Through the years there have been attempts to obtain Trademark Protection for what have come to be known as “unconventional” Trademarks, such as sound, scents and moving images. To date these “unconventional” Trademarks have not received a warm reception, as most applications for “unconventional” Trademarks are refused. On March 1, 2013 Bill C-56 passed first reading in Canada’s parliament. If passed, the proposed law will thrust these “unconventional” Trademarks into the mainstream. It recognizes Trademarks can consist of various signs or combinations of signs including: a word, a personal surname, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging, a sound, a scent, a taste, a texture, or a positioning of the signs. If an Applicant can show that their use of one of the aforementioned “signs” distinguishes their products or services from those of their competitors, protection can be obtained.
All patent offices are wrestling with setting rules as to when a “method” should be patentable. A method that has a series of computer implemented steps has been considered to be good subject matter for invention. On March 8, 2013, the Canadian Intellectual Property Office (CIPO) issued guidelines as to when a computer implemented invention is patentable. The guidelines require the Examiner to differentiate between inventions relating to “computers” as opposed to solutions to problems that use computers but are not “computer problems”. If the invention is intended to solve a problem that is not relating to the operation of a computer, the Examiner is to determine whether the use of the computer is essential or simply a convenience. The computer is not essential if the same result could be obtained (albeit more slowly) with pen and paper calculations.
In the Amazon.com case, the Court was highly critical of the Canadian Intellectual Property Office (CIPO) for not using “purposive construction” of patents. On March 8, 2013, CIPO issued new guidelines for Patent Examiners regarding “purposive construction”. Guideline 1 requires the Examiner to use a “fair, balanced and informed approach” to understand the background knowledge that existed at the time of the invention. Guideline 2 requires a problem and solution approach in which an invention is considered to be a solution to a practical problem. There being a “promise of invention” regarding invention providing a solution to the problem identified. Guideline 3 requires context for the meaning of the claims to be drawn from an understanding of the patent application as a whole. Guideline 4 requires essential elements to be identified in order to determine whether any essential elements are missing from the claim. Guideline 5 requires each patent to be a solution to only one problem. Where solutions are proposed to more than one problem, it is suggestive of more than one invention. These guidelines are a huge step forward. There is one troubling aspect. Where a problem and solution are not identified by the patent applicant (and there is no obligation to do so in section 80 of the Patent Rules), these guidelines require an Examiner to determine a “problem”, a “solution” and the “promise of the invention” regarding the invention providing a solution to a problem. There will undoubtedly be disputes in future over the Examiner’s interpretation.
The end objective for an established business is to develop and launch a product or service that captures substantial market share and returns a profit to the business. When considering patent protection, I strongly recommend that the established business invest in the best patent search available. The reason for this recommendation is that the business may reconsider its position if patent protection cannot be obtained and the business will certainly reconsider its position if the product infringes a patent owned by a competitor. Assuming that there are no negative indications in the search results, the business will file a well written patent application. It takes the patent office approximately 3 years to get around to reviewing the patent application. By this time the business knows whether the product has been successful. If the product has been successful, the patent agent is usually instructed to obtain the best possible patent protection without budget constraints being imposed.
An inventor who is trying to sell his idea to an established business has different considerations. The end of objective of the inventor is to enter into a successful negotiation with the established business. A patent without a buyer is of no interest to the inventor, regardless of how strong the patent may be. Unless the business shows an interest in the invention, money is tight and comes out of savings. For this type of inventor, I recommend the following strategy:
Step 1 – Do some searching. There are free databases online at the government patent offices. If some funds are available, purchase an hour of a professional patent agent’s time. A competent patent agent can determine within that hour if there are already a dozen or more patents similar to your invention. You do not need an exhaustive review at this stage, but would like to know if you are clearly wasting your time and your money before you move forward.
Step 2 – Figure out what you can safely say to a business to attract their interest without saying too much and giving them your idea for free. By way of example, a client of mine was able to indicate that he had developed a method and apparatus by which an unconscious disabled lineman suspended by his harness from a power pole could be lowered by a co-worker to the ground. As you can see, the description indicates what is achieved but not how it is achieved.
Step 3 – Approach a number of businesses until you find one that is sufficiently interested that they ask you to send more information and provide you with a name and email address that can be used as a channel of communication. Larger businesses will have established a review procedure, complete with “idea submission” forms that must be signed.
Step 4 – Have your patent agent file a “provisional” U.S. patent application or an “informal” Canadian patent application. With a provisional or informal patent application the rules are less stringent and it should cost you less money to get to the “patent pending” stage. Bear in mind that you still must ensure that the patent application fully describes the component parts that make up your invention, how they are assembled and how the invention may be used.
