Patent agents are not stifling Canadian inventors

We are indebted to Robert Barrigar for permitting us to post this article that was published in the Globe and Mail on March 8, 2017.  Mr. Barrigar is past-president of the Intellectual Property Institute of Canada (IPIC) and was registered as a Canadian and U.S. patent agent and served four years on the Patent Agents Examining Board.

Innovation is a hot topic these days, but often not fully understood. The role of patent agents is one of the most misunderstood subtopics, and a recent argument in these pages (of the Globe and Mail) that patent agents are impeding innovation in Canada only served to cloud the waters. While the author recommended government action to redefine the regulation of Canadian patent agents, he failed to recognize that the Intellectual Property Institute of Canada (IPIC) had previously, on its own initiative, recommended such to the federal government. Canadian patent agents obtain protection for the inventions of Canadian clients; they do not present obstacles, except charging for their services.

It is important to understand the difficulties faced by Canadian innovators. Our market is small compared to that of the United States. For this reason, it is often more difficult for a Canadian innovator to receive financing for obtaining and exploiting a patent than is the case in the United States. Canadian innovators typically prefer to obtain U.S. patents as a first priority, and Canadian patents, at best, a second priority. Accordingly, a Canadian patent agent has to understand the requirements of U.S. patent law and practice, as a Canadian agent will often be charged by a Canadian client with writing and prosecuting a U.S. patent application. The principal challenges to Canadian innovators – financing, marketing, competition – do not involve Canadian patent agents.

A typical Canadian patent agent has a university degree in science or engineering, and an aptitude for effective communication about technical matters relating to clients’ inventions. Historically, the Canadian patent profession has been governed primarily by the Patent Act and Patent Rules, and secondarily by IPIC. At the present time, this set of relationships is under review both by IPIC and the federal government.

The patent profession is sufficiently small that no specific patent-agent-oriented university accreditation is available for individuals who plan to become professional patent agents – they must rely upon their work experience to qualify for writing the patent agents examinations, which they must pass in order to become registered. They need not have been apprenticed to a registered patent agent, but having had such as a mentor and tutor is clearly advantageous.

The members of the Examining Board who set and mark the examinations that must be passed for registration as a Canadian patent agent are appointed by the Commissioner of Patents. The chairperson of the Board and at least three other members must be professional employees of the Patent Office.

When I served on the Examining Board, the pass rate was appreciably below 50 per cent, partly due to the writing of the examinations by lawyers of limited experience; inadequate technical analysis; lack of familiarity with applicable statutory and case law and regulations; and inadequacy of written expression. It is clearly not in the public interest to accept as members of the patent profession those who cannot pass the patent agents examinations. Canada does not need consultants who fail to comprehend the complexities of patent practice nor those who draft inadequate documents. Perhaps the most underrated desirable qualification for a patent agent is adequacy of expression. Unfortunately, not even a PhD nor a law degree guarantees that this quality is among those obtained through an individual’s education. This reflects a deficiency in Canadian education at lower levels.

It is important to note that inventors may represent themselves before the Patent Office; they do not need to retain a patent agent. But they would be well advised to do so, as serious and sometimes irreversible errors can easily be made by untutored inventors. Chances are that any consultant who attempts to draft a patent application without having been registered as a patent agent will be at risk of drafting a legally invalid or economically useless or inferior document. And any such consultant who attempts to respond to a Patent Office Examiner’s objection will face the same set of problems.

It is important to note that patent agents are not, per se, advocates for clients’ inventions. Clients may wish to obtain and enforce their own patents, but they may wish to invalidate others’ patents or obtain opinions so that they do not infringe such. Subject to avoidance of conflicts of interest, patent agents must be prepared to assist clients to obtain any of these objectives.

