Claire La Mantia is an IP Innovation Clinic Fellow and a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s Directed Reading: IP Innovation Program course.

In late November 2021, . This lawsuit was made in response to Peloton’s claim that Lululemon’s design patents for these activewear pieces were invalid. Only months later, in January 2022, . Nike’s allegations stem from Lululemon’s recent acquisition of Mirror, a wall-mounted, at-home fitness device that tracks a user’s workouts, fitness progress, and offers a range of exercise classes and training sessions. , while Lululemon has indicated that it will challenge the validity of Nike’s patents for this technology. These cases demonstrate interesting practical considerations that are important for those seeking intellectual property protections to reflect on.

Firstly, they illustrate the potential to use intellectual property for both offensive and defensive purposes. On one hand, a party may seek intellectual property rights in order to protect themselves from competitors attempting to use their product. For example, holding a patent allows the owner to exclude others from making, using, or selling the patented invention or design and claim compensation where a party does so without the patent holder’s permission, as Lululemon and Nike are attempting to do. On the other hand, a party may utilize intellectual property as part of an offensive business strategy. A party may obtain a patent so that they can establish their own freedom to operate and make, use, or sell the patented invention or design. Likewise, intellectual property can be a source of revenue where the party grants licenses to selectively allow others to make, use, or sell the invention or design.

Secondly, the cases indicate potential strategies a party can use to defend against claims of infringement. A common defence is to claim that the patent a party is being accused of infringing is invalid and should not have been granted in the first place. The allegation of invalidity could be based on a claim that the patent fails to fulfill one or multiple of the criteria required for patentability. In the case of a utility patent, this could include that the invention is not new, does not demonstrate an aspect of ingenuity, is incapable of use, or is related to subject matter that has been excluded from patentability. For a design patent, a claim of invalidity could include that the design is not new or that the feature pertains primarily to function rather than ornamental design. Both Peloton and Lululemon challenge the validity of the patents they are alleged to have infringed, with Peloton arguing that Lululemon’s design patents are anticipated and/or obvious and Lululemon claiming that Nike’s utility patents are overly broad. Another potential strategy is denying that infringement occurred by differentiating the alleged infringing act from the patent in question. Peloton is attempting to use this strategy against Lululemon by claiming that both companies have distinctive and recognizable brands and the designs of Peloton’s athletic wear would not be confused with Lululemon’s, and thus would not constitute infringement.

Lastly, these cases demonstrate the potential for continuing costs associated with intellectual property protections. While intellectual property protections are important business investments and can serve as a means of enforcement and protection of rights, the intellectual property system is not fool-proof and parties may have to make ongoing investments to defend their own registered intellectual property as well as defend themselves against claims of infringement. , and have each made significant investments in intellectual property protections pertaining to activewear, accessories and exercise equipment, including utility patents, design patents, and trademarks. However, all have been involved in intellectual property disputes, both as the intellectual property rights holder and the alleged infringer.

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Claire La Mantia is a Guest Writer and a 2L JD Candidate at Osgoode Hall Law School.

Determining whether an employer or an employee owns the intellectual property of a work produced during the course of employment can be challenging. While an employer may have invested significant resources to facilitate the production of an invention and wish to capitalize on their investment, their employee also likely devoted significant time and energy into developing the invention and may feel entitled to benefit from its associated IP. Although different types of intellectual property protections may apply, including , patents, industrial designs, trademarks, and trade secrets, this article will focus on private and public sector employees’ patent rights to inventions produced during the course of their employment.

Private Sector Employees

The contains no express provisions pertaining to the ownership of inventions produced by an employee during the course of their employment. However, common law jurisprudence indicates that employees are generally presumed to own patent rights in these circumstances. One is where an employee is specifically hired to invent something for the employer, as was determined in In determining whether an employee was , courts may consider eight factors:

1. The employee was hired for the express purpose of inventing.
2. At the time of hiring, the employee previously had made inventions.
3. The employer put incentive plans in place to encourage inventions and product development.
4. The employee's conduct following the creation of the invention suggests that the employer is the owner.
5. The invention is the product of the employee being instructed to solve a specific problem or invent a solution.
6. The employee sought help from the employer or consulted the employer in making the invention.
7. The employee created or developed the invention with the employer's confidential information.
8. It was a term of the employee's employment that they could not use ideas that they developed to their own advantage.

As such, employees intending to patent inventions made during their employment should be aware of the purpose of their employment and the assistance or instruction provided by an employer in developing the invention.

