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Canada and Taiwan: A New Patent Prosecution Highway Pilot Arrangement

On February 1, 2018, the Taiwan Intellectual Property Office and the Canadian Intellectual Property Office executed a temporary Patent Prosecution Highway (PPH) pilot arrangement. Now if TIPO or CIPO approve an applicant’s claim, the applicant can ask the other office to process their respective claim faster. According to CIPO, the goal of this agreement is to improve “patent quality” and decrease “examination workload”.

One interesting factor about this arrangement is Taiwan is usually somewhat isolated from the international community with regards to intellectual property law. Taiwan is not signatory to the Berne Convention or the Madrid Protocol. Despite implementing a PPH arrangement with Canada, Taiwan is not a member of the Global PPH. Taiwan seems to be taking a step away from this general isolation.

Additionally, this PPH arrangement has come at a particularly geopolitically relevant time. In late 2017, the Government of Canada expressed interest in raising its profile in Asia. With a Patent Prosecution Highway between CIPO and the European Patent Office leading to an increase in respective patent filings, Canada might have felt a PPH with Taiwan would lead to a similar result. Taiwan is a major player in the semiconductor manufacturing and fabrication space and this PPH may enable Canadian companies to obtain intellectual property rights faster in this market.

On Taiwan’s side, the Taiwanese President wants Canada to support Taiwan’s accession to the Comprehensive and Progressive Trans-Pacific Partnership. They might feel joining the PPH signals their commitment to international agreements.

With all this in mind, it will be interesting to see what happens next.

 

Update those Privacy Settings! An Examination of Facebook’s Response to the General Data Protection Regulation.

In 2016, the European Parliament passed the General Data Protection Regulation (GDPR) which is set to come into effect May of this year. The GDPR will synchronize European data protection policies, strengthen privacy rights, mandate “data protection by design and default”, require corporations to inform EU citizens if their accounts have been hacked and make it easier for EU nationals to access their data. This legislation is particularly interesting for several reasons. Firstly if one violates these policies, the fine can be as large as 4% of the corporation’s global revenue.  Secondly this policy additionally applies to non-EU organizations, any entity that handles EU citizens’ data must comply. Who would be concerned by that information? Facebook.

Facebook has often come under fire from critics for having weak privacy protections. Facebook critics object to the difficulties some Facebook users have when trying to find privacy settings.  In response to the pending enforcement of this legislation, Facebook recently said that they will place all their privacy settings in one place, so people will find it easier to “manage their data”.

It will be interesting to see how the EU reacts to this statement. Will they feel it is enough or that it is not protective enough of their nationals’ privacy? Additionally with Facebook’s response in mind, it will be interesting to see how other corporations change their privacy policies.

 

Mum’s the word? Never mind: Analyzing a recent decision mandating the release of Uber’s business records.

Around two years ago, Broward County, Florida permitted Uber to operate at the local airport as long as they paid the respective county and kept monthly business records. Traditional taxi service companies, like Yellow Cab, were not pleased with this state of affairs and initiated a public records request. Uber stated these records were trade secrets and did not have to be disclosed. A Florida judge felt differently and ruled these documents were not trade secrets and did have to be made public. Uber is planning on appealing the decision.

That the case occurred in Florida is particularly relevant for several reasons. Florida has an interesting, seemingly contradictory, approach to both public records and trade secrets. The state mandates that government agencies must make their transactions public bar some exceptions which include trade-secrets. Interestingly, the Florida Statutes actually states that the disclosure of trade-secrets is a felony. Furthermore in 2016, Florida, with the desire to attract business, ruled some types of financial information were trade-secrets.

With this decision and Florida’s policies in mind, it will be interesting to see how companies react. While some of Florida’s protections for maintaining financial information’s confidentiality encourage businesses to operate in Florida or while this case frighten them?

Intellectual Property 2017: A Year in Review

It is hard to believe that 2017 is coming to an end but the New Year is just around the corner. Many would agree that 2017 was an eventful year and intellectual property law was no exception to this statement. Below, we will share some important, ground-breaking, funny or interesting intellectual property stories from 2017.

January 2017: The World Trade Organization finalized a 2005 TRIPS waiver that permits Third-World countries to import drugs made under “compulsory licensing” arrangements. The waiver required 2/3 of the WTO members’ support and in January 2017, they got these required votes. This decision highlights the balancing act between accessibility and ensuring an inventor’s right to profit.

February 2017: The European Parliament approved the Comprehensive Economic and Trade Agreement (CETA). Free trade agreements frequently present many questions about intellectual property in the international context and require changes to domestic legislation. Due to this trade agreement, Canada has to protect new geographical indications. One such GI is feta cheese.

March 2017: Due to public backlash, IBM donated a patent for the “out of office” email feature to the public. This technology is more than 20 years old. IBM’s donation highlights public opinion’s effect on challenging unpopular intellectual property.

April 2017: World Intellectual Property Day always falls on April 26! This day celebrates innovation’s many benefits.

