2018 was also a celebratory year for Prof. David Vaver. To honour Prof. David’s Vaver’s double induction into the Order of Canada in 2017 and as a Fellow to the Royal Society of Canada in 2018, IP Osgoode released a . The video features many experts, colleagues and mentees and friends from around the world who participated in the symposium we organized in his honour to showcase his important contributions and leadership in intellectual property law. And to close the year, we edited a of the in his honour! Some must read gems include contributions from The Hon. Marshall Rothstein, The Hon. Roger T. Hughes and Justice Michael Manson.

On the wider IP front, 2018 also marked the year the Government of Canada finally recognized the importance of IP legal clinics in the country’s innovation ecosystem in its . The recognition of IP clinics that enable law students to learn more about IP, help businesses get a sense of their IP needs and facilitate access to the profession that can provide quality IP advice is very much in line with the objectives of the Innovation Clinic. Founded in 2010, the Innovation Clinic was the first IP legal clinic of its kind, operating in partnership with an established accelerator and an international law firm. Eight years later, the Innovation Clinic has become the largest IP legal clinic operating in Canada and provides important IP information, awareness, and assistance for our clients as well as crucial experiential learning experiences for Osgoode Hall Law School students.

To meet increasing demands for services, the Innovation Clinic has built on its successful partnership with , which began in 2016, and in 2018 also partnered with . Lawyers at both firms volunteer their valuable time to supervise our law student volunteers as they assist start-ups, entrepreneurs, and inventors across Southern Ontario.

At the end of 2018, I completed my research project on IP legal clinics in Canada, which was funded by the at the (CIGI) and will soon be released. The report underscores the importance of supporting IP legal clinics operated by Canadian law schools. Universities, law schools, and law professors can play a pivotal role in addressing the IP education and innovation gaps in Canada. Crucially, IP legal clinics work to fill gaps in the broader innovation ecosystem while offering students practical, hands-on experience in IP and related business law matters. Underscoring some of these issues, I published an article on the and the , entitled “How the IP Strategy Could Transform Canadian Innovation.” We look forward to publishing the report and continuing further dialogue among law schools, industry, law societies, the Canadian Intellectual Property Office (CIPO), levels of government, and other relevant stakeholders regarding the creation of a network of IP law clinics across Canada.

Top Ten Most Read Blogs of 2018

As we look back to the three main areas of IP, there are some noteworthy highlights.

Patents

Canadian statutory amendments, patent rule changes, tense multinational trade negotiations, and sui generis cannabis legislation broke new ground in the patent law landscape.

C-86 and the Patent Act Updates

was introduced in 2018 and clarified patent rights in court cases, experimentation with existing patented materials, compliance with technical standards, and prior use rights. Passed on October 29, 2018, the bill amends the Patent Act as a piece of omnibus legislation.

binds both original and subsequent standard essential patent (SEP) owners to licensing obligations. n (section 52.1) also extends to certificates of supplementary protection (CSPs), which offset the approval period for pharmaceutical products.

, written communications can be used as evidence to counter assertions made by the patentee when construing patent claims. These communications pertain to the prosecution history of said patent (presupposing their relevance to legal claims). Furthermore, a legal authority now exists to set requirements for cease-and-desist-like letters sent to patent holders. The complaint is valid if the recipient is in Canada, meaning foreign patent holders can seek compensation. These claims are to be handled in the Federal Court.

Furthermore, to encourage innovation, experimental use of patented materials to further the craft is now generally permitted by statute (as opposed to the prior limited, common law exception). The experimental use analysis is conducted by the courts and includes an assessment of the intent in experimentation.

Prior user rights are also expanded. If before the priority filing date a person commits an act considered infringement and then commits the same act post-priority, it is no longer an infringement of the patent or CSP. Exceptions apply only in good faith situations, whereas intentional violation of the patent’s information counts as infringement.

Changes to Canadian Patent Rules

December saw the release of CIPO’s , to align Canada’s patent regime with Patent Law Treaty (PLT) standards and fulfill the . While the draft rules were still open for public comment throughout December 2018, the draft clarifies what the proposed changes are likely to be and how they will be implemented.

