This semester, I had the opportunity to participate in Osgoode’s Intellectual Property (IP) and Technology Law Intensive Program. The program involves a 10-week placement as a legal intern to gain real-world experience in IP law. I had the opportunity to be placed at the Canadian Intellectual Property Office (CIPO). CIPO is a special operating agency of Innovation, Science, and Economic Development Canada (ISED) and is responsible for the administration of intellectual property in Canada.

As a student, I worked with the Policy, International Affairs, and Research Office (PIRO), which is part of the Corporate Strategies and Services Branch (CSS) at CIPO. PIRO provides advice and guidance on policy, regulatory, international, and economic issues to CIPO’s Executive Office and the Deputy Minister and Minister of ISED. PIRO is divided into three teams: Policy and Regulatory Affairs Office (PRAO), International Relations Office (IRO) and the Economic Research and Strategic Analysis Unit. If you didn’t already notice – yes, the federal government has an affinity for acronyms; I learned this on day one of my placement!

My main role was to conduct research to support the PIRO team. I researched intellectual property trends in free trade agreements and identified areas where negotiations are focused. While my main focus was on trade agreements which Canada is party to – including Canada-United States-Mexico Agreement (CUSMA), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), and Comprehensive Economic and Trade Agreement (CETA) – I also learned about the negotiations and IP standards set in other regions of the world by other agreements such as the Regional Comprehensive Economic Partnership (RCEP) and the recent African Continental Free Trade Area (AfCFTA).

My research was also related to meetings that I attended throughout the semester, where I was not only exposed to various areas in international intellectual property law but also to issues the Canadian government is facing regarding implementation of recent trade agreements. For example, I had the opportunity to learn about the process CIPO is taking to implement patent term adjustment obligations as required under Article 20.90 of the CUSMA. It was fascinating to sit-in on discussions of the most current issues that the office is facing as well as being introduced to topics that would never be discussed in the classroom.

I further had the opportunity to attend various meetings on behalf of CIPO’s PIRO team. This includes those held by the Intellectual Property Centre of Expertise (IPCE), an organization established as part of Canada’s national IP strategy in order to provide IP advice and educational support across the federal government. Discussions included considerations that need to be taken when conducting research and the role of federal servants in federal research as dictated by the Public Servants Inventions Act (PSIA). Not
only was this an opportunity to learn about a career of IP in the public sector, but I was also given hands-on experience on how to create effective memoranda when communicating information to the chief executive officer – something that is done regularly as a CIPO analyst.

Working as a student at CIPO has been an incomparable experience. Not only was the work unique, but it was a great skill-building challenge to work independently in areas where I am inexperienced – especially in the remote environment. I want to thank my supervisors, Shawn Tippins and Zorn Pink, who provided me with numerous opportunities to engage with the department. In addition to what I learned from the work, I have gained valuable mentors and lasting relationships. Although I wasn’t able to meet them in person, the team provided a warm and welcoming environment where I felt comfortable asking questions and participating in discussions. I look forward to applying the skills I’ve learned into my career and hope future students will take advantage of this opportunity as well.

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CIPO has recognized Canada’s “very close economic links to a large neighbor, the United States”[4] and “Canada’s close integration into the global economy”[5], as the two reasons why Canada’s resident application share is lower than most other leading economies. If CIPO is correct, then the current NAFTA negotiations could have a great impact on the patent filing trends in Canada.

NAFTA’s Impact on Canada’s Economy

Since NAFTA came into effect in 1994, the economy of North America has more than doubled in size and Canada-US trade has nearly tripled.[6] Canada is the number one trade partner for more than half of the states in the USA and the second trade partner for the majority of the remaining states.[7]

Therefore, if NAFTA dies, it is very likely that many close economic links between US and Canada will break down. Dissolution of such economic links between the two countries may result in loss of incentives for potential American patent filers to file for patents in Canada. Since the US is the top patent filer in Canada this loss is very concerning. A drop in the number of patents filed by US residents will, considerably, decrease the total number of patent filings in Canada.

Canada as a Gateway to the US Market

Additionally, as a result of NAFTA, Canada is also perceived as a gateway to the US market. A report, prepared by the Government of Canada, which is targeted towards foreign
investors, states that “In North America, Canada enjoys direct access to the NAFTA market, so foreign investors can reach a single market of 480 million consumers, with a combined GDP of over US$20 trillion. Many Canadian production hubs are located closer to US markets than are American production sites.”[8]

If the links that NAFTA has created between the Canadian and American markets are eliminated, there is a chance that other foreign countries such as Germany, Japan, France and Switzerland, that are among the top patent filers in Canada, will have little to no incentive to file for patents in Canada.

Is NAFTA Canada’s Achilles’ Heel?

Killing NAFTA will cut many of the economic channels between Canada and the USA and this may cause hesitancy in foreign patent filers to file for patents in Canada. Since��foreign patent filings account for more than 68% of the total patent filings in Canada [9], such a drop could have dramatic impacts on the total number of patent filings in Canada.

Assuming that the number of patent filings correlates directly with the rate of innovation in a country [10], then a decrease in the former may result in a decrease in the latter. It has been shown that the rate of innovation affects the growth rate of output in manufacturing.[11] The number of patent filings and the GDP from manufacturing in Canada has seen a net increase since 1995, around the time NAFTA came into effect.[12] Therefore, a drop in the number of patent filings could affect the country’s manufacturing industry and the GDP from manufacturing.

