Recently, the Canadian Intellectual Property Office revised the Manual of Patent Office Practice. The MOPOP is the patent examiners’ guide. The changes heavily focused on chapter 12, which deals with patent subject matter, but CIPO also made changes to chapter 17, which covers medical diagnostic devices. More relevant information is available at the Government of Canada website. It is good for entrepreneurs to be aware of these new changes.
The deadline to register for the 2018 Canadian patent exam is December 6, 2017. Potential test-takers must file a relevant form with the Commissioner of Patents, comply with section 12(a) of the Patent Rules and pay the mandatory fees. These applications must be in writing. Further details can be found on the Government of Canada’s website under “2018 Patent Agent Exam”.
Good luck to all applicants!
Recently, eleven member countries of the Trans-Pacific Partnership came to a consensus on the trade agreement’s “core elements”. The Trans-Pacific Partnership (TPP) is a proposed trade agreement between various countries bordering the Pacific Ocean that aims to reduce tariffs. If implemented, this trade agreement would represent 40% of global trade. With the USA’s departure from the agreement, Canada was in the position, along with Japan, of being one of the partnership’s leading members.
Prime Minister Justin Trudeau has expressed his desire to encourage more “progressive” trade agreements and Canada, being a major player at the TPP negotiations, was able to realize this goal. While the agreement is still in progress, Canada pushed for mechanisms to reduce carbon emissions, provisions extolling the importance of the environment, articles respecting organized labour and the other member nations agreed. Particularly relevant to the field of intellectual property, the original intellectual property standards section has been suspended.
Various activists groups were highly critical of the original intellectual property standards. Such standards included increasing the length of trade-mark, patent and copyright protections, mandating legal protection of trade-secrets and requiring patents for products with biologics. Critics argued that these protections went beyond TRIPS. For example, TRIPS only requires copyright protection exist for 50 years but previous draft versions of the TPP demanded copyright protection of 70 years.
While the results are still undecided, it will be interesting to see Canada’s impact on the intellectual property section. Canada is a bit of an intellectual property outlier permitting non-commercial user-generated content and having relatively shorter copyright protection. Will the TPP be shaped after Canada’s approach or will other nations demand more restrictive provisions? The future will tell.
Recently, Indonesia and Thailand announced they will being joining the Madrid Protocol. Indonesia plans to join in early 2018 and Thailand plans to join in late 2017. The Madrid Protocol is an international system that harmonizes trade-mark registration. If one files a Madrid Protocol trade-mark application in one contracting jurisdiction, they can receive protection in other signatory jurisdictions. After Indonesia and Thailand sign, the Madrid Protocol’s membership list will increase to 100.
A desire to promote foreign investment is most likely driving these nations’ decisions. According to Bloomberg, Indonesian President Widodo, after previously adopting a more domestic-focused outlook, is now trying to encourage foreign investment. President Widodo specifically stated that, “Indonesia is open for investors.” Somewhat similarly, the World Bank informed Thailand that Thai economic uncertainty has motivated some foreign companies to look to other nations. Foreign investors might be comforted if nations are party to international trade-mark treaties. They would not have to separately file trade-marks in jurisdictions that would have different or potentially tricky policies.
Additionally, these decisions highlight the growing international harmonization of intellectual property policies. While there is still significant national variation, the international treaties have increasingly created minimum intellectual property standards since the late 20th century. Related, WIPO’s membership has been growing and in autumn of 2017, several more jurisdictions joined WIPO.
With these trends in mind, it will be interesting to see if more countries follow suit and join the Madrid Protocol.
Recently, DuPont Pioneer and the Broad Institute signed an agreement permitting non-exclusive licensing of CRISPR-Cas9 for agricultural products. CRISPR-Cas9 is an efficient genome-editing technology in which a guide RNA “leads” an enzyme, called Cas9, to a specific gene. CRISPR-Cas9 is generating much interest in the scientific community because it shows potential in treating various genetic conditions and is less expensive than other gene-editing methods.
The food industry is another community interested in CRISPR-Cas9. Such producers believe that CRISPR-Cas9 can contribute to longer-lasting foods. Explaining the reasoning behind non-exclusively licensing CRISPR-Cas9, DuPont Pioneer President Neal Gutterson said he wants to encourage access to healthy, affordable foods and increasing access to CRISPR-Cas9 is part of the “greater good”.
DuPont Pioneer’s actions seem to be part of a broader trend; creating patent policies that address frequent criticisms of patents. Critics argue that patents threaten accessibility to essential products, especially in developing countries. DuPont Pioneer wants to increase the availability of nutritious, inexpensive food and food insecurity affects 800 million people, globally. Similarly, drug maker GlaxoSmithKline provides generic drug makers with licences in exchange for small royalties in lower middle-income jurisdictions.
It will be interesting to see the result of this decision. Will there be reduced food insecurity? Will criticisms of CRISPR-Cas9 affect the decision? Will patent-holders of other gene-editing techniques adopt similar policies?
Recently, the World Intellectual Property Organization ended its annual Assembly meeting. Among the floated proposals, there was one that was particularly newsworthy. WIPO members agreed to work on developing a “legal instrument” that protects genetic knowledge, traditional knowledge and “traditional cultural expressions”.
WIPO’s statement is particularly important because the relationship between intellectual property laws and traditional knowledge has been tense. Traditional knowledge is frequently communally-owned but Western intellectual property regimes mandate individuality. As the name suggests, traditional knowledge is centuries-old whereas most intellectual property regimes necessitate originality. Sadly, this state of affairs has often led to parties stealing traditional knowledge or not properly compensating holders of traditional knowledge. In this regard, WIPO’s move is symbolic.