The new regulations overhaul many of the administrative rules surrounding patent applications, and include greater leniency with respect to payment of fees after the filing date (balanced by a new late fee), processes governing documents submitted in languages other than English or French, and allowing applicants to follow up with missing descriptions or drawings (though this mechanism cannot be used to change the scope of the invention). Photographs can now be used in limited circumstances where the invention does not otherwise lend itself to schematic drawings, and a single nucleotide or amino acid sequence can be the subject of any one application. Furthermore, patent applicants are now able to designate a “common representative” for joint applications, who will be allowed to represent the others in dealing with the Patent Office.

Requests for priority will be brought into compliance with PLT and Patent Cooperation Treaty (PCT) standards, and it will no longer be possible to prevent publication of an application by withdrawing the application when an applicant provides consent for early publication.

The time limit for examination will be decreased from five to four years after filing, with a four-month time limit (down from six) to respond to an examiner’s report, rejection, or notice of allowance. Amendments can still be made to an application after allowance, but the new rules will set up a more rational system where a notice of allowance can be withdrawn at the applicant’s request, followed by re-examination and amendment. The new rules will also allow correction of “obvious errors”, ostensibly a broader definition than the current “clerical error” standard (which is an attempt to bring patent law in line with trademarks and industrial designs).

The new rules also set up a ‘due care’ requirement for applications abandoned or patents deemed expired because of missed maintenance fees, or applications abandoned as a result of failure to request an examination. This, combined with more direct third-party rights protections for infringement, are meant to compensate for the longer time limits for correcting application deficiencies.

Finally, procedures surrounding divisional applications (those where inventions are split off from an original parent application) will be mostly unaffected, though the codification of guidelines currently contained in practice notices is likely to make the system easier to navigate.

The new Patent Rules present a much awaited and needed consolidation (Canada signed the PLT in 2001 but has yet to ratify it), and one which will hopefully bring some clarity to both applicants and CIPO. As with any regulatory framework, however, only time will tell if the changes achieve this goal.

CUSMA

While CETA was the international agreement that pre-occupied the IP world in 2017, one of the biggest stories this year was the tense, down-to-the-wire negotiation around the . Out of a broad chapter on IP, the largest impact of CUSMA on Canadian patent law is likely to be changes to rules for biologics and for applicant-CIPO interactions.

Biologics are molecules produced by living organisms which have pharmaceutical applications. These drugs are at the cutting edge of both treatment () and diagnostic tools (like [ELISA]). The fact that CUSMA will, over a five-year transition period (Article 20.90), increase the term of market exclusivity for biologics to 10 years from the current standard of eight (Article 20.49) has therefore caused some concern about what the new agreement may mean for��.

The second big change for patents in CUSMA affects how applicants interact with the CIPO. Those seeking a patent will now be able to expect compensation in the length of the patent grant for unreasonable delays in application processing, with the caveat that a delay can only be unreasonable if more than five years have passed since filing or three years have elapsed since a request for examination. (Article 20.44)

Cannabis

The , which legalizes recreational use of cannabis for individuals of 18 years of age or older, came into force on October 17th, 2018. Allowing nationwide use of the drug and possession of up to 30 grams, this effectively ends the prohibition on cannabis in Canada (although provinces can approach legalization in their own way by restricting public use or sale).

The for the drug is estimated at $4.9-$8.7 billion per year, with an anticipated market impact of up to $22.6 billion. Due to its lucrative market, IP protection is likely to be sought by manufacturers in all avenues of production of cannabis.

According to the , novel varieties of cannabis are eligible for patenting given they are novel, non-obvious and stable. Cannabis patents are not restricted to the whole plant under the Patent Act – patents can be filed incorporated in the plant, patches, gels, combinations of ingredients, cannabis extracts, methods for extracting active ingredients (eg. THC), and even devices used to ingest cannabis. When it comes to the plants themselves, for a variety to be considered “new” it can be sold for up to 1 year within Canadian borders and 4 years outside prior to its PBR application.