Although it has been said that if NAFTA dies, it won’t be the “end of the world” for Canada [13], Canada needs to start thinking about other ways to balance the effects of a possible dissolution or modification of NAFTA. In order to do so, among other things, Canada needs to find ways to attract foreign investors and patent filers and encourage innovation from within.

Being overly-dependent on foreign markets and economies is a risky business, specially in the current unstable political atmosphere.

Nazli Jelveh��is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

[1] Canadian Intellectual Property Office, “IP Canada Report 2016” (25 November 2016), Government of Canada (website), online: <https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04112.html>.

[2] Ibid.

[3] Ibid.

[4] Ibid.

[5] Ibid.

[6]�� NAFTANOW (website), online: <http://www.naftanow.org/results/default_en.asp>.

[7] Judi Bottoni, “NAFTA, Trump and Canada: A guide to the trade file and what it could mean for you” (24 January 2017), The Globe and Mail.

[8] The Canadian Trade Commissioner Service, “Invest in Canada Flagship Report” (2016), Government of Canada (website), online:<http://www.international.gc.ca/investors-investisseurs/assets/pdfs/download/1-Flagship_report.pdf> at 24.

[9] Supra note 1.

[10] for more on this, please visit http://www.wipo.int/patent-law/en/developments/research.html.

[11] Hulya Ulku, “R&D, Innovation, and Growth: Evidence from Four Manufacturing Sectors in OECD Countries” (2005) Institute for Development Policy and Management at University of Manchester Working Paper No. 12, online:<http://ageconsearch.umn.edu/bitstream/30542/1/de050012.pdf>.

[12] Supra note 1, figure 4.

[13] Alexander Panetta, “Canada’s original NAFTA negotiator say it’s not ‘end of world’ if deal dies” (18 October 2017), CTV NEWS (website),
online:<http://www.ctvnews.ca/politics/canada-s-original-nafta-negotiator-say-it-s-not-end-of-world-if-deal-dies-1.3638387> and please see Jesse Ferreras, “What if NAFTA ended? These would be Canada’s hardest-hit provinces, industries” (18 October 2017), Global News (website), online.

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Critics of the TPP have disparaged the agreement for serving the interests of large US-based corporations. World Bank chief economist, Clinton Administration advisor, and Nobel laureate wrote an denouncing that the working text was held “secret from the public (even though the details are accessible to hundreds of advisors to big corporations)” and that the treaty “proposes to freeze into a binding trade agreement many of the worst features of the worst laws in the TPP countries, making needed reforms extremely difficult if not impossible”. In Canada, innovative entrepreneurs including former Blackberry/Research in Motion co-CEO Jim Balsillie (who is now helping create a tech-focussed lobby group,��) argue the TPP IP measures are��.

The copyright and related rights sections of the TPP����largely cohere with existing Canadian law����and obligations under other international treaties. As indicated in Global Affairs Canada’s��, the TPP��“Provides protection and enforcement of copyrights and related rights, reflecting or building upon the World Intellectual Property Organization Internet Treaties. Canada ratified the Internet Treaties in 2014.”��As well, Global Affairs Canada notes that the TPP��“Reflects key aspects of Canada’s regime, including: Canada’s Notice-and-Notice regime regarding Internet service providers’ role in addressing online copyright infringement; protection and enforcement to prevent the circumvention of technological protection measures and the removal of rights management information; and Canada’s copyright exceptions and limitations framework.”

A close reading of the Copyright Act and the TPP IP��Chapter demonstrates that current Canadian copyright law will not need to be significantly altered to be in line with the TPP. Additionally, IP lawyer and adjunct Osgoode Law School professor Barry Sookman�� “the TPP leaves the parties with flexibility to maintain or establish exceptions”.

This flexibility is important, especially in situations where the TPP copyright sections and Canadian law differ, as these divergences could impact efforts to further develop a vibrant digital economy in Canada. If the TPP is ratified and goes into force,��Canada's digital economy will need to be designed to exploit the��flexibilities and exceptions built into the TPP to suit the needs of the Canadian public as well as the business sector.

Changes: Copyright Term Extension and TPM/RMI Enforcement

One significant divergence between Canadian law and the TPP is found in TPP��, which requires that the term of protection��“shall be not less than the life of the author and 70 years after the author’s death”.��This section would extend Canada’s current copyright term by 20 years. The only exception is found in the case of��“a sound recording in which the performance is fixed is published before the copyright expires”��,, a section of Canadian law recently changed to��“the copyright continues until the earlier of the end of 70 years after the end of the calendar year in which the first such publication occurs and the end of 100 years after the end of the calendar year in which the first fixation of the performance in a sound recording occurs”.

Canadian law would also need to change to adhere to the technological protection measures (“TPMs”) of the TPP. Existing Canadian law states no person shall circumvent TPMs or provide or market services to do the same . These anti-circumvention provisions prevent the��“manufacture, import, distribute, offer for sale or rental or provide — including by selling or renting — any technology, device or component”����designed, produced, or marketed primarily for the purpose of circumventing TPMs. Exceptions are made in the case of ensuring technological interoperability����as well as law enforcement and national security purposes��.