Beware When You Advertise

A decision rendered by the Ontario Supreme Court on September 26, 2016 in a dispute between Bell Canada (Bell) and Cogeco Cable Canada (Cogeco) could have potential ramifications for your business and the way that you advertise. Bell and Cogeco directly compete for Internet customers in many Ontario communities. Cogeco commenced an advertising campaign in August 2016 using the slogan “the best Internet experience in your neighbourhood”.  Apparently, this slogan had the desired effect with customers gravitating to Cogeco (advertising works).  However, Bell offered packages with internet download speeds of up to 940 megabytes per second (Mbps), whereas the highest download speed offered by Cogeco was 250 Mbps.  Bell commenced legal proceedings under section 52(1) of the Competition Act, which reads:
52 (1) No person shall, for the purpose of promoting, directly or indirectly, the supply or use of a product or for the purpose of promoting, directly or indirectly, any business interest, by any means whatever, knowingly or recklessly make a representation to the public that is false or misleading in a material respect.
Historically, Courts have been slow to intervene in disputes over advertising in part because it is understood that advertising often involves a certain amount of exaggeration, referred to as “puffery”.  Bell argued that the claim of “best Internet experience” required substantiation.  Cogeco argued that there were a number of factors, other than just speed, that go into how a customer experiences their service and the reference to “best” should be considered to be mere “puffery”.   After considering the facts, the Court granted Bell an injunction, which forced Cogeco to discontinue its advertising campaign.  The Court did so on the basis that the public is not sophisticated in these matters.  Cogeco had altered the marketplace by claiming to be the “best”.  The representation made by Cogeco to the public was false and misleading.  There is no question that the strong public response to the advertising campaign was a factor in the Court’s decision to grant the injunction.  If you are launching an advertising campaign, you must be cognizant of the types of representations you are making in your advertising.  If your competitor launches an effective advertising campaign with representations that you consider to be false or misleading in a material respect, you may have recourse.

How Does Your Website Rate?

I like to spread the word when I think someone is doing something right.  Today I am excited about a communication I received from the Business Development Bank of Canada (BDC). I am on the email list for the BDC and receive notices regarding various articles, some of which I download and read.   I received an email offer for a free e-book entitled “Social Media – A Guide for Entrepreneurs”. I know I should improve my knowledge of and activity in Social Media, so I followed a link to the BDC website and signed up for the e-book.   The BDC website confirmed that an email had been sent to me with a link to download my free email.  Then the part I am really excited about occurred.  A message popped up on the BDC website offering a free website evaluation. I always like any kind of objective evaluation.  Your golf score objectively measures whether your golf game is improving.  A metronome objectively measures whether you are keeping time when playing music.  Now here was a tool for objectively measuring the website experience at the Thompson Cooper website.  The resulting report we received from the BDC for the tcllp.ca website was divided into four parts:  Accessibility (to mobile devices), Marketing, Website experience, and Technology (how well designed the website is).  In some areas, such as accessibility to mobile devices and date last amended (currency), the tcllp.ca website scored 10 out of 10.  However, in the Marketing area, the score was a dismal 4.3, with scores of 2 out of ten for meta-tags and 0 out of 10 for feeds (whatever they are).  Clearly there is work to do.  I would like to thank the Business Development Bank of Canada for the free e-book (which I intend to read).  I would also like to thank the BDC for the website evaluation which opened my eyes regarding the shortcomings of our website.   If you like free stuff, as I do, I urge you to go to get on the BDC email list.  For the things that you have missed, articles, social media book, and website evaluation, follow the link to the BDC website and check it out. https://www.bdc.ca/en/articles-tools/entrepreneur-toolkit/business-assessments/pages/free-website-evaluation.aspx