It is expected that the rate of patent applications will skyrocket with the new legislation passed. Prior to the Cannabis Act, only medical marijuana was available in Canada; with general legalization, it is likely that companies seeing this economic opportunity will enter the field at an expanding rate. By in June of 2018, there are at least 60 companies in the cannabis industry listed on the Toronto Stock Exchange.

Trademarks

While 2018 made its advancement new trademark legislation, we are still trekking through uncharted territory, as the effects of the new changes are far off into the future.

Progress for New Trademark Legislation

Finally, on November 2018, the government June 17, 2019 as the coming into force date of amendments to the Trade-marks Act. The amendments (see , and ), included key changes to several areas, such as trademark selection, opposition, and enforcement:

• Trademark applications will no longer require a date of first use;
• The definition of a trademark will expand in scope, giving protection to scents, sounds, colours, etc.;
• Trademark applications will no longer need a Declaration of Use;
• New registrations will have a 10-year renewal term;
• Canada will join the Madrid Protocol;
• Canada will adopt the Nice Classification of goods and services; and
• There will be an associated fee-per-class for trademark applications.

Both academics and practitioners expressed concerns over the amendments. Much of this concern stems from the fear of taking advantage of the elimination of the requirement to prove “use”. ��Indeed, since the announcement of the amendments, there has been a significant increase in the number of applications covering all Nice classes of goods and services, in anticipation of the amendment.�� However, the Government of Canada took steps in 2018 to address these concerns by announcing in the a proposal for bad faith trademark opposition and invalidation grounds and a requirement for registrants to use their trademark within three years of registration for their enforcement rights to be valid.

included not only the proposed opposition grounds and three-year limitation period announced in the National IP Strategy but also additional changes, such as:

• Imposing statutory limits on published official marks;
• Allowing the Registrar to order costs, case management, and confidentiality for documents filed during contested proceedings;
• In cases where parties are appealing the Registrar’s decision, only allowing new evidence to be filed with leave from the Federal Court; and
• Implementing a new Act to license and regulate trademark agents.

As the Bill has only been tabled recently, it still has a long way to go before its effects will be felt. Furthermore, there is uncertainty as to whether the new bill will adequately address the shortcomings of the 2014 amendments to the Trade-marks Act.

CUSMA’s Implications for TMs in Canada

Canada will be in compliance with many of the CUSMA provisions when the amendments come into force. The CUSMA that are already expected to be implemented next year – such as ratifying the Madrid Protocol and allowing the registration of scent marks. The CUSMA also explicitly provides that in civil proceedings related to trademark counterfeiting claims, each party�� must establish a system that provides for any “pre-established damages”, or “additional damages” sufficient to deter infringements. Also, the nation in question must establish a means that will allow them to “fully” compensate the rights holder in question. The current provisions in the Trade-marks Act already allow for punitive damages for trademark infringement, however, these statutory damages can help to reduce litigation costs, and thus may be favorable for future court proceedings.

Reaffirming the Broadening of “Use” for TM Registration to Include Ancillary Use

The recent Canadian Federal Court decision in (Hilton Worldwide) – which is in line with the decision in – affirms that the physical establishment of a hotel in Canada is not necessary to constitute the “use” of a trademark in Canada. Consequently, in Hilton Worldwide, the Federal Court overturned the Registrar’s decision�� to remove the Hilton Hotel’s registration of the trademark WALDORF-ASTORIA in association with “hotel services”, where a so-called ��was not present in Canada. As part of the Hilton Hotel’s defence, it was stated that they offered several services which were accessible to Canadians, and that these services were associated with the trademark WALDORF-ASTORIA. These services included the operation of an interactive website, a worldwide registration service, and discounted offers to customers who pre-paid for rooms and loyalty programs.

