Amendments to the Trade-mark Act and Patent Act, Patent Rules and Trademark Regulations are being made as of November 5, 2018 to amend the procedures on CIPO holidays and force majeure events, and as of June 2018 to patent reinstatements .
Tag Archives: Patents
Lots of Patents
USPTO granted patent No. 10,000,000 entitled, “Coherent LADAR using intra-pixel quadrature detection” to Raytheon today. CIPO allocated patent application 3,000,000 in April of this year.
Happy World IP Day
A number of interesting announcements on World IP Day. The focus of the international focus on IP was on Powering change: Women in innovation and creativity. In Canada, the government announced a National IP Strategy having a number of components including $85.3 million over five years to help Canadian businesses, creators, entrepreneurs and innovators understand, protect and access IP. Announced for IP tools, was more efficient dispute resolution and tariff setting at the Federal Court (more judges) and Copyright Board through more funding, formation of a patent collective, improvements to IP used in standards-setting processes, and an IP-specific marketplace. Announced legislative changes include:
- establishing minimum requirements for patent demand letters;
- excluding settlement demands from the copyright Notice and Notice regime;
- Requiring ‘use’ of a trademark to enforce it within the first three years;
- affirming the patent research exemption;
- clarifying the role of standard essential patents;
- allowing continued use of IP by licensees in liquidation proceedings; and
- creating a College of Patent and Trademark Agents to regulate agents.
In Europe, the UK announced today that it had ratified the Unified Patent Court (UPC) Agreement.
IPRs
The United States Supreme Court issued its decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (link), where a majority found that the USPTO’s inter partes reviews (IPRs) were constitutional. In the proceeding, the petitioner had argued that actions to revoke a patent must be tried in an Article III court before a jury, rather than through an administrative procedure.
3,000,000
CIPO announced today that it has allocated patent application number 3,000,000. This is the one-millionth ‘New Act’ patent application.
Certificate of Supplementary Protection
The first Certificate of Supplementary Protection has issued, providing two years of protection. Twelve applications for certificates of supplementary protection have been filed since the regulations came into force in September 2017. Continue reading Certificate of Supplementary Protection
PMPRB
Proposed “Regulations Amending the Patented Medicines Regulations” have been published in the Canada Gazette for a 75 day consultation. According to the Regulatory Impact Analysis Statement, “This proposal would amend the Patented Medicines Regulations (“Regulations”) so that the PMPRB’s regulatory framework includes new price regulatory factors and patentee price information reporting requirements that will help the PMPRB to protect Canadian consumers from excessive prices.”
IPRs
Today, the United States Supreme Court heard oral arguments in Oil States v. Greene’s Energy on the propriety of inter partes review (IPRs). One of the issues before the court was whether IPRs violate the U.S. constitution by extinguishing private property rights through a non-Article III forum without a jury.
CETA
Changes to the Patent Act, Patent Rules, Patented Medicines (Notice of Compliance) Regulations and the Trade-marks Act, and new Certificate of Supplemental Protection Regulations come into force on September 21, 2017 as part of Canada’s implementation of CETA. Today, Health Canada released guidance documents on applying for Certificates of Supplementary Protection and on Health Canada’s administration of the PM(NOC) Regulations.
Life after Insolvency
The following article, Life after Insolvency, was originally published in The Lawyer’s Daily, March 16, 2017:
Intellectual property rights can be the lifeblood of a company. The insolvency of a licensee or licensor can cause havoc, or at least significant uncertainty with intellectual property rights. Who can continue to use the intellectual property rights, what royalties flow, and can intellectual property rights be licensed or used by someone new are all questions faced during an insolvency.
During an insolvency under the Bankruptcy and Insolvency Act (BIA) or Companies’ Creditors Arrangement Act (CCAA), there is significant power to disclaim or resile from contracts, particularly executory contracts. Since at their core, intellectual property licence agreements are contracts, the terms or the existence of a licence may be altered during this process.
One of the leading cases on this issue, decided prior to the amendments discussed below, held that an exclusive licence to use certain technology “only creates a contractual agreement as between the parties” and does not provide any property interest so assets could be transferred to a third party free and clear of the licence terms.
Both the BIA and CCAA were amended in 2009 to include provisions relating to intellectual property but the provisions had not yet received much judicial discussion. Both the BIA, in s. 65.11(7), and the CCAA in s. 32(6) have the same language: “If the [company/debtor] has granted a right to use intellectual property to a party to an agreement, the disclaimer or resiliation does not affect the party’s right to use the intellectual property — including the party’s right to enforce an exclusive use — during the term of the agreement, including any period for which the party extends the agreement as of right, as long as the party continues to perform its obligations under the agreement in relation to the use of the intellectual property.”
The Saskatchewan court in Golden Opportunities Fund Inc. v. Phenomenome Discoveries Inc. 2016 SKQB 306 was required to determine if certain technology of a debtor could be transferred free and clear by a court-appointed receiver to a third party. The licensor of the technology to the debtor sought to stay the vesting order until its interests in the property of the debtor that were being sold, could be determined.
The court found that the provisions of the BIA and CCAA did not apply to court-appointed receivers stating that “licences are simply contractual rights.” The aggrieved licensor could pursue monetary claims against the debtor but had no property rights in the assets being vested to the third party and the third party had no obligation to license back to the licensor improvements made on the technology. The terms of the licence would not apply to the third party.
The court distinguished between on the one hand the situation of a court-appointed receiver, and on the other proposals to creditors and arrangements under the CCAA where the above statutory language would apply.
Also last year, the Quebec Court of Appeal in 7158548 Canada Inc. c. Desbiens 2016 QCCA 306, referring to the BIA as well as the terms of the licence agreement relating to assignments, required a purchaser of assets through a proposal to creditors to honour the terms of a patent licence agreement and continue to pay royalties.
In this case, the court also recognized that the purchaser was not a third party but had a common principal with the insolvent company.
Even where the intellectual property provisions of the BIA and CCAA do apply, there is some uncertainty as to what is meant by the term “intellectual property” as that term is not defined. There is also uncertainty relating to the scope of the “right to use the intellectual property” referred to in the legislation. Patent licences, for example, typically include the right to make, use and sell the invention, not just the “use” specified in the legislation. Similarly, if the licence included the right of the licensee to grant further sublicences, would those rights continue?
Often, intellectual property licences are wrapped up into larger contractual arrangements, perhaps involving ongoing technical support, the sharing of improvements, or ongoing maintenance of the intellectual property. If only the portion of the contract relating to the “use of the intellectual property” is covered by the legislation, this may leave the licensee in an undesirable situation if other aspects of the contract are disclaimed. Also, it may leave the parties unclear as to what is required to “perform its obligations under the agreement in relation to the use of the intellectual property” if, for example, the royalty payment covers multiple aspects, only one of which is the intellectual property.
For companies entering into licence agreements, particularly where there is a concern of an insolvency by one of the parties, these sections of the BIA and CCAA should be reviewed having regard to the licence and contractual terms. According to the jurisprudence, if ownership in the intellectual property has been transferred, the transfer cannot be disclaimed during the insolvency. Therefore carefully structuring the intellectual property ownership is one way to provide additional certainty in the event of an insolvency. If access to source code is important to the licensee, it may be advisable to have a copy placed into escrow as part of the licence arrangement.
Insolvency, restructurings and proposals always involve uncertainty but for third party licensees who have relied on a long-term licence arrangement, the effects can be devastating. Intellectual property licence agreements have been recognized as being different than other contracts giving some reassurance that the licences will be recognized during an insolvency.