2016 Annual Meeting of the Intellectual Property Institute of Canada (IPIC)

convention-brochureOne can gain an understanding of issues that the profession is wrestling with by reviewing the titles of the presentations from the 2016 IPIC annual meeting.  Continuing Professional Development: “The Skill Set of the IP Practitioner of the Future – Where will IP be in 20 years?”  Trademarks: “Trademarks in Metatags and Keywords – A summary of the Current State of the Law in Canada as Contrasted with the U.S. and Europe”, “Brand Boot Camp”, “Best Practices before the Trademark Office”.  Patent Issues: “Patent Issues that Keep In-House Counsel Up at Night”, “Patentability:  Dealing with Challenges in IT and Life Sciences”, “Best Practices before the Patent Office”.  Online Issues: “Managing Online Content: Tips, Traps, and Tariffs for IP Practitioners”.  Rights Issues: “Publicity Rights: Guidelines for Giving Clients Practical Risk Assessments”.  Litigation Issues: “Remedies – Quick Results in Trademark Cases: Myth or Reality”, “Top IP Cases of the Year”, “Appellate Advocacy in Specialized Area of the Law”.
Many of the above issues I deal with on a regular basis and have written articles about over the past year.  However, the presentation of “Futurist” Jeremy de Beer was of general application and may be useful to the reader.  Mr. de Beer described an approach to predicting the future using a “grid”.  He creates this grid by placing a first line that represents a trend that one can see today, such as automation (self driving cars, smart homes with remotely controlled appliances).  One end of the line represents the present and the other end of the line represents the future, if the trend continues. He then places a second line crossing the first line at 90 degrees to create his “grid” having four quadrants.  The second line represents a second trend that one can see today, such as the increasing capability of smart phones. Again, one end of the line represents the present and the other end of the line represents the future, if the trend continues.  A first quadrant will predict what happens if neither trend continues, a second quadrant will predict what happens if the first trend continues and the second does not progress, a third quadrant will predict what happens if the second trend continues and the second trend does not progress, a fourth quadrant will predict what happens if both trends progress.  Mr. de Beer indicates when you extrapolate what may happen some of your “predictions” (especially in the fourth quadrant) should appear to be ridiculous.  If this does not occur, you are not pushing the trend far enough. Self driving cars and everyone carrying miniature computers that connect to the internet would have sounded ridiculous 20 years ago. It is not viewed as being ridiculous today.

 

Comment:  I received some comment from Keith Sketchley that I felt should be shared.  He indicated that one should beware of overly simplistic methodologies.  He identified two fundamental flaw, in the futurists approach that he described as follows:

1. Trends do not continue indefinitely, in part because people change behaviours. In technical things that’s called “feedback”.  For example, increasing prices of a product will be met by reduced consumption in response to prices, demand drops, suppliers lower their prices.
2. It is difficult to predict new products and services, and some predictions fall far short. For example, a professor gave a Mr. Smith a C, sneering at his idea that people would pay a premium for assured delivery timing of documents. Mr. Smith went on to start an industry, he called his company “Federal Express

New Developments in the Canadian Music Business

SOCAN (the Society of Composers, Authors and Music Publishers of Canada) collects royalties based upon tariffs approved by the Copyright Board of Canada for Canadian performances of songs for Canadian and international songwriters and music publishers. Tariffs have been set for recorded or live music ranging from concerts to restaurants to fitness classes.  Of particular relevance to this article are the tariffs for performance of songs on the internet and on mobile devices. In May of 2016 SOCAN announced that it had acquired Seattle-based MediaNet.  This was followed by an announcement by SOCAN in July of 2016 that it had acquired New York-based Audiam.  As with all performing rights organizations, SOCAN’s main functions are firstly to determine what music is being performed and, secondly, to collect the applicable royalty prescribed by Canadian law.  Collection of royalties relating to the internet and mobile devices create technological challenges.   MediaNet has more than 51 million sound recordings in its database, each containing a unique audio identifier.  By acquiring MediaNet, SOCAN will be able to identify digital performances from around the world in real-time. Audiam similarly, has one of the world’s most complete databases of sound recording and underlying song/composition metadata.  In addition, Audiam has technology to proactively find works that are not licensed and for which royalties have not been paid. With the combined strength of MediaNet and Audiam, SOCAN can identify the use of music on digital services such as Spotify, Apple Music, YouTube, and Google Play.  When songs are performed, in addition to royalties compensating the songwriters and music publishers, there are also royalties compensating the artists who perform the songs and music recording companies.  Prior to acquiring Audiam, SOCAN was not involved in collecting royalties for performing artists and music recording companies.  In contrast, a significant portion of the business of Audiam was the collection of royalties for performing artists and music recording companies.  With the acquisition of Audiam, SOCAN now has the capability to collect songwriter-music publisher royalties and performing artist-music recording companies royalties.  With changes brought on by the internet, songwriters and performing artists had become frustrated by the ineffectiveness of the performing rights organizations in the collection of royalties, resulting in a fracturing, with new performing rights organizations being formed by the disenchanted.  Through its acquisition of MediaNet and Audiam, SOCAN has greatly increased its ability to be effective at identifying uses of music on the internet and collect royalties.   SOCAN’s acquisition of Audiam’s expertise in collecting royalties for performing artists and music labels, has been heralded by some commentators as an important new development that raises the possibility of SOCAN becoming a “one stop shop” on the Canadian music scene.  The fact that MediaNet and Audiam are U.S. based also suggests that SOCAN will become more active in collecting royalties in the United States.