It will be interesting to how WIPO devises the legal instrument. Globally, various traditional knowledge initiatives include sui generis policies, like India’s traditional knowledge database, benefit-sharing programs, or certification marks. WIPO is planning to do further research into such endeavours’ success.
Some questions arise. Would success in one jurisdiction indicate global success? Similarly, is an international traditional knowledge database feasible? How would non-state actors react?
While many questions remain,there is one certainty. The international community is taking greater steps to protect traditional knowledge and that is ideal.
Everybody loves banana costumes but not when they are allegedly infringing a competitor’s intellectual property. Recently, Rasta Imposta, a designer of banana Halloween costumes, sued Kmart for copyright infringement and trade-dress infringement of their banana costume. From 2008-2016, Kmart sold Rasta Imposta banana costumes but the two corporations failed to sign an agreement for Halloween 2017. When a similarly styled banana costume started appearing in Kmart stores, Rasta Imposta was not pleased and subsequently sued.
While a seemingly humorous case, Rasta Imposta’s case touches upon a larger issue. This issue is the relationship between copyright protection and clothing. The United States does not protect “useful articles”, so clothing is generally exempt from copyright protection. However, there are exceptions to this policy; one such exception is designs on a “useful article”. For example, copyright law may extend protection to a fanciful pattern on T-shirt. Additionally if an entity has both artistic and utilitarian functions, copyright law will only protect the artistic functions.
Particularly interesting, this lawsuit occurred after the pivotal 2017 case of Star Athletica, LLC v Varsity Brands, Inc. In that case, the Supreme Court of the United States argued copyright law applied to designs on a cheerleader outfit. Copyright law protects a design that is “separable” from the utilitarian article and if that “separable” article is “protectable work”.
It will be interesting to see how the courts apply this novel precedent to a banana costume. Will they distinguish or not distinguish this lawsuit? In fitting with the season, will the plaintiff get the treat of a successful lawsuit?
Recently, Allergan, a pharmaceutical company, transferred its Restatis patents to the St. Regis Mohawk Tribe for $13.75 million and annual royalties. Allergan’s deal was motivated by the desire to avoid patent invalidity challenges in the Patent Trial and Appeal Board (PTAB). One might ask: how does transferring a patent to a Native tribe protect it from invalidity claims? The answer is sovereign immunity.
The United States of America classifies Native tribes as “sovereign” and state courts, generally, will not hear civil suits against Native tribes. The few exceptions to this policy include when a tribe has “clearly waived” immunity and when the court has “unequivocally” permitted the civil suit. With a focus on sovereignty, the St. Regis Mohawk Tribe argues the PTAB must cease their inter partes review of Restatis patents. Allergan is not the first organization to take advantage of sovereign immunity; universities have also declared themselves as sovereign entities.
For several reasons, this case is quite significant. Firstly, the subject matter is novel and it will be interesting to see how the Board responds to the Tribe’s request. Some recent decisions seem to suggest the Board will listen to the St. Regis Mohawk Tribe. In Michigan v. Bay Mills Indian Community, the Supreme Court of the United States threw out a suit from the state of Michigan that attempted to bar a casino on a reserve. Conversely, the Supreme Court has issued decisions that seem to limit Native national sovereignty but the facts of those cases are highly different. In the 2017 case of Lewis v. Clarke, the Court ruled that a suit, against an individual employed by a tribe for an accident occurring off-reserve, could be brought in a state court. Will the present case be a decision that limits sovereignty or expands it? Will the intellectual property element affect the Board’s response?
Additionally, there are potentially competing rights in this case. Opponents of Allergan’s move argue it threatens accessibility to medicines. Some argue this transfer could empower an Indigenous community where unemployment is high and that sovereign immunity is a centuries-old key principle of international law. Sovereign immunity versus accessibility is a tricky debate to navigate. This is especially true when the sovereign immunity of an Aboriginal group is implicated.
One thing is certain. Whatever the Patent Trial and Appeal Board rules, many people will have strong opinions about the ruling.
On September 18, 2017, China announced a tough crackdown on intellectual property infringement. With the Chinese government assigning various bodies specific roles, the crackdown aims to fight knock-offs, combat copyright infringement and fight trade secret theft.
Like many new policies, this policy is probably related to larger economic and geopolitical trends. China is concerned about declining foreign investment because foreign investment in China dropped by six percent. The South China Morning Post notes one oft-cited reason for declining investment is foreign investors’ fear that their intellectual property will not be protected.
Additionally, various governments have expressed concern about China’s approach to intellectual property. While Canada is contemplating signing a free trade agreement with China, Canada has expressed concerns about China’s protection of intellectual property. More stridently, American President Donald Trump has ordered a trade investigation into China. Since Trump will probably be visiting China this year, this move may be an attempt to soften Trump’s stance.
What is particularly interesting is some foreign companies’ responses to this crackdown. The day after China announced their crackdown, Hitachi Metals, a Japanese company, stated a Chinese company violated their intellectual property. Will these changes result in more cases like Hitachi Metals? Only time will tell.
Innovate LLP is pleased to welcome Margot Davis as an articling student. With a strong background in science, Margot’s past work experience includes volunteering at a psychology laboratory and she obtained an Honours Bachelor of Science with Distinction from the University of Toronto. She regularly volunteers with “Lawyers Feed the Hungry”. We are excited she will be a member of our team!