The TPP����reinforces and extends the provisions of the��Copyright Act��with respect to TPMs as well as rights management information (“RMI”)��. Similar to existing Canadian law, the TPP offers civil and criminal remedies and penalties for a person either��knowingly engaging in or��“having reasonable grounds to know” that they were engaging in the breaking the so-called digital locks. The Copyright Act����and the TPP IP Chapter����both provide for criminal penalties for willfully circumventing TPMs for commercial or financial gain, while excepting non-profit libraries, museums, archives, and educational institutions. In contrast to the Copyright Act, the TPP also extends these penalties to the protection of RMI��, which are information pertaining to the authorship and ownership of a work. While the TPP allows for domestically-tailored limitations to be enacted with respect to TPMs��“through a legislative, regulatory, or administrative process”��, this concession is not extended to RMIs, where legislated exceptions are limited to cases of��"law enforcement, essential security interests or other related governmental purposes, such as the performance of a statutory function"��. Restricting the ability to alter or remove RMIs for non-commercial purposes can prevent users to modify works even in accordance with fair dealing exceptions.

The Changes in Context

The TPP not requiring significant alterations to Canadian copyright law is both positive and a negative. The TPP reflects the priorities and interests of existing United States businesses and industries, restricting the ability of the Government of Canada and other parties to the Agreement to����in the future without re-negotiating the agreement itself. This will prevent the TPP parties from responding to changing technological circumstances and alternative business practices, which could help encourage future entrepreneurship and innovation or to reflect domestic priorities. The TPP establishes an international framework for copyright law and related rights based on existing corporate realities. However, the merits of these laws as written can be questioned according to whether or not they are desirable or designed for and in line with the interests of prevailing corporations and business practices.[1]

For example, the extension of copyright terms is controversial due to the fact that��longer rights periods delay the addition of content into the public domain, add burdens and costs to consumers, and help extend the transfer of wealth to rights holders at the disservice to the public good[2]. A����for New Zealand’s Ministry of Economic Development estimates consumer costs to be NZ$55million per year.

Similarly and with respect to TPMs, McGill University law professor��, now the new Parliamentary Secretary of International Trade,����that TPMs represent “a serious conceptual flaw or incoherence”, which “could overwhelm the copyright balances” (p. 327).

Lawyers and academics have����and that International Trade Minister����should look to��. Issues remain to��complicate the ratification of the TPP in the US and elsewhere. If or when the TPP comes into force, Minister Freeland and Parliamentary Secretary Lametti should be proactive and work to ensure that the Government of Canada has the domestic policy space to interpret international trade obligations and the ability to revise Canadian copyright law to foster a digital economic policy, which serves the best interests of Canadian citizens and stakeholders. The Copyright Act requires that the law is reviewed every five years��. With this in mind as well as the fast-changing realities of the digital economy, the Government of Canada should actively engage with partner Parties to amend the agreement as necessary and in accordance with the TPP's final provisions��.

The ‘Made in America’ approach of the TPP helps extend and reinforce the economic and market-based concerns of American companies and industries. Such a move threatens to fortify Canadian dependency on American copyright protected exports and limit Canadian corporations’ ability to disrupt the digital economic business practices of dominant American firms. As I have argued elsewhere, in order for Canada to continue to compete with international companies��and��develop a digital economy��that responds to and builds from the emerging realities of the 21^st��Century, the Government of Canada must be proactive and work to retain and utilize copyright and related rights flexibilities to serve the best interest of Canadians and the economic viability of innovative and domestically grown businesses and business practices.

[1] For further information, see the����from University of Ottawa��law professor Michael Geist, the Canada Research Chair in Internet and E-Commerce Law.

[2]��In a��,����finds that extending the copyright terms has an “insignificant impact on the number of works created in Canada,” may slightly increase the costs to consumers, and “will likely contribute in a small way to an outflow of royalties from Canada” (Executive summary, para. 2).

Joseph F. Turcotte is a Graduate Student Member of IPOsgoode and a PhD Candidate (ABD) in the Communication & Culture Program (Politics & Policy) at 91��ɫ. His research focuses on the role of knowledge, information, data, and intellectual property in the functioning of knowledge-based and digital economies. He can be reached via Twitter at��

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In a timely manner, only three days after the of the conclusion of negotiations on the Trans-Pacific Partnership Agreement (TPP), Prof. Matthew Rimmer accepted our invitation and shared few of the hidden secrets behind the agreement as part of IP Osgoode speaks series.

This ‘blockbuster agreement’—supposedly a jovial landmark in the sphere of diplomatic international relations—was diluted with a mixture of uncertainty and secrecy. According to Prof. Rimmer, the TPP is a controversial agreement for several reasons. First, many concerns were raised regarding the involvement of major companies, via special advisory groups and executives, in drafting parts of the agreement. Consequently, the companies allegedly had more influence over the TPP than the legislators since the latter could not review the agreement that was protected (and still is) under the blinds of confidentiality. Second, a few notable countries are not signatories of the TPP (China and Russia for example). The reasons underlying China and Russia’s exclusions raise questions regarding the TPP’s true nature—is it really a trade agreement or simply, as Prof. Rimmer implied, ‘the coalition of the willing’ that was established as part of a U.S. global trade strategy.

Much of what we know to date about the TPP was retrieved from . Jamie Love, the director of (KEI), who recently shared��a into the TPP deliberations, alerted that "[i]n many sections … the TPP would change global norms, restrict access to knowledge, create significant financial risks for persons using and sharing information, and, in some cases, impose new costs on persons producing new knowledge goods."