This decision brings these “hotel” cases in line with decisions that pertain to retail store services, such as . However, only time will tell how broadly this decision will be applied in the future, especially with the upcoming legislative changes to Canadian trademark law. Some cases may be consistent with this decision, by focusing on the interactivity of a website and the “benefit” given to Canadians. Nevertheless, other cases may instead focus on whether hotels offered pre-paid reservation services to Canadians, or perhaps even on when the registration was issued. However, it is clear that this decision has made an important impact that will have ripple effects on trademark law in the upcoming years.

Official Marks are not Absolute Defences to Infringement Claims

On October 4, 2018, the Federal Court ruled on a new trademark issue in . In its decision, the Court held that official marks are not absolute defences for trademark infringement.

The case was based on Quality Program Services Inc. (QPS)’s registered trademark, “EMPOWER ME”, which was used in its energy awareness program. In 2013, the Ontario government created a website titled “emPOWERme” that also focused on energy use and generation. Despite receiving official mark status under section 9(1)(n)(iii) of the Trade-marks Act, the Court found that the Ontario government’s “emPOWERme” mark infringed on QPS’s registered trademark.

This decision clarified certain limitations on official marks, which are trademark rights that can be granted to public authorities. These marks are powerful tools, with features that place them well above typical registered trademarks. For example, official marks have several , such as they cover all goods and services, and they are not subject to opposition proceedings, renewal, or expungement.

Copyright

CUSMA

CUSMA emphasizes that “the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer of technology.” In furtherance of this objective, the CUSMA includes increased protection for material covered by the Canadian . Specifically, Canada has agreed to extend the term of copyright protection from “life plus 50 years” to “life plus 70 years” for works authored by natural persons. Works other than those by natural persons will be protected for no less than 75 years from the date of first publication.

Furthermore, under CUSMA, Canada has agreed to implement stronger border security measures to prevent counterfeiting. Canada will assign agents to oversee in-transit shipments and stop shipments to investigate the suspected presence of counterfeit products. This extends the government’s previous commitment to preventing counterfeiting of goods as part of the negotiations of the Trans Pacific Partnership (TPP) agreement, which included both the United States and Mexico but was abandoned by the Trump Administration. Additionally, under CUSMA, Canada will maintain its for copyright infringement claims. Finally, CUSMA outlines the criminal and civil remedies available for removing digital watermarks from works or interfering with digital locks.

Combating infringement

In March of 2018, the Federal Court of Canada released its decision in Therein, the court granted the plaintiff’s motion for default judgement and awarded $5,000,000 in statutory damages against the defendant, who was found to have infringed the plaintiff’s copyright by streaming Greek television programming for which the plaintiff was the exclusive distributor in Canada.

Relatedly, in , the Federal Court of Appeal upheld an Anton Piller order granted against the defendant on the grounds that there was a strong prima facie case that the defendant had infringed the plaintiff’s copyright by operating a website offering “software add-ons” that allowed users to stream infringing television and movie content.

On October 2, 2018 the Canadian Radio-television and Telecommunications Commission (CRTC) released its on a website-blocking application filed by Fair Play Canada – a coalition of media companies including Bell, Rogers, Corus and CBC/Radio Canada. Fair Play applied to the CRTC to institute a website blocking regime to combat online piracy; a proposal that received significant as well as numerous interventions both for and against the proposal. Ultimately, the CRTC rejected Fair Play’s proposal on the grounds that the proposed regime is not within the CRTC’s jurisdiction.

Copyright Notice-and-Notice System

The (Bill C-86) includes a number of proposed changes to Canadian IP laws. One such proposal is a plan to deal with the use of the notice-and-notice regime to send settlement demand letters to internet users suspected of pirating copyright-protected works. This attempt to address abuse of the notice-and-notice system follows up on an initial flagging of the issue in the , which was announced in Spring 2018.

Under the notice-and-notice system, a copyright holder who suspects that their protected work is being infringed by a party can send notice to that party via the party’s internet service provider (ISP). adds additional wording to the stating that such notices cannot contain an offer to settle, nor a demand for payment or personal information, among other specifications. These amendments mean that an ISP could refuse to deliver notice to a user, if the notice at issue contains any prohibited demands.