Step 5 – once protection is in place, provide the information to the business and indicate you will follow up after 30 days if you have not heard from them within that period. The business will indicate whether or not they are interested. It they are interested you are into a negotiation. If they are not interested, ask for the reason why they have decided not to move forward. A client of mine had an idea rejected because the business thought the bingo market was too small. The client then provided statistics on the actual size of the bingo market; the business reconsidered and decided to proceed. Another client had an idea rejected because the invention only suited one style of plastic wrap machine. The client then confirmed that the business would still be interested if the invention was modified to work with all styles of plastic wrap machine. While you await word from the business, bear in mind that the due diligence evaluation by the business usually takes three stages and leads to the preparation of a mini-business plan:
Stage 1 Marketplace evaluation – Is there a need for this product or service in the market? Is the market for this product or service large enough to present an opportunity? Who are the competitors? How does this product or service stack up against the competitors? Are there barriers to entry?
Step 2 Financial evaluation – Can the business make money? What are people prepared to pay? What are the costs associated with getting this product or service into the marketplace?
Step 3 – Legal evaluation – Here the business will be doing the best patent search available. They will also receive recommendations on how to structure a transaction with you, the inventor.
World Wide Web – When Do You Cross the line?
In this world of GOOGLE, FACEBOOK, and LINKEDIN, there is also a great deal of information on the web regarding individuals. In most cases, it is completely proper to access this information. For example, I had to examine a witness under oath a few months ago and availed myself of information that was on his FACEBOOK page to assist me. Recently the Ontario Court of Appeal was asked to consider where the line should be drawn with respect to intrusions into one’s privacy in the case of Jones v. Tsige. Winnie Tsige was the common law partner of the former husband of Sandra Jones. Ms Tsige was also a bank employee. Ms. Tsige used her position at the bank to repeatedly access online records that are not accessible to members of the public and inspect Sandra Jones private banking records. Presumably, this information was being passed along to Mr. Jones for use in a dispute with Mrs. Jones. The Court found this intrusion to have crossed a line. This is an unusual situation of an abuse of bank databases by a bank employee and may not have had much application to the rest of us, were it not for the fact that the Ontario Court of Appeal had to create a new cause of action of intrusion of privacy to give Sandra Jones a remedy. That remedy is now a precedent. The boundaries of the remedy will be set by future cases. It will likely be relied upon by celebrities against overly aggressive paparazzi. Should you be so unfortunate as to experience some intrusion into your privacy that is excessive, unwarranted and deserving of sanction, you should speak to your lawyer.
Eurocopter v. Bell Helicopter Textron Canada
I want to make you aware of the case of Eurocopter v. Bell Helicopter TextronCanadadecided earlier this year by Mr. Justice Martineau of the Federal Court relating to a patent on a skid type landing gear for helicopters. This case may alter the approach taken when drafting mechanical patents and when trying to “design around” mechanical patents.
In patents relating to pharmaceuticals, it is common to describe one or more specific compounds and their medicinal effect, but to claim a broader class of compounds expected to have a similar medicinal effect. To deal with this common disparity in pharmaceutical patents between what is described and what is claimed, Canadian courts apply what is referred to as the “sound prediction” doctrine, which essentially requires that there be a proper factual foundation and line of reasoning to support a prediction of a promised utility or effect. If there is not a proper factual foundation and line of reasoning in the patent application, the patent is invalid; even if the inventor turns out to be correct.
In the Eurocopter Case, the Judge has applied the doctrine of “sound prediction” to mechanical patents. This new development raises a warning flag for all patent agents involved in the protection of mechanical inventions. A good patent agent wants to protect not just the client’s invention, but also possible “variations”. In the Bell Helicopter case, the landing gear had a forwardly angled support member to reduce ground resonance. However, the patent also illustrated and described a “variation” of landing gear with a rearwardly angled support member. Under cross-examination representatives of Bell Helicoptor admitted that a landing gear with a rearwardly angled support member had never been built, nor had mathematical calculations been made to confirm that a rearwardly angled support member would work the same as a forwardly angled support member. There was nothing in the patent nor in the evidence before the Judge that provided a “sound prediction” for confirming that a rearwardly angled support member would work. For this reason, the Judge invalidated any claim to a rearwardly angled support member, whether or not it ultimately turns out to work.
Bell Helicopter was aware of the Eurocopter patent and set out to “design around” the patent. This “design around” was unsuccessful, as the Judge found that Bellhad used a forwardly angled support member and, therefore, infringed. Eurocopter asked for punitive damages to punish Bell Helicopter, in addition to any other damages to which they may be entitled. Punitive damages is an extraordinary form of remedy, not usually awarded in these types of cases. Mr. Justice Martineau broke new ground in granting the request and awarding punishment damages stating ”Punitive damages are required in this case not only to punish Bell but to deter others from acting in a similar manner. The fact that only twenty-one Legacy gears were used by or made for Bell is besides the point and does not take into account the reality of the length of time, the gravity and planification of the infringement. Bell’s overall conduct is highly reprehensible and constitutes a callous disregard for the rights of Eurocopter who was forced to institute the present action”. The amount of the punitive damages, as well as the amount of damages for the twenty-one landing gears Bell Helicopter manufactured, is to be determined in a damages hearing.
As it is common for patent agents to be hired to assist in “designing around” existing patents, this aspect of the Eurocopter case raises another red flag. It would appear that if one undertakes a “design around”, one had better ensure that it is done properly. This case is currently under appeal, but stands as Canadian law unless overturned.