IP Principles and Objectives

The TPP’s IP chapter covers a wide scope of topics and is positioned to change the normative boundaries of IP and, more specifically, of copyright. The traditional approach, as shaped in the U.S. and the U.K., is rooted in the perception of copyright as a means to inspire creation and proliferate knowledge. However, as Prof. Rimmer explains, it appears that the current vision of the TPP, under the influence of the music and movie industries, seeks to transform the normative balance of IP in order to strengthen the owners’ well-fortified rights. It is not hyperbole to define the TPP as a game changer that could have grave implications to the public domain.

A ‘Mickey Mouse’ Copyright Term Extension

According to Prof. Rimmer, the movie and the music industries have strategically argued for a prolonged extension of copyright terms. The TPP seems to answer their call, as it extends the term of protection to 70 years after the life of the author. This extension will likely have a profound affect in various fields, including Canadian cultural heritage, competition, innovation and the public domain. However, it is unclear if the TPP will include a demand for the revival of copyright works that were previously in the public domain. Prof. Rimmer also indicated that the TPP seeks to for orphan works.

Fair Use/Dealing and Disability Rights

There has been much academic discourse concerning whether the TPP language, in regards to the definition of fair use/dealing, is far too narrow or too broad compared to previous agreements, particularly the , in defining copyright exceptions. The TPP definition will most likely affect the course of this discussion. If the TPP adopts a narrow definition for fair use/dealing, it could set back recent developments in Canada related to the Supreme Court landmark decision in .

Copyright and disability rights stand in the center of recent international progress in copyright law. The —the most prevalent—aims to expand the recognition of the rights and interests of disabled people to access copyright protected materials, ending what was known as the ‘Book Famine’. According to Prof. Rimmer, the TPP makes an effort to recognize the Marrakesh Treaty. However, the Marrakesh Treaty is narrowly limited in scope to the visually impaired. Prof. Rimmer argues for a broader scope that will include other disabilities as well.

DMCA

The TPP seeks to export aspects of The Digital Millennium Copyright Act () and imbed Technological Protection Measures (known as ‘digital Locks’). Such anti-circumvention measures might endanger the fair use/dealing exceptions. The DMCA is a premature regime that was enacted almost two decades ago, in a pre-search engine and social media era, and is not well designed for current challenges. Stressing the absolute DMCA model as part of the TPP seems unreasonable. It should be noted that the DMCA model may have grave consequences to Canada, which in the past decade have defended its copyright laws against the DMCA successfully.

Protection and Enforcement

Protection and enforcement measures play an important role in the implementation of any international agreement. The TPP includes an arsenal of IP enforcement measures such as criminal offences and civil remedies. However, the TPP's rigid structure does not enable the members of the agreement much flexibility in adapting the TPP into their domestic laws. Prof. Rimmer criticized that the TPP ‘locks’ a specific model rigidly; it is uncompromising in regards to changes and modifications to the enforcement measures since it requires the approval of all members.

TPP’s Radical Vision

Prof. Rimmer concluded his lecture by stating that the TPP agreement ‘is radical’ not only in its objectives and purposes, but it also changes some of the fundamental doctrines in copyright such as term extension, fair use/dealing, liability issues etc., while diminishing the public domain in the process.

The TPP agreement is indeed a defining moment in the international effort to consolidate IP laws, however, the shroud of secrecy surrounding the TPP is not an encouraging sign. There is the general concern that the leaked terms of the TPP agreement will cause copyright laws to regress and destabilize the delicate balance between authors' and creators' rights to the public domain, thereby doing more harm than good.

The Sum of All Fears

On the eve of posting this blog, The Office of the U.S. Trade Representative (USTR) finally published the��. Not surprisingly, we discovered that the TPP’s negotiation leaks were, in general terms, accurate. For example,��the TPP includes a copyright term extension of ‘not less than the life of the author and 70 years after the author’s death’ (Article 18.63(a) to the TPP) as predicted. Obviously, we should read the TPP thoroughly, however—as it seems—it is indeed what we all feared it to be.

Aviv Gaon is a PhD candidate at Osgoode Hall Law School

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Dispute Details

The Typo Keyboard is a $99 iPhone case that attaches an extended QWERTY keypad to the bottom of the phone. The accessory’s keypad closely resembles that seen on BlackBerry devices.

Blackberry filed the lawsuit with the US District Court for Northern California, the home state of Typo’s operations. The filing accuses Typo of infringing keyboard patents , , and . BlackBerry is asking for an injunction as well as an eventual jury trial.

������������������’s Position

������������������’s claims rely on two main points, namely that the Typo keypad is a clear and intentional misappropriation of ������������������’s trade dress, and also that the trade dress is a key and distinctive part of Blackberry’s value proposition. (Trade dress is a term of art referring to an item’s visual characteristics which act as a source identifier. The concept is similar to the "distinguishing guise" in Canadian trade-mark law.)

“This is a blatant infringement against ������������������’s iconic keyboard, and we will vigorously protect our intellectual property against any company that attempts to copy our unique design,” said BlackBerry General Counsel and Chief Legal Officer Steve Zipperstein about the suit. “From the beginning, BlackBerry has always focused on offering an exceptional typing experience that combines a great design with ergonomic excellence,” continued Zipperstein. “We are flattered by the desire to graft our keyboard onto other smartphones, but we will not tolerate such activity without fair compensation for using our intellectual property and our technological innovations.”

������������������’s outlines in great detail, and with images, its keyboard’s intentional design functionality. Shapes, curves and frets are all included in the intellectual property rights that BlackBerry holds and argues Typo’s keyboard infringes.