Review of the Copyright Act

2018 saw the continued review of the ��Copyright Act. As part of the review, the Standing Committee on Canadian Heritage conducted , which drew briefs from Canadian , , and – to name just a few.

Simultaneously, the Standing Committee on Industry, Science and Technology conducted its review of the Copyright Act. One area in which many stakeholders weighed in on was educational copying, in particular fair dealing and decreasing revenues from licensing of educational material. On the one hand, a , recommended that fair dealing be limited so as not to cover educational copying of works that are commercially available. On the other hand, and argued against circumscribing fair dealing, recommending that the government take different steps towards supporting Canadian authors and publishers.

Copyright and Internet Service Providers

In September 2018, the Supreme Court of Canada released its decision in . At issue was whether the respondent film production companies should bear the costs borne by Rogers as an ISP in complying with a Norwich order to disclose the identities of its customers accused of infringement. Ultimately, the SCC sided with Rogers, reversing the Federal Court of Appeals’ previous decision. While the SCC remitted the issue to the motion’s judge for a determination of the quantum of Rogers’ entitlement to costs, the decision is an important precedent for ISPs who are compelled to disclose their customer’s personal information.

Written by Giuseppina D’Agostino, Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from IPilogue Editors: Summer Lewis, Lauren Chan, Imtiaz Karamat, Neda Foroughian, Peter Werhun and Rui Shen, and from IPilogue Senior Editors: Stephen Cooley, Sebastian Beck-Watt and Dominic Cerilli.

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During my placement at ISED, as part of Osgoode's , I was able to attend many of the Standing Committee on Industry, Science, and Technology’s (INDU) of the Canadian . These meetings involve a selected group of Members of Parliament who are well-versed in the Canadian digital and creative economies. The INDU Committee is with studying and reporting on the activities of stakeholders in any market where copyright legislation may be implicated. Interested parties – known as ‘witnesses’ – are able to appear before the INDU Committee, explain what their organization does, how copyright reform can impact their operations, and what reform ought to occur to accommodate their interests in the years to come. As for my role, I was able to sit back and observe a panel of MPs choreograph the delicate balance of competing rights among a diverse range of experts and industry leaders.

Copyrighting a Choreographic Work

Speaking of choreography, the submissions by Kate Cornell, Executive Director at the Canadian Dance Assembly at INDU’s taught me a thing or two about how copyright law interacts with choreographic works. Kate Cornell argued that the definition of ‘choreography’ under s.2 of the Copyright Act ought to be amended to reflect the present-day use of dance movements. The Canadian Dance Assembly sought a broadening of the definition to include dance movements that occur on digital platforms, citing as support purchasable in the billion-dollar game . However, the boundaries of what constitutes a protectable choreographic work or a mere physical movement were left undefined.

In its deliberation, the INDU Committee considered several examples, including , the similarities between , and the from Stanley Kubrick’s Dr. Strangelove. The Committee cited discontent from Chance the Rapper, who claimed that games like Fortnite , to frame the loss of control creators experience over their choreography and how software with a free-to-play business model can subsist, at least in part, by . However, drawing inspiration from pre-existing works is a cornerstone of creative arts and, in some cases, a third-party repurposing a work for a new audience can have a on the original creator’s popularity.

Accessibility and Usability

Balancing competing interests is also paramount to ensuring creative and educational content is available to all Canadians. The INDU Committee’s invited representatives from the (CNIB) and the (CCD) to address the accessibility and usability needs of Canadians under the current copyright regime. The CNIB��proposed amending the Act to ensure copyright protection “[could not] be granted to a literary work unless the production of such a work is done in an alternate format for persons with a print disability”. John Rae, speaking on behalf of the CCD, suggested an amendment that would prohibit the disbursement of federal funds to “any program, policy, contract or grant that would contribute to perpetuating barriers or creating new ones” and drafting legal documents in plainer and more understandable language. On the other hand, publishing creative or educational works in alternative, accessible formats incurs additional production costs which can impact the competitiveness and market success of publishers – especially so for smaller publishers.