Balancing of Interests under Copyright Law

johnny-automatic-scales-of-justice-300pxCopyright law often includes a consideration of a “balancing the rights”, usually balancing the rights of content users and the rights of content creators.  Some recent court decisions illustrate how this “balancing” takes place and explore some new issues in copyright law. Maltz v. Witterick (a decision issued by the Federal Court of Canada in May 2016) relates to balancing rights as between two competing content creators.  A writer by the name of Jennifer Witterick was “inspired” to write a fictional novel after viewing a documentary produced by Maltz and some others regarding the life of Francizska Halamajowa and her daughter Helena, who hid three Jewish families when the German army occupied Poland during the Second World War.   Upon becoming aware of the novel, Maltz noted a number of factual similarities between the documentary and the novel, and commenced an action for copyright infringement against the author Witterick and the author’s publisher.  By way of background, the Courts have long held that copyright does not apply to historical facts, such as the German occupation of Poland during the Second World War.  The Judge in Maltz v. Witterick noted that the novel was a fictional story aimed at young readers and had a much different “feel” than the documentary.  The only thing that had been taken were some factual underpinnings for the story.  Counsel for Maltz argued that there was a difference between historical facts in which no one can own copyright and “small facts” drawn from diary entries relating to events on a particular date. In  concluding that the writer Witterick’s use of some actual facts from the life of Halamajowa did not amount to infringement, the Judge made a finding that facts are facts and no one owns copyright in them no matter what their relative size or significance.  A second case, Geophysical Services Incorporated v. Encana et al (a decision of the Alberta Court of Queen’s Bench in April 2016) relates to balancing rights as between content creators and public authorities.  Geophysical Services Incorporated (GSI) was in the business of selling seismic data.   This seismic data was filed with a government board pursuant to a regulatory regime established under the Canada Petroleum Resources Act (CPRA).  After a period of 5 years, the seismic data was made available to the public by the board.   GSI commenced a legal action for copyright infringement against Encana and many other companies that were making use of the seismic data without GSI’s permission.  The Judge confirmed that GSI owned copyright in its seismic data, but held that to the extent that the regulatory regime of the CPRA conflicts with the Copyright Act, the CPRA regulatory regime prevails. The wording of the CPRA, properly interpreted, allows for disclosure without restriction after a defined period of time. It is a complete and specific code that applies to all oil and gas information in the offshore and frontier lands, including seismic data. Its provisions supplant any more general pieces of legislation, such as the Copyright Act.  Both of the foregoing decisions have been met with criticism.  The Maltz v. Witterick case is criticized as it allows a party to use intimate details of someone else’s life without compensation. The Geophysical services v. Encana et al case is criticized as amounting to expropriation by the government without compensation.  What do you think?  Please communicate your views to dthompson@tcllp.ca

VIATEC AWARDS – Employee of the Year and Team of the Year

Award winnerThompson Cooper is proud to sponsor the “Employee of the Year” at the ViaTec Award.  The nominees are:
•Aleksey Vorona – xMatters
•Aurora Walker and Rob O’Dwyer – Pretio Interactive
•Matt Martin – Crowd Content

Congratulations to the Employees of the Year – Aurora Walker and Rob O’Dwyer

We feel that this is important as employees are the backbone of every business.

