly how it could prevent the transmission of the files is another matter entirely.)

Something to chew on while we wait to see if the decision will be appealed.

Calgary – 07:00 MT

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Amendments to Canadian Intellectual Property Laws …Delayed

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By Richard Stobbe

As an update to our earlier post, we note that the Intellectual Property Institute of Canada, in its most recent bulletin, is estimating that the anticipated changes to Canada’s intellectual property laws – including the overhaul of trademark laws under new Trademarks Regulations, as well as changes to the Patent Rules and Industrial Design Regulations – will not begin until late 2016. This pushes the patent law changes into late 2017, with the trademark amendments to be implemented by early 2018.

The impact of the Trans-Pacific Partnership (TPP) on Canada’s IP laws is still being assessed. If ratified in Canada, the TPP is expected to require further consequential amendments to Canadian laws – such as copyright term extensions.

Stay tuned. Just don’t hold your breath.

Calgary – 07:00 MT

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Infringing Sales Through Amazon

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By Richard Stobbe

A U.S. court recently decided that it would take jurisdiction over a seller who sold allegedly infringing products through online retailers such as Amazon.com. PetEdge Inc. a Massachusetts-based manufacturer, owns a patent and certain trademarks for its folding steps to enable pets to climb onto a bed.

Alleging patent and trademark infringement, PetEdge wanted to sue rival Fortress Secure Solutions, based in Washington State, a company with no operations, personnel or offices in Massachusetts.

To justify its lawsuit in Massachusetts district court, PetEdge argued – and the court agreed – that Fortress purposefully directed its sales to Massachusetts residents by making its sales through Amazon.com, and the infringement claims arose from those activities. Thus, the court took jurisdiction over the out-of-state defendant.

Lessons for business?

Canadian retailers should take note that if they use national retailers such as Amazon.com to sell products into the U.S., the use of this distribution channel could result in a local state court taking jurisdiction over the Canadian seller, under the same analysis applied to Fortress.

Thanks to Finnegan LLP for their link to the decision: PetEdge, Inc. v. Fortress Secure Solutions, LLC

Calgary – 07:00 MT

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Patent Update: Infringement and “Non-Infringing Alternatives”

By Richard Stobbe

If you are a patent owner, you are entitled to damages if someone infringes your patent. The measure of damages is compensatory damages, lost profits or a “reasonable royalty”. Is it fair for the infringer to say that the damages should be reduced because the infringer could have made the same sales using an available alternative that did not infringe the patent?

Marck sued its rival Apotex for patent infringement for sales of the drug lovastatin. The trial judge awarded Merck a total damages award of $119 million. In the decision in Apotex Inc. v. Merck & Co., Inc. 2015 FCA 171, the court considered Apotex’s argument about “non-infringing alternatives”. In a nutshell, Apotex was saying, okay, we infringed when we sold lovastatin using the patent process, but we could have made the same sales of lovastatin using another process that did not infringe. Therefore, the measure of damages should be lower, since the loss of profits could still have been suffered by the patent holder without any patent infringement.

The court describes it this way: “The principal issue raised on this appeal is whether, when calculating damages for patent infringement, it is relevant to consider the availability of non-infringing alternative products available to the infringer. For the reasons that follow I have concluded that, as a matter of law, the availability of a non-infringing alternative is a relevant consideration. The issue arises in the following context: Apotex has been found liable for patent infringement. On the issue of remedy, Apotex submits that the damages it is liable for should be reduced because it had available a non-infringing product that it could and would have used.” (Emphasis added) In other words, the patent holder’s sales could have been reduced simply by legitimate competition as opposed to infringement. In the end, the court agreed that non-infringing alternatives should be considered, but disagreed that there was any non-infringing alternative available in this case.

The damages award (one of the largest damage awards in Canada) remained in place and Apotex’s appeal was dismissed. This kicks open the door to arguments about using “non-infringing alternatives” to reduce damages in future patent infringement lawsuits.

Calgary – 05:00 MT

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Employee Ownership of Patentable Inventions

By Richard Stobbe

A startup in the oil-and-gas service sector sought to improve downhole well stimulation technology. After a few years, differences between the three founders culminated in the ouster of Mr. Groves, one of the founders. Mr. Groves was removed as President and then his employment was terminated. The company had, during those few years, filed for patent protection on a number of inventions which were invented by Mr. Groves. After his termination, he promptly sued his former employer based on a claim of ownership of those inventions which were created during the course of his employment.