At first glance, the proposed amendments may seem strict, but they highlight the importance of understanding the barriers faced by many Canadians. For example, the inability to access alternative format academic materials can impede one’s ability to participate and succeed in a post-secondary environment, consequently disadvantaging one’s competitiveness in the job market.

In Summation…

In shaping Canadian policy, it is important to reflect on the bigger picture and consider the real-world impact of legal debate. Attending INDU Committee meetings humanized legal discussions and presented the unique opportunity to observe the law beyond the books – as advocates and politicians regularly do.

Written by Dominic Cerilli.�� Dominic is a Senior IPilogue editor and JD candidate at Osgoode Hall, and�� was enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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Per the Federal Court’s decision in ,��the Promise Doctrine holds that if a patent application promised a particular utility, it was necessary to prove that function in order to acquire the patent. Furthermore, in the absence of any promised utility, proving even a miniscule amount of utility is enough to be found patentable. Since patents are deemed invalid if there is an insufficiency of utility under s. 2 of the patent act's definition of 'invention' and per paragraph 46 of , the effect of the Promise Doctrine was to substantially raise the bar for applicants that alleged benefits to their inventions by denying patent protections for those who failed to meet the stated promises.

In court, the series of decisions and appeals in the AstraZeneca Canada Inc v Apotex Inc suit focused on whether the Promise Doctrine should be used to find AstraZeneca’s ‘653 patent – pertaining to optically pure salts of the (-) enantiomer of omeprazole, esomeprazole – invalid because the patent promised more utility than it could deliver.

At the , Justice Rennie found two alleged utilities: using esomeprazole as a proton-pump inhibitor (effectively reducing stomach acidity) and having superior pharmokinetic and metabolic characteristics so that its therapeutic profile in clients would be more stable. By applying the Promise Doctrine, the ‘653 patent was found invalid for not meeting the utility requirement of of the Patent Act for the alleged superior therapeutic profile, despite the utility of esomeprazole being proven as a proton pump inhibitor. At the , the judgment of the lower court and the applicability of the Promise Doctrine were affirmed.

However, the decision from the SCC demonstrated that the Promise Doctrine and the analyses of the lower courts run contrary to the form of the Patent Act by conflating the requirements set out in s. 2 and s. 27.3. demands there be some useful aspect of a creation for it to be regarded as an invention at law. If some usefulness is present, the invention must be disclosed as specified in of the Act in its patent application. In , Dickson J clarified that the usefulness standard set out in s. 2 of the Patent Act acts as a “condition precedent to an invention” whereas s. 27.3 merely sets out disclosure requirements that are to be interpreted independently of s. 2. So, the Promise Doctrine goes against the independent interpretation of these two sections of the Act by demanding that the utility requirement set out in s. 2 be fulfilled or predicted at the time of filing, or otherwise find the invention pre-condition for patentability vitiated.

The SCC noted that the Promise Doctrine is also at odds with the Act where multiple utility promises are made. Under the Doctrine, all utility promises would have to be satisfied for the usefulness threshold in s. 2 to be met. However, the opinion of the SCC is that any single use “that is demonstrated or soundly predicted by the filing date” would be adequate to satisfy the demands of s. 2. Requiring all utility promises to be met, would be “unfair” and can lead to “otherwise useful invention[s] to be deprived of patent protection” simply because some promises were not demonstrated or predicted.

Given the highly experimental and sometimes tangential nature of innovation, a lack of protection for inventions that have managed to achieve some, but not all, of the promised utilities highlights the the Promise Doctrine appears to have on research and development. Citing the work of , and , , the SCC found that “inventions are like a many-faceted prism: multiple claims… covering all facets are allowed in the same patent if a single general inventive concept links them.”

Considering a multiplicity of promises is especially important in pharmaceutical development and organic syntheses where broad, overarching concepts like an improved therapeutic profile may be anticipated, but not proven in full. The possibility of off-target therapeutic effects or side-effects can make an exacting prediction of utility difficult and, under the Promise Doctrine, may bar legal protection. After all, as the SCC established in ., “the patent regime has a dual purpose – to incentivise [creation] and to encourage inventors to publicly disclose [their knowledge] for society’s benefit.” If the bar for acquiring a patent is set too high, some inventors may get cold feet.