 

Thompson Cooper is also proud to sponsor Team of the Year.  The nominees are:
•Archipelago Marine Research
•Atomic Crayon
•Change.org
•HP Advanced Solutions
•Smart Dolphins
•StarFish Medical

These are exceptional teams, some of whom have previously been nominated.

Congratulations to the Team of the Year from Starfish Medical

 

Video Game Developer’s Worst Nightmare

PlayStation-5You spent over 1200 hours in developing a video game and that video game is now successful.  At some time during development, a friend had some free time and assisted by creating images of a couple of cars, accessory items like fuel cans and trees, and some background scenery.   The “friend”, hearing about the success of the video game, demanded 25% of the profits from the video game for his contribution.  You respond by removing the images from the video game.   This did not satisfy the now former-friend, who sued you claiming there was an express profit sharing agreement, claiming that even in the absence of an express profit sharing agreement his contributions made him a co-author of the video game and thus entitled to a share of the profits, and alternatively, that he was entitled to compensation commensurate with the value of his contribution.  This is the fact scenario from a Quebec case, Seggie v. Roofdog Games Inc, where Seggie, the “friend”, made a claim against a video game developer by the name of Germain and Germain’s company, Roofdog Games Inc.   Under the Canadian Copyright Act, except for some specified exceptions (including making a work subject to copyright in the course of employment) and absent an agreement to the contrary, the author of a work is the first owner of copyright in the work, and joint-authors (also referred to as co-authors) are the first co-owners of copyright.  The Judge in the Seggie case set out the following factors to consider in determining whether video game developers are “co-authors”:  1) each co-author must have made a substantial contribution, 2) the co-authors must work collaboratively toward a common goal, 3) there must be an implication that the co-authors must have intended a jointly-authored work, and 4) the contributions of the co-authors must be blended together and not distinguishable one from the other.  The Judge found the Seggie was not a co-author, as his contributions were minor in comparison to those of Germain, the disparity in contributions and other background evidence did not indicate that they were working toward a common goal or suggest an intention for a jointly-authored work, and Seggie’s contributions remained distinguishable from those of Germain.  However, the Judge found that Seggie owned copyright in the images of cars, fuel cans, trees and background scenery he had provided to Germain.  Since it was unclear that Seggie had permanently renounced his right to compensation for the use of the images, Germain was ordered to pay compensation for the use of the images in the sum of $10,000.  There is a lesson here for video game developers.  You should document in writing the relationship and, if applicable, compensation due anyone who makes even a minor contribution during the development of your video game.

The Copyright Act and Paywalls

Companies or individuals who wish to bypass paywalls should be aware that a Canadian court  recently held an association liable for copyright infringement because it requested and obtained a paywall-protected news article from a third party with a subscription to the news site.

The articles, images, and audio and video files found on the Internet are all works subject to copyright, meaning that some entity (e.g., an individual or company) owns copyright and thus has “the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever.” It is an illegal infringement of copyright to do what the copyright owner has the sole right to do, without the owner’s permission.  These aspect of copyright law are widely understood (though often ignored, e.g., music file sharing).

Less well known is a relatively new aspect of Canada’s copyright law relating to technical protection measures.  Under our Copyright Act: a technical protection measure is defined as any effective technology that in the ordinary course of its operation controls access to a work subject to copyright; and it is illegal to circumvent a technical protection measure.

A paywall is a system that prevents Internet users from accessing webpage content without a paid subscription.  For example, some general readership newspapers have implemented paywalls on their websites to increase their revenue, which has been diminishing due to a decline in print subscriptions and advertising revenue.

