Canada
- IP Cases
Incorrect
payment of patent fee:
Canadian
courts have continued to take an unforgiving approach where patent
fees are eroneously paid at the small entity rate. Although
the Commissioner allowed a top-up of the filing fee to the large
entity rate, the court found that the prescribed fee was not paid
within the applicable time limit, resulting in the irrevocable abandonment
of the application. Although Bill C-29 provides a one-year window
in which the incorrect payment of a fee may be corrected, regardless
of when the incorrect fee was paid, the legislation, however, does
not provide any continuing relief for incorrectly paid fees and
to ameliorate the continued strict effect of Canadian patent fee
payment requirements.
Pledge
to Africa Act:
The Act
implements the decision of the World Trade Organization (WTO) General
Council on the TRIPs Agreement and Public Health which allows any
member country to export to developing countries patented pharmaceutical
products manufactured under compulsory licences. Apart from
the requirement, it will not be difficult for the licensed manufacturer
to obtain a compulsory licence under the Act. The Act does
not grant patentees any opportunity to provide submissions to the
Commissioner for the grant of a licence but does provide patentees
with some protection from potential abuses.
Utility
and the doctrine of sound prediction:
The
Supreme Court of Canada ruled that a patentee can establish the
utility of subject matter not made or tested at the relevant date
on the basis of a "sound prediction". In order for
a prediction to be sufficiently sound, the patentee must demonstrate
that there is (1) a factual basis for the prediction, (2) an articulable
line of reasoning from which the desired result can be inferred
from the factual basis, and (3) proper disclosure. The Federal
Court, however issued two different decisions for a sound prediction
somewhat differently.
Patent
assignments and competition law:
The Federal
Court of Appeal addressed the intersection between patent
law and competition law in Canada, and ruled that an assignment
of patents could constitute a conspiracy in contravention of the
Competition Act if the assignment transfers more market power than
is inherent in the patents assigned. As a result of this decision,
every assignment of patents must be reviewed for competition law
issues particularly where the assignee owns other related patents.
Trade
Mark Law:
In a decision,
the Supreme Court of Canada ruled that trade mark law cannot be
applied to prevent competitors from selling a product that look
and function like another company's blocks. The Court suggested
that there is a presumption that the features claimed in a patent
are purely functional. The Court reasoned that it would be
inappropriate to extend trade mark protection to those features
as it would result in "overextending monopoly rights on the
products themselves and impeding competition, in respect of wares
sharing the same technical characteristics". In addition,
where certain features previously benefited from patent protection,
the Court presumes that the features are primarily or purely function,
and therefore are not subject to trade mark protection.
Copyright
Law:
In a copyright
infringement action which was brought in the Federal Court by way
of a motion seeking disclosure of the users' identities from their
internet service providers, the motions judge dismissed the motion
on the grounds that the plaintiffs had failed to submit adequate
evidence to demonstrate the need for disclosure outweighed the privacy
concerns involved. In his reasons, the motions judge noted that
the plaintiffs had failed to make a prima facie case for infringement,
saying that neither downloading nor placing a file in a shared directory
where others could access amounts to copyright infringement in Canada,
since downloading provides that sound recordings made on to an audio
recording medium for private use do not constitute copyright infringement.
Amendments
to the Canadian Copyright Act:
In June
22005, the Government of Canada introduced a Bill to amend the Copyright
Act. The amendments form part of the ongoing reforms of the
Copyright Act and addressed issues arising from the internet.
Among the proposed amendments, provisions are made to implement
the WIPO Copyright Treaty and the WIPO Performances and Phonograms
Treaty which deal with issues arising from the dissemination of
copyright works over the internet. The amendments also exempt
ISPs from liability for infringement so long as they are only acting
as intermediaries.
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queries relating to our services and costs, please feel free to
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IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
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