Dominic Cerilli is the IPilogue content editor and social media coordinator as well as a JD candidate at Osgoode Hall Law School.

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Included in these discussions were a keynote address by Sanjay Mewada (Chief Strategy Officer of Netcracker) on the shift to digital services and impact of tech giants expanding their territory on the competition telecom players will increasingly face. Companies like provide business support and operation support systems, software-defined networking, and network functions virtualization to help communication service providers meet the expectations of their customers.

At the CTS17, Mewada emphasized the importance of moving away from traditional communication services and towards the adoption of digital models in order to thrive in the modern telecommunications industry. He highlighted that emerging features, like being able to proactively control bandwidth allocation to optimize and enable active monitoring of usage by customers, are setting new standards for internet service providers.

With Google’s (allowing consumers to choose which device on a Wi-Fi network receives the fastest connection) and already on the market, Mewada asked if consumers “would really want to go back to not having any control over the allocation of your bandwidth?” Indeed, once these features become “a matter of priority and focus” in the eyes of telecommunication corporations, more and more consumers will “know what is possible, [and] no longer like to stay with the bare minimum,” he said.

So, what is the outcome of tech giants like Google, Apple, and Hulu introducing new features into the telecom sector? “Why did Google have to come in to show a cable service provider how to be a digital service provider?,” he asked.

Mewada noted, “it is not about coming up with a brand-new thing, it is about providing the consumer with the right digital experience.” This shift to focussing on the client experience is key in ensuring the success of the telecommunication industry and not losing substantial market share to tech competitors.

Of course, with any adaptation also comes challenge. Mewada emphasized how the need to accelerate the delivery of new services to market remains hurdle for services providers. With the expectations of clients constantly changing and the avant-garde of the home-digital experience being increasingly bombarded with new innovations, according to Mewada there “needs to be a retooling of the processes” behind moving products from conception to implementation.

Mewada noted that the innovations provided by Google, Netflix, and other tech giants are actually blessings in disguise because they “open the market to expect new things” from service providers. In response, service providers merely “need to be there to provide that” to stay competitive, he said.

One approach involves adopting a “fast-fail” model. The fast-fail model seeks to optimize the movement of a digital service from conception to market through the use of small sample sizes as a preliminary testing ground. If it succeeds, then escalate – if it fails, then forget it and move on. While fairly new to telecommunications, this model has been adopted by Alphabet’s X research division, which to everything from driverless cars to augmented reality eyewear.

Furthermore, he noted that part of remaining successful in the contemporary market will involve anticipating future trends and shortening the turn-around time for providing clients with the same quality of services and products competitors offer. When applications like can rise to billion dollar valuations in the span of a couple years, having an interdisciplinary team that is ready to roll out high-quality services is of the utmost importance for preventing clients from switching to a more up-to-date provider.

In the end, keeping pace with the rapidly evolving tech sector is paramount to remaining competitive and maintaining and expanding a telecom business’s market share. Accordingly, clients will consistently expect to receive the latest and greatest in home entertainment and utility without feeling left behind tech giants, like Google and Apple, who are putting pressure on the telecommunication sector to offer a higher standard of service. ��In a dynamic and fast-paced field, perhaps Netcracker’s slogan of a business’s “most important step [they will take being] their next one” captures the pressure traditional telecommunications service providers will feel if they do not approach the industry proactively.

Dominic Cerilli is the IPilogue content editor and social media coordinator as well as a JD candidate at Osgoode Hall Law School.

***

��The brings together the leadership of Canada’s telecom, broadcast, and IT industries. For its 16th year, the CTS focussed on and featured keynote presentations and panel discussions on the range of issues facing industry and public policy makers in Canada. IP Osgoode and the IPilogue team members thank the CTS’ organizers ( and ) and for their generous support to allow us to attend.