The recent court decision, Blacklock’s Reporter v Canadian Vintners Association, dealt with a dispute between a subscription-based paywall-protected electronic daily news service providing detailed information about the Government and courts in Ottawa (Blacklock’s), and an industry association (Canadian Vintners) that did not have a subscription but had requested and obtained a copy of an article relating to the association, from a person with a subscription.  Blacklock’s usually charged $157 for a single-use subscription and $11,470 for an institutional membership.  When Blacklock’s became aware that two individuals at Canadian Vintners had accessed the article, Blacklock’s billed Canadian Vintners for two single-use subscriptions ($314) and requested the name of the person who had provided the copy (who was in breach of the terms and conditions of their subscription).

Canadian Vintners refused to pay or to provide the person’s name, and the dispute led to a lawsuit.  The Ontario Superior Court Small Claims Judge held that the paywall constituted a technical protection measure, and held that requesting and obtaining a copy of a paywall-protected  article from someone with a subscription, constituted the illegal act of circumventing the technical protection measure.  As the copy of the article was obtained illegally, the exceptions to copyright infringement (e.g., “fair dealing for the purpose of research, private study, education,… ”) that may apply in some situations, were not available to Canadian Vintners.

Thus, although Canadian Vintners had not itself made the infringing copy, it was found liable for copyright infringement based on the circumvention of the technical protection measure.  Further, the Judge awarded Blacklock’s damages based on the institutional membership ($11,470) plus $2,000 in punitive damages for Canadian Vintners highhanded behaviour (which included refusing to give the name of the person who provided the copy of the article, until ordered to do so by the Court).

Trans Pacific Partnership (TPP)

The-TPPI was listening to the radio the other day and caught the tail end of an interview concerning the Trans Pacific Partnership (TPP).  The comment that attracted my attention was a statement that the Intellectual Property provisions of the TPP agreement would cost Canada 57,000 jobs.  The same evening the TPP agreement was on the evening television news and the person interviewed indicated that the ability of Canada to change its laws would be hampered.  I have now read the Intellectual Property provisions of the TPP agreement, which are found in the 75 pages which comprise Chapter 18 and accompanying schedules.   The agreement indicates that countries may change their laws “provided that such measures are consistent with the provisions of this Chapter”.   As indicated by the television commentator, Canada would be in breach of the agreement if, after signing, the government chose to pass laws that contradict the provisions of the TPP agreement.   Looking for the lost 57,000 jobs, I found that most of the 75 pages are consistent with the laws of Canada as they presently exist.  The copyright term has been lengthened, but that change is unlikely to cost any jobs.  Canada’s previous copyright term was the life of the author plus 50 years after his or her death.  The TPP agreement provides for a copyright term of the life of the author plus 70 years after his or her death.   In Canada, there is a government approval process before a company can sell agricultural chemical products, pharmaceuticals, or biologics (complex molecules such as proteins that are isolated from plants, animals or micro-organisms, or made using biotechnology).  The TPP agreement provides for a “patent term adjustment”, lengthening the term of a patent when there are delays in the government approval process.  This change will give drug companies a few more years of protection and will slow the introduction of generic drugs into the Canadian market.   As part of the government approval process, companies must submit test data and, where applicable, data from clinical trials.  There is presently no law, prohibiting subsequent applicants for government approval from using test data submitted by an original applicant. The TPP agreement provides that subsequent applicants are prohibited from using the test data submitted by the original applicant for a period of 10 years when seeking government approval for agricultural chemicals, 5 years for pharmaceuticals, and 8 years for biologics.  This will also slow the introduction of generic products into the Canadian market, as generic manufacturers are forced to either wait or develop their own test data and conduct their own clinical trials.  I have no way of assessing whether 57,000 jobs will be lost.  However, it is reasonable to assume that there will be a loss of jobs in the generic drug industry as these provisions begin to affect generic drug manufacturers based in Canada.  However there are some answers missing from the dialog, that would help me decide whether or not I am in favour of TPP.  How many jobs may be gained in other sectors with the signing of TPP?   How many jobs may be lost if we do not sign TPP?  We rely upon our exports, being frozen out of TPP may not be good for Canada in the long run.