In the recent decision in Groves v Canasonics Inc., 2015 ABQB 314 (CanLII), the court noted that the employment agreement between Mr. Groves and Canasonics included the following condition:

“The Company shall own any and all Copyright and Intellectual Property created in the course of Employment. Further, in the event there is a period when the Employee might be considered an independent contractor, all Copyright created and any Intellectual Property created shall be owned by the Company.” The Court had no trouble in concluding that the inventions were patented in the U.S. and Canada by their inventor, Mr. Groves in his capacity as an employee, who then assigned the inventions to Canasonics as the employer pursuant to terms of the employment agreement.

The lesson for business in any industry is clear: ensure that your employment agreements – and by extension, independent contractor and consulting agreements – are clear. Intellectual property and ownership of inventions should be clearly addressed. Get advice from experienced counsel to ensure that the IP legal issues are covered – including confidentiality, consideration, invention ownership, IP assignment, non-competition and non-solicitation.

Calgary – 07:00 MDT

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What, exactly, does industrial design protect?

By Richard Stobbe

What, exactly, does industrial design protect? The recent decision Zero Spill Systems Inc. v. Heide, 2015 FCA 115, reviewed this question. In the trial level decision, Zero Spill sued a competitor for infringement of Canadian Industrial Design No. 86,793 (the ’793 Design), based on the competitor’s sales of a similar-looking tray. The ‘793 Design protected a fluid containment tray for use in oil field operations. The Federal Court decided that there was no infringement because many features of the ’793 Design were in some way functional, and were therefore unprotectable under the Industrial Design Act by virtue of section 5.1(a) of the Act. The court of appeal reversed in part and clarified:

1. First, the Court made it clear that the right to sue for industrial design infringement depends on registration. Without a registered industrial design, there can be no basis for infringement. With a registered design, the law recognizes a presumption of validity. In other words, a presumption that the registered industrial design complies with the Act.

2. Secondly, it is worth noting that this presumption favours the owner, and places the onus on the alleged infringer to plead invalidity. If invalidity is not raised in the defence, and evidence is not raised on the issue of invalidity, then the court cannot make a determination of invalidity.

3. Third, the Court said clearly that “functional features of an industrial design may be protected by the Industrial Design Act.” Looking at section 5.1(a) of the Act, it is clear that features that are dictated solely by a utilitarian function of the article are ineligible for protection. Therefore, “features may be simultaneously useful and visually appealing.” The Court went so far as to say that Industrial Design Act would serve no purpose if it did not protect functional features. Only those features whose form are dictated solely by function are not protected.

Talk to experienced IP counsel at Field Law for advice on exploring the possible advantages of industrial design protection for your products.

Calgary – 07:00 MDT

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Trade Dress Updates: “Beauty” does not cut it

By Richard Stobbe

A recent decision of the US Federal Court (see: Apple, Inc. v. Samsung Electronics Co., Ltd. May 18, 2015) reviewed the jury decision in Apple’s famous infringement lawsuit against Samsung. You may recall that Apple’s 2011 lawsuit alleged that Samsung infringed Apple’s utility patent rights, design patents, and trade dress rights.

See our previous posts here Pinch and Zoom: Apple vs. Samsung and here Apple and Samsung: The Design Patent Wars Continue.

In the latest decision, the Federal Court left the design and utility patent verdicts untouched, but knocked down the finding of trade dress infringement, on the basis that trade dress cannot protect functional elements of the design.

The court observed that “Apple emphasizes a single aspect of its design, beauty, to imply the lack of other advantages. But the evidence showed that the iPhone’s design pursued more than just beauty.” In its conclusion, the court noted: “Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress … Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the ‘beauty’ of its design, even though Apple pursued both ‘beauty’ and functionality in the design of the iPhone.” Accordingly, the court reversed the jury’s verdicts on the unregistered and registered trade dress claims.

Watch for our upcoming updates on Canadian industrial design law.

Calgary – 07:00 MDT

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Patent Licensee’s Standing to Sue for Infringement

By Richard Stobbe

Although you might not think so, given the proliferation of litigation, courts are actually very particular about who can bring a lawsuit. In order for a plaintiff to file a lawsuit, it must have ‘standing’ or put another way, “A court may exercise jurisdiction only if a plaintiff has standing to sue on the date it files suit.” A recent US case examined when a patent licensee has standing to sue for patent infringement.

According to the US court in Luminara Worldwide, LLC v. Liown Electronics Co.: Even if the patent holder does not transfer formal legal title, the patent holder may effect a transfer of ownership for the purposes of standing in a lawsuit if it conveys “all substantial rights in the patent to the transferee.” One of those “substantial rights” must include an “exclusive license” to practice the patent in question. In the event that a licensee obtains an exclusive license and all substantial rights, then the licensee is effectively treated just like a patent owner, and has standing to sue for infringement in its own name.