Typo’s Response

Typo argues that the QWERTY keyboard is too long-standing to be patented, and that they put significant work of their own into creating their product.

Typo initially responded with this comment to :

“We are aware of the lawsuit that Blackberry filed today against Typo Products. Although we respect BlackBerry [sic] and its intellectual property, we believe that ������������������’s [sic] claims against Typo lack merit and we intend to defend the case vigorously.��We are excited about our innovative keyboard design, which is the culmination of years of development and research.”

Author Analysis

I have to admit, even as a BlackBerry fan, I found Typo’s initial messaging compelling. It seems unrealistic for there to exist a patent on a QWERTY keyboard slapped onto a mobile device. Surely the degree of ubiquity is such that any specifications can’t matter immensely.

������������������’s filing, however, outlines the extensive thought and detail poured into its keyboard. Reading the filing is like catching a glimpse of the recipe for Blackberry's "secret sauce".

Lines like, “… the Bold featured the use of curved bars (referred to as “frets”) above each row of keys. Each of the keys in the top three rows is a roughly square shape, and arranged like the keys on a piano, without any significant space or material between them horizontally,” and “The Q10’s physical keyboard continues to incorporate bars above the rose of keys having the distinctive sculpted appearance of the thumb-optimized ergo-surf design,” make it apparent that the BlackBerry keyboard was not a happenstance success, but rather a major consideration in ergonomics and design.

More to the point, to me it seems as if the Typo keyboard is a direct replication of this design. In that opinion, I am not alone; the tech community also the similarities.

Even Seacrest hinted at the genesis of the Typo keyboard in . When the interviewer commented, “So it’s the best thing about the BlackBerry, within the iPhone,” Seacrest's response was: “That’s kind of how this came to fruition.”

������������������’s confidence in their claim is evident in their choice for jury adjudication. It takes a strong claim to believe that a citizen jury will appropriately comprehend the basis for a claim in a technology patent case. But again, based on the detail of ������������������’s intellectual property rights and the initial response of tech commenters openly admitting the design similarities of the devices, the claim appears to have merit.

From a legal perspective, the most rational response is likely for Typo and BlackBerry to settle, with Typo paying a portion of profits to BlackBerry in design royalties.

From a business perspective, however, BlackBerry may wish to take this to court to permanently shut down Typo’s production. In the grand scheme of the smartphone wars, allowing the existence of any product that allows non-BlackBerry devices to sport a Blackberry-esque keyboard is a threat to BlackBerry's market share and profits. The smartphone market is intense, with companies involved constantly jockeying for positions better than the rest; BlackBerry could easily decide that committing to a legal battle and winning it outright is more important than ceding any ground that will undermine its competitive advantage.

Denise Brunsdon is an IPilogue Editor, a Western University JD/MBA Candidate, and researcher for GRAND (Graphics, Research and New Media) Centre and Commercialization Engine.

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At in Vancouver BC, Michael Hallatt resells marked-up and unmodified Trader Joe’s products purchased at retail price in Washington State Trader Joe’s locations. Currently, Trader Joe’s only operates in the United States and hold several registered trade-marks on . The mark is used to identify both the company itself, and its branded goods. Trader Joe’s also currently has two ��for retail grocery services in Canada.

In the��, Trader Joe’s alleged that Hallatt prominently displayed their mark in an attempt to pass as an authorized dealer of their products. Interestingly, in the wake of the trade-mark infringement claim made by Trader Joe’s, Hallat’s store now goes by _IRATE JOE’S with the tagline “Unauthorized, Unaffiliated and Unafraid”. On October 2^nd, a Seattle Washington court����the claim for lack of subject-matter jurisdiction, but allowed Trader Joe's to amend the claim under state laws.

Under Rule of the United States��Federal Rules of Civil Procedure,��a court can ��only if it is immaterial and appears to be made solely for the purpose of obtaining jurisdiction, or the claim is wholly immaterial or frivolous. In making this determination, the court unless the party mounting a jurisdictional challenge asserts facial or factual attacks on the claims. The court held that Hallatt failed to make a factual or facial attack but that nevertheless there was no basis for extra-territorial application of the ��in this case.

The Lanham Act confers broad power on the court to exert jurisdiction. To make this determination, courts must apply the .�� First, courts ask whether the actions complained of effect American foreign commerce. Second, whether this effect presents a cognizable injury under the Lanham Act. Third, the court must conduct a seven-factor analysis as to whether assertion of extra territorial authority is justifiable. To satisfy the first two parts of the test, a plaintiff must show only that there has been “some” effect on foreign commerce when construing all facts in their most favourable interpretation. In this case, all the alleged trade-mark infringement took place in Canada and there was no proof of economic harm in the United States.

Trader Joe’s failed to show an effect on American commerce that would warrant the application of the Lanham Act. ��The degree of conflict with foreign law or policy weighed against establishing jurisdiction because Trader Joe’s has two trade-mark applications in Canada and the infringement is wholly foreign. Hallatt’s permanent resident alien status and his frequent purchase trips to the US would likely be sufficient for establishing jurisdiction through the nationality factor. Third, Hallatt’s presence is not strong enough in the US to apply jurisdiction. Fourth, as wholly foreign acts, there was not a significant effect in the United States. (Even if there was some diversion of business or impact on the reputation of Trader Joe's, this factor still weighed against applying jurisdiction.) Fifth, Pirate Joe’s�� clearly purchased Trader Joe’s products at retail value to resell and it was unclear whether this was intended to harm Trader Joe's since it did not actually lose sales. As a result, it was was not necessarily foreseeable under the sixth factor that the actions would cause harm. Finally, the actions were clearly more significant in Canada than in the United States, since that is where the products were sold after being lawfully purchased in the US.��The court found that on the whole the seven factors supported not extending jurisdiction.