A written contract including an express contractual term contrary to the presumption of employee ownership . Each party would have to approve an express provision granting the employer ownership of any work produced by an employee through their employment in order for the provision to apply, but the provision would provide employers a stronger guarantee of IP protection than relying on the “hired to invent” exception. Private sector employees should read contracts carefully to understand their obligations to their employer and whether the presumption of employee ownership of IP produced during the course of their employment could potentially be refuted.��

Public Sector Employees

In contrast to the private sector’s presumption of employee ownership, a reverse presumption applies to the patent rights of public sector employees. The Public Servants Inventions Act () that any invention produced by a public employee in the scope of their employment duties or made using the facilities or funding provided by or on behalf of the federal government, and inventions connected to or resulting from one’s employment in the public sector, are the property of the federal government. This to any new and useful art, process, machine, manufacture or composition, or any new and useful improvement.��

However, public service employees may obtain the relevant minister’s permission to file a patent for their invention outside of Canada. Public service employees may also file patents for their inventions in Canada by disclosing their status as a public servant on their patent application. Ministers may public servant inventors for their work where the invention in question is determined to be the property of the federal government.

The question of IP ownership in the public sector could unfold in Canada following the firing of a publicly employed scientist at the country’s highest infectious disease laboratory, the Winnipeg-based National Microbiology Lab (NML). A recent article revealed that Dr. Xiangguo Qiu filed patents for two inventions in China, each pertaining to work that she conducted as a civil servant at the NML in Canada. As a public service employee, the PSIA applies to these inventions. The question remains whether Dr. Qiu obtained permission from the applicable minister to patent the inventions in China or violated the PSIA in filing patents outside of Canada.

Generally, it is important for all employees to be aware of their obligations to employers and their right to retain ownership of their inventions produced as part of, or in connection with, their employment. Part of this awareness is an understanding that an employee’s obligations and rights may differ depending on whether they are employed in the private or the public sector.

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Canada has notably faced challenges in its ability to procure vaccines, quickly falling behind other countries in our vaccination campaigns despite contracting to receive more than enough vaccines for the population. While Canada’s vaccine rollout has increased in recent weeks, still of our population has been fully vaccinated as of March 14^th, 2021. This is compared to and a staggering

One proposed mechanism for increasing the availability of vaccines worldwide is to loosen patent protections held by vaccine makers over their products. Some countries, including South Africa and India, have sought a waiver under the Trade-Related Aspects of Intellectual Property, or TRIPS, agreement from the World Trade Organization, which would temporarily suspend global intellectual property protections for COVID-19 vaccines during the pandemic. While attempts to secure a waiver have thus far been unsuccessful, another potentially useful tool available under TRIPS is compulsory licensing.

refers to the circumstance where a government permits a third party to produce a patented product without the patent holder’s consent. While compulsory licensing typically requires the user to make an effort to obtain the patent holder’s consent to produce the product, this during a “national emergency”, of which the pandemic would qualify according to Article 31(b) of TRIPS.

Canada has a history of using compulsory licensing, including to support the availability of more affordable pharmaceuticals. For instance, in June 1969, Parliament amended the to allow companies to produce generic copies of pharmaceutical products that were still under patent protection. Recent amendments to the Patent Act under Canada’s COVID-19 have strengthened the Federal Government’s ability to address vaccine shortages through the use of compulsory licenses. Specifically, the are aimed at allowing the Federal Government to permit the “construct[ion], use, and [sale of] a patented invention to the extent necessary to respond to a public health emergency that is a matter of national concern”. The Government must still provide notice and pay royalties to the patent holder; however, the government has no further obligations to negotiate with patent holders.

While compulsory licensing is an attractive potential tool to increase the availability of vaccines, if Canada pursues these licenses, it must first address domestic vaccine production capacity. Unfortunately, similar to the Federal Government’s , Canada’s vaccine manufacturing capacity is also deficient. If Canada commits to increasing its domestic vaccine production capacity, whether through the construction of new facilities or by fitting existing industrial facilities to be capable of producing vaccines, then the use of compulsory licensing could be a future tool to produce generic COVID-19 vaccines or boosters in Canada. These efforts will be particularly important given recent concern that and in the future to control the spread of COVID-19.

Regardless of the strategy employed, Canada clearly needs to improve its approach to secure vaccines for Canadians, and the domestic production of generic vaccines through compulsory licensing should be considered as a potential strategy moving forward.

Claire La Mantia is a 2023 JD Candidate at Osgoode Hall Law School interested in intellectual property, privacy, and health law.

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