When negotiating patent licenses, ensure that you pay attention to the grant of rights. Do you intend to grant rights to permit the licensee to sue in its own name, or should that right be reserved to the patent owner / licensor?

In Canada, compare the finding of the Federal Court in the copyright context in Milliken & Co. v. Interface Flooring Systems (Canada) Inc.(FC): “A non-exclusive licensee does not derive any right, title or interest in the copyright that could give it the standing to sue. It has no right to sue alone in a copyright infringement action.”

Calgary – 07:00 MST

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Apple Watch Design Patent

By Richard Stobbe

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As we reviewed in our previous post – Industrial Design as a Competitive Tool – the value of strategic industrial design protection (also called a “design patent” in the US) should not be underestimated.

Yesterday, the USPTO issued a registration for the Apple Watch, which provides protection for a term of 14 years in the US. US design patents which are registered based on applications filed after May 13, 2015 will have a 15-year term. That would be 10 years if registered in Canada, though this term is soon to increase to 15 years once the changes to the Canadian Industrial Design Act come into force. Remember, industrial design law in Canada protects the visual features of shape, configuration, pattern or ornamentation which are applied to a product. Functional elements are not protected. For protection, registration is required. While it is likely that Apple has filed a corresponding Canadian application, such a filing would most likely be based upon the US registration.

Will this be enforced against competitors? Probably – don’t forget that industrial design infringement formed the basis of successful recent claims by Blackberry (BlackBerry sued Typo Products LLC for infringement of U.S. Design Patent No. D685,775) and by Apple (Apple sued Samsung for infringement of Apple’s D504,889 design patent).

Talk to experienced IP counsel at Field Law for advice on exploring the possible advantages of industrial design protection for your products.

Calgary – 08:00 MST

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Privilege for IP Advisors in Canada

It’s budget time… therefore, time for changes to Canada’s IP laws!

No, there is no logical connection between the two, but that seems to be how the government functions these days (the last budget brought in major changes to Canada’s patent and trademark laws without any consultation, but hey, who’s keeping track of these things anyway?). The Intellectual Property Institute of Canada has noted that the latest budget bill has introduced statutory privilege for communications between IP advisors and their clients.

“With this,” IPIC notes, “Canadian businesses are better assured that they can speak openly with their intellectual property advisors in order to obtain the best possible advice, knowing that these conversations will not be revealed to their competitors through a court process or litigation.”

Calgary – 07:00 MST

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Amendments to Canadian Intellectual Property Laws by 2017

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By Richard Stobbe

The Canadian Intellectual Property Office has indicated that the amendments to the Trade-marks Regulations (and in particular the accession to international trademark treaties), the amendments to the Industrial Design Regulations and amendments to the Patent Rules will not be finalized until later 2016, and possibly as late as 2017.

A note on the CIPO website says that stakeholders will have the opportunity to comment when the proposed amendments/regulations are pre-published in Canada Gazette, Part 1 (expected late 2016). If the proposed regulations are published in late 2016, then the regulations will not be finalized until 2017 at the earliest.

 

Calgary – 07:00 MST

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Enforcing Keyboard Patents (BlackBerry v. Typo)

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By Richard Stobbe

A year ago, BlackBerry sued Typo Products LLC for patent infringement, based on the design of a snap-on keyboard. Typo’s physical keyboard was designed to attach to an iPhone, in order to mimic a BlackBerry-style QWERTY keyboard. The design was, in BlackBerry’s view, imitation that went beyond flattery and into infringement of U.S. Design Patent No. D685,775 and U.S. Patent No. 7,629,964 (Our original post Can BlackBerry Patent a Keyboard? gives more details).

A California granted a preliminary injunction (See: Ok… so BlackBerry Can Patent a Keyboard!) which took effect in April, 2014. Typo, after the preliminary injunction took effect, flouted the injunction by selling products, providing warranty replacements, and promoting products which were subject to the court order. In a judgement yesterday, the same California judge ordered Typo to pay BlackBerry $860,600 in sanctions, plus attorneys’ fees and costs incurred in connection with Typo’s contempt of court. See: BlackBerry Limited v. Typo Products LLC, Case No. 14-cv-00023-WHO for the full court order.The broader infringement issues have yet to be decided, and the litigation continues.

The interesting part of this case is how it illustrates the competitive use of IP protection for incremental improvements – in this case, an improvement to a basic QWERTY design (a design which has been around since the 1800s). It also illustrates the value of IP analysis in the competitive response by Typo. Their designers (undoubtedly working closely with patent counsel), have designed a “Typo 2” product which is not caught by the original injunction.  

Calgary – 10:00 MST

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