Until Trader Joe’s actually enters into the Canadian market they may have a difficult time preventing Hallat from selling their products at Pirate Joe's. To be successful in a claim in a Canadian court, Trader Joe’s would have to show actual use of the mark in Canada. Trader Joe's may have an argument that if their mark is displayed on a website accessed by Canadians it should be considered “used”��, though this has been a controversial point of law in recent times. (It is important to note that a mark displayed on a website is not�� “used” in Canada unless Canadians can����associated with the mark.) Currently, Trader Joe’s does not allow Canadians to purchase goods through their site and therefore may not pass the threshold for use in Canada. As time goes on, even with trade-mark applications, if the mark is not used ��in Canada the registration could be expunged. Moreover, with Pirate Joe's tagline "Unauthorized, Unaffiliated and Unafraid", I think it would be difficult to indicate consumer confusion in the face of such clear indications about the lack of association with Trader Joe's.

Despite the favourable ruling, Hallatt may still have difficulty stocking his shelves. Several Trader Joe's locations now , and Hallatt has already had to resort to sending others in to shop for him. ��That said, for the time being, fans of Pirate Joe’s can continue to sing “Yo ho ho and a bottle of all-natural apple juice!”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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A recent filed by Myriad Genetics involving the alleged infringement of their controversial breast cancer screening tool has included the prestigious Toronto SickKids hospital as a co-plaintiff. This lawsuit has been a source of criticism for the hospital and has reinvigorated the debate on the merits of public-private research collaborations in health care innovation.

Aftermath of SCOTUS Ruling - Myriad Genetics Sues Archrival

This , the US Supreme Court rendered a landmark , ruling out the patentability of some genetic sequences in patents developed by Myriad Genetics for their breast cancer screening tests. (You can view some of the IPilogue’s extensive coverage of the international litigation around this issue , and .) The results of this decision and the invalidation of the Myriad patents were seen by many as a development that of breast cancer screening methods due to the possibility of cheap alternatives being produced without being hindered by patent licensing. A sound prediction, as , companies started releasing breast cancer screening tools at a lower cost than the Myriad products. A few weeks after the ruling, however, Myriad in the Utah District Court against Ambry Genetics, claiming that the company owned or licensed to Myriad that had not been a part of the US Supreme Court case. In response to the lawsuit, Ambry has recently Myriad for antitrust violations.

This case is interesting from a Canadian point of view since some of the patents at issue involve ownership agreements between Myriad and various public health organizations, . In the , it is stated that the public health organizations will lose "significant amounts of revenue" from lost royalties, and that the revenue stream from their ownership to date has brought in around $57 million. Although listing SickKids as a plaintiff in the lawsuit due to their ownership agreement, the story has nevertheless garnered . This lawsuit has been seen by some as an attack on affordable breast cancer screening for patients, with SickKids seemingly in a position that is opposite its role as a health care provider. Patent arrangements like the one between SickKids and Myriad can be seen as paradoxical; preventing patients from being able to access the medical discoveries that have been made possible by .

Public-Private Research Collaboration: A Complex Issue

Discussions arising from situations such as this ultimately stem from the relationship between public institutions and profit-seeking entities in health research collaboration. Analyses of the merits of such collaboration has reached conclusions in different fields and , but a recent seemed to suggest a statistically significant increase in pharmaceutical industry innovation from publically-funded scientific research.

Critics of these joint research ventures frequently cite the through a “tragedy of the anticommons” effect, where other research entities choose not to enter a field of innovation due to the fear of their production ultimately getting blocked by existing patents. Luigi Palombi, an Australian lawyer that has written a book about the Myriad breast cancer screening saga, criticized the SickKids incident and that “[i]t is our outrageous for any publicly funded research institution to be put in this situation” and that “[o]nce you have publicly funded institutions getting into bed with these guys, well then that raises a whole series of other questions and issues”. Other commentators, such as McGill University law professor Richard Gold, that "[t]here's always been a relationship obviously between industry and hospitals and universities. And it's not all bad because, of course, universities do basic research." Professor Gold also went on to state that he hopes public institutions “will be wiser in the way they set up their agreements in order to have a choice to whether to be involved in ligation". Although the majority of commentators seem to agree that SickKids is currently occupying an unfavourable position from its public involvement in the lawsuit, the debate on the merits of these joint health-care research ventures is certainly an unresolved issue.

The Future of Public-Private Health Research Collaboration in Canada

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Impending Free Trade Agreements Present an Immense Economic Opportunity

In , analysts at the Fraser Institute claim that enhanced pharmaceutical intellectual property (IP) protections can serve to strengthen the domestic innovative pharmaceutical industry while facilitating Canada’s ability to enter and negotiate free trade agreements. The report focused on the economic benefits of two prominent international agreements that are currently in the midst of negotiations, the (CETA) with the European Union, and the (TPP) which involves many nations across the globe.