May 2017: The UK Court of Appeal ruled that Kit Kat’s shape is not worthy of trade-mark protection. They decided it is not “distinctive” enough.

June 2017:  In AstraZeneca Canada Inc. v Apotex Inc., Canada’s Supreme Court abolished the promise doctrine. This doctrine stated a patent had to meet all its promises and this requirement was strict by international standards. What is interesting is the Court’s decision primarily focused on what constituted  “good law”. Little attention was paid to international standards.

July 2017: During the summer, students are probably not thinking about the textbooks but the Federal Court was. In Canadian Copyright Licensing Agency v. York University, the Federal Court ruled York’s policy that students could photocopy up to ten percent or one chapter of a textbook was not “fair dealing”. They argued this exception was “arbitrary”.

August 2017: India granted Pfizer’s anti-pneumonia drug, Prevenar 13, a patent. Critics, like Doctors without Borders, feared this decision would threaten accessibility because India is a major exporter of generic drugs.

September 2017: The European Court of Justice sent a fine, for an anti-trust violation, against Intel back to a lower court to review. Previously, the lower court decided Intel blocked competition. This case highlights broader, philosophical questions about how to regulate technology giants.

October 2017: In a case fitting for the season, Rasta Imposta sued Kmart for trade-dress and copyright infringement when Kmart unveiled a banana costume that was similar to Rasta Imposta’s costume.

November 2017: Counter counterfeiting. The European Commission instituted new policies to fight counterfeit items. Such policies include improving efforts to fight counterfeiting with other jurisdictions and creating a watch list of nations that are common sources of fake goods. With Canada ranking among the top source of fake goods, the Canadian government might be concerned about this watch list.

December 2017: Let’s block the copycats. The Shantou Intermediate People’s Court ruled that Bela, a Chinese company, copied Lego’s packaging and thus had engaged in copyright infringement. This decision came after China instituted a crackdown on intellectual property infringement. China might have wanted to fight frequent criticisms that they do not adequately protect foreign companies’ intellectual property.

These are just some of 2017’s fascinating news stories about intellectual property. We are all wondering what 2018 will bring.

Wishing our readers a safe and happy 2018.

 

No Copycats on this Block: Examining a LEGO Copyright Case

Recently, the Lego Group won a case against a Chinese company that copied their blocks. The Shantou Intermediate People’s Court ruled that Bela, the infringing company, “must stop copying the packaging and logos of LEGO products in the future, as this constitutes copyright infringement.”

The court’s decision is particularly significant because foreign companies have frequently complained that China does not adequately protect against intellectual property theft. With concerns about this perception, China implemented a crackdown on intellectual property infringement in September 2017. One of the crackdown’s specific policies was to fight copyright infringement. This decision is one of the court’s post-September 2017 earlier decisions.

Related, another Chinese office ruled in favour of a different foreign company that alleged trade-mark infringement. Santa Maria Novella, an Italian cosmetics producer, successfully argued trade-mark infringement before the Chinese Trade-Mark Office.

The individual cases and more general crackdown are most likely indicative of broader, economic trends. The Chinese Minister of Commerce, on December 11 2017, stated China is a “firm proponent” of international trade. With rulings favouring foreign companies, China might be encouraging them to invest or operate within China.

A Global Snapshot: 2016 Worldwide Intellectual Property Trends

The World Intellectual Property Organization recently released its 2016 intellectual property report. Statistics show that various types of  intellectual property filings have increased, with the increase in trade-marks being the greatest. Intellectual property trends often echo more general economic trends and related, the majority of entities filed their intellectual property in China.

For more detailed coverage, please refer to http://www.wipo.int/pressroom/en/articles/2017/article_0013.html

Countering Counterfeits: Examining the European Commission’s Approach to Combating Counterfeits

Today, the European Commission instituted new policies to fight counterfeit goods. Such policies include creating a list of nations that are common sources of counterfeit goods, improving connections with other jurisdictions to combat counterfeits, fighting the transportation of fake goods and restricting websites’ ability to profit from counterfeits.

Fake products’ financial impact most likely spurred the European Commission’s recent policies. In 2016, EU border authorities seized approximately 41 million forged goods and the European Union loses 8. 5 billion euros annually to counterfeit goods. Italian brands are among the world’s most frequently counterfeited brands.

It will be interesting to see what effect the European Commission’s new policies have on Canada. The USA and the European Union frequently criticize Canada for not effectively combating counterfeit goods. In 2009, Canada appeared on the American “Priority Watch List”. While Canada has subsequently tightened its anti-counterfeit policies, a 2017 OECD report stated that Canada was one of the major sources of fake items. Could Canada be appearing on any future EU watch lists?

 

New Changes to the MOPOP!

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.

Want to Write the 2018 Patent Exam? The Deadline to Register is Fast Approaching

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!

Revising the Trans-Pacific Partnership: What Does it Mean for Intellectual Property?

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.