The report also explains that a key unresolved issue in these discussions has been the status of Canada’s pharmaceutical IP protection, which is currently much lower than its and . By aligning their pharmaceutical policies with the EU and the USA in an effort to complete the CETA and TPP trade agreements, the report estimates that these two trade deals alone can create an annual economic benefit of nearly $22 billion, which would easily offset an estimated $367 - $903 million annual increase in domestic pharmaceutical expenditures.

Another Source of Pressure on Canada to Strengthen its Pharmaceutical IP Laws

In addition to the Fraser Institute report, there has been an abundance of pressure put on Canada to strengthen its pharmaceutical IP policy by its , the United States. A recent report by the United States Trade Representative (USTR) expressed serious concerns about Canada’s pharmaceutical IP laws, and US based organizations such as the Pharmaceutical Research and Manufacturers of America (PhRMA) have as posing a threat to the American innovative pharmaceutical industry and .


Another intriguing component of this issue is that the US itself recently over a free trade agreement similar to the CETA. This has led to that the CETA negotiations may be lost in the shuffle or negatively affected as the EU concentrates on the US agreement, in a situation similar to in 2007. Although the CETA is still expected to be completed eventually, this development has undoubtedly created some urgency in the ongoing negotiations and has increased the pressure to get a deal done promptly.

Concerns

Although there has been large support for the strengthening of Canadian pharmaceutical IP policy among many industry and diplomatic representatives, this view is not universally shared. One concern about the move is the disagreement regarding the resulting cost increases on domestic pharmaceutical expenditures, with . In addition, the distribution of the costs and the potential income from the agreements could be a , as they primarily administer the health care system in Canada and many of the benefits of the agreement may be realized primarily on a federal level.

There is, however, a more subtle issue beyond economics and one that is undoubtedly a consideration in this debate - Canada’s role in the global access to medications regime and as a global health care provider. A move towards stronger IP and the subsequent increased drug costs can be seen as a move away from these types of initiatives, which may not be compatible with Canada’s commitment to and its historical role as the first and only nation to utilize flexibilities under the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement to export generics under a compulsory license to developing countries (). Associations like MSF (Doctors Without Borders) have come out and to speak out against a strengthening of pharmaceutical IP policy in the ongoing TPP negotiations. In an to Prime Minister Stephen Harper, they explained that this development they may have a deleterious effect on the available of cheap generic medications for millions of their patients around the Asia-Pacific region.

So What Should Canada do?

With Canada moving forward in the CETA and TPP negotiations and a recent cabinet shuffle instituting a new industry minister that is , all indications point towards an enhancement of pharmaceutical IP protection in these free trade agreements. Also, as , strengthening pharmaceutical IP will only bring Canada to the global norms among industrialized nations, which seems like a fair concession in an international free trade partnership of this sort.


On the other hand, as illustrated by the calls for Canada to act against these changes by associations like MSF, it is clear that Canada is distinctively seen as a nation at the forefront of supporting access to affordable medications for developing countries. A momentous policy change of this sort will undoubtedly alter the image that Canada retains in the global healthcare front. The question now remains: will Canada sacrifice an apparent illustrious economic benefit or continue with its seemingly Robin Hood-esque stance to pharmaceutical IP policy?

Adam Falconi is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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The “Promise of the Patent” Doctrine and its Latest Interpretation

The interpretation of what is considered “useful” as a requirement of patentability in the has been at issue over the last few years, with jurisprudence over the last decade seemingly taking us away from the “” benchmark that has been used historically. As set out in the landmark SCC decision in , in the context of pharmaceutical patents, there is frequently an estimation or “promise” at the time of filing that sets out the pharmaceutical’s clinical effectiveness before it has been (or can be) factually demonstrated.�� The jurisprudence has set out that, in order for the patent to subsequently be held valid, one must be able to factually establish this promise of utility or alternatively, establish it through the doctrine of sound prediction. The sometimes difficult and somewhat paradoxical requirement of demonstrating a “promise” of utility at the time of filing as set out in Wellcome has created a judicial environment that has seen many pharmaceutical patents recently being invalidated for lack of utility, much to the chagrin of the innovative pharmaceutical industry.

The case , revolves around Eli Lilly’s claim that Novopharm infringed their patent for the schizophrenia drug olanzapine. , the case was eventually remanded back to Federal Court where the . In the court’s judgment, it was held that the patent had a “promise” that olanzapine was “substantially better” in the treatment of schizophrenia than other known anti-psychotics, and that the individual advantages asserted in this comparison with other compounds “form the foundation for the overall promise of the patent”�� (paras 124-125). The court goes on to conclude that at the time of filing, “there is no sound and articulable line of reasoning, or a prima facie reasonable inference, that would have led the inventors from the evidence available at the relevant time to the explicit promise of the substantial advantage set out” (para 267), and subsequently found the patent invalid for lack of demonstrated utility. An appeal to the FCA of the decision was , and the most recent with no reasons given, even after the court granted leave to hear oral submissions on the application, a rare occurrence.

What is most interesting about the Canadian “promise of the patent” doctrine is that it is not explicitly found in the or in . In fact, both the and courts have come to contrasting decisions on the same olanzapine patent held by Eli Lilly, both courts choosing not to adopt the Canadian “promise of the patent” approach to utility. In doing so, these courts declined to invalidate the patent on these grounds. This judicial interpretation requires a higher standard in demonstrating utility for pharmaceutical patents from patent applicants in Canada than any of the country's largest trade and political partners

Criticism of the Doctrine at an Important Time

The extra hurdles that are presented by the “promise of a patent” utility requirement have been criticised by both the innovative pharmaceutical industry and Canada’s trading partners. The conflict has spilled out of the courtroom and into the political sphere when Eli Lilly served a under chapter 11 of the NAFTA agreement. Eli Lilly claims that the promise doctrine is non-statutory judicial law-making, violating Canada’s treaty obligations by invalidating useful pharmaceutical patents. In addition, a recent criticized the heightened utility requirements of Canadian pharmaceutical patents, putting pressure on a Canadian government that is in final negotiations for the landmark which .��

Choosing Not to Address the Issue: An Expression of Deference to the Executive Branch?

It is odd and perhaps disheartening that the SCC has not chosen to clarify the issue and lay out a clear judicial test for the contentious “promise of the patent” utility requirement. It is difficult to imagine that resolving this issue, one that has garnered so much scholastic and political attention, would not be in the public’s best interest. It could be that the SCC is trying to stay out of - what it views to be - an issue for the legislature, and is waiting for the outcome of political maneuvering before attempting to determine the issue according to its own reasoning. Although something like the NAFTA tribunal has limited powers and could not make direct amendments to legislation, the that Canada is currently facing means that any outcome of this issue is sure to have large diplomatic ramifications.

On the other hand, as this doctrine is seemingly one of judicial interpretation outside the explicit text of the - and is clearly a heightened utility requirement when compared to the US and the EU - one may feel that the SCC has an obligation to give a definitive justification and clarify the promise doctrine. If Canada is to be the “lone rebel” with this doctrine, the SCC must come out and address this issue. Delaying or avoiding this will only further the deleterious effects that uncertainty will have on all parties involved in these disputes.

Adam Falconi is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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To read the report’s section on Canada, click .

Results of the Report: A Commendation with Qualification

In the report, the USTR commends Canada for its recent legislative reform. The two initiatives cited in the report were Canada’s passage of the in June 2012 - legislation that represents Canada’s implementation of the WIPO Internet Treaties - and the introduction of the in March 2013 - which attempts to target commercial-scale trafficking of counterfeit products. Both of these initiatives were endorsed by the USTR, ��who went on to suggest in the report a further expansion of this type of legislation in order to give more power to border officials to seize goods in-transit.

The report was not universally complimentary, however, with the USTR expressing serious concerns regarding Canada’s pharmaceutical industry. One concern that was mentioned was the absence of a right of appeal in the administrative process of Canadian regulatory pharmaceutical approval. In addition, the USTR expressed apprehension regarding the impact of the heightened utility requirements for Canadian pharmaceutical patents. This statement likely refers to the that has taken place over the last decade regarding what constitutes the “utility” required for pharmaceutical patents in Canada; originating from the landmark SCC case .

Reaction to the Report

The movement of Canada from the “Priority Watch List’” to the ‘”Watch List” has been met with some criticism; with some American entities publicly voicing their displeasure with Canada’s new position. The most scathing reaction to the report comes from the Pharmaceutical Research and Manufacturers of America (PhRMA), who stating that they were very “disappointed” with Canada’s changing designation. In the report, PhRMA claims that “Canadian policies and judicial opinions continue to harm international innovators to the benefit of domestic industries” and that the “heightened standard for patentable utility for pharmaceutical patents is inconsistent with Canada’s trade treaty obligations.” The PhRMA statement also contains a critique of India’s pharmaceutical IPR regime - a country that is notorious for their pharmaceutical IP protection. Including these statements side-by-side might reflect the view that the American biopharmaceutical industry has of Canada's pharmaceutical intellectual property laws and policy.

A Precarious Political Climate

Although there have been concerns raised about the legitimacy of the USTR “Special 301 Report” from both and , an evaluation of Canada’s IP regime by its is undoubtedly an important diplomatic and economic concern. Indeed, Canada’s actions over the last few years seem to indicate their intention to conform to the wishes of their American counterparts, with the recent legislative reform that is responsible for Canada’s improvement on the watch list seemingly being a direct response to .

What makes the most recent report particularly interesting is the fact that it has been released at a complex political time period for Canada. The pharmaceutical company Eli Lilly recently launched a , and the (CETA), a free trade agreement between the Canada and the European Union (EU), is bound to be completed in the next few months. The recent legislative changes made by Canada could be viewed as political posturing for the impending CETA, which purportedly has the EU calling for increased . This agreement also allegedly includes an increase in patent protection for innovative pharmaceuticals in Canada at the request of the EU, which for its potential to greatly increase drug costs. However, with drug and health care costs being a sensitive political topic and being significantly in Canada over the next few decades, that the strengthening of IP pharmaceutical protection may not ultimately make it into the final draft of the CETA despite the EU's wishes.

It could be the case that the recent Canadian legislative reform is an effort by Canada to please its biggest trading partners without making drastic changes to its domestic pharmaceutical industry. The issue of rising health care costs is undoubtedly an important domestic political issue, and perhaps the seemingly “Jekyll and Hyde” approach to pharmaceutical and non-pharmaceutical IPR�� is a necessary compromise that Canada has to make in order to function diplomatically with its trading partners while maintaining what it views as a healthy domestic state. It would be hard to name many things that are more complex than trying to adequately fit domestic IP policies within international free trade agreements, but Canada must continue to strive to achieve that seemingly impossible balance. At the end of the day, like in most matters in life (and politics), you certainly can’t please everyone.

Adam Falconi is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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