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What is Open Science?

Scientific journals have been a convenient medium for accessing compilations of scientific findings for over 100 years. Normally, a scientific journal focusses on a defined range of scientific topics and offers access through paid subscriptions or the purchase of individual articles. The tradition of paywalls can prevent fellow scientists or aspiring academics from accessing, understanding, and potentially integrating relevant scientific findings into one’s own work.

In contrast, open science is a growing trend which makes research findings available to the public free of charge. The movement goes one-step farther by also binding subsequent users by the same conditions of free distribution to support a broader network of free-flowing information. In a field where data is of the utmost important in developing scientific procedures and experimentation, the movement towards an open dissemination of findings seems like the only way to organize research. However, free distribution may overwhelm prospective readers through the sheer volume of scientific literature that is produced or cause readers to misconstrue scientific findings without summaries by relevant authorities, which would often accompany traditional paid journal entries. Furthermore, the complicated and highly competitive nature of scientific research often obliges scientists to keep their findings to their research groups or parent institutions for fear of competitors reaping the benefits of many years of testing hypotheses. So, when a tired and weary research group finally has a “eureka” moment, what would motivate them to share a potential cash cow with the world at large?

MNI’s Reasoning Behind the Backing of Open Science

, the director of the MNI, that the benefits of the MNI opening the doors to its neurological findings greatly outweigh the costs. The nervous system, consisting of the brain, spinal cord, and peripheral nerves, is one of the most, if not the most, complex part of the human body. Accordingly, understanding its functionality and developing treatments for diseases affecting such a delicate and perplexing biological system is incredibly challenging. This has led to a relatively low output of effective treatments for diseases of the brain and nervous system despite increasing public pressure to identify the etiology of neurological and psychiatric diseases.

By becoming the first world-class institution to fully promote open science, MNI hopes that its researchers’ preliminary findings will receive increased exposure and be used in drug-development projects across various institutions. Having more eyes on the MNI’s data, findings, and experimental methods and waiving some will likely allow neurological innovations to move more quickly from inception to the patent stage. This would be in contrast to the more traditional course of scientific development, where scientists regularly encounter barriers to accessing data or experimental findings of similar institutions that would speed up the progress of their own research.

The Risks to MNI’s Approach

Of course, the drawbacks to offering open access include risking a possible loss of grants and patentable products for those who invest time and energy into critical preliminary stages of scientific development. In the public context, this may mean scientists are not recognized for their findings and the likelihood of receiving grants to support further innovative research is reduced. In the private context, research groups may have their findings taken advantage of by companies who develop a patentable product and introduce it into the market at a high cost to consumers.

Since scientific development also occurs in small, incremental steps, the findings of one research group may not initially seem substantial, but can turn out to be important in the eventual development of a patentable drug which revolutionizes neurological therapeutics. A research group may lose sources of revenue if they decide to waive traditional intellectual property rights to their findings and only later realize their work was a crucial step in developing many marketable technologies. Furthermore, despite the esteemed nature of scientific professions, acquiring funding can be incredibly difficult since the patentability and marketability of future products will often not be evident in an exploratory project. However, such exploratory projects still are a fundamental link in the chain from theoretical conception to industrially applicable therapeutics.

How does MNI Overcome these Concerns?

While patents can generate significant income for researchers, Dr. Rouleau explains that there are ethical obligations to promote scientific discovery. There is always some risk that, in publicly disseminating research data, the Holy Grail of science will be made available without any intellectual property rights afforded to its original finders. This can lead to competition among industrial leaders who may seek to ensure any marketable products that draw upon open science findings are patentable and protectable at law. However, sequestering such an important finding to one institution may belie the objectives of scientific institutions such as MNI. In conducting laboratory experimentation or clinical trials, neurologists and other scientists working on medical therapeutics are ultimately trying to solve contemporary health problems and allow those afflicted with debilitating diseases to live with dignity and freedom from everyday discomfort and pain.

Looking Forward as a Community

What makes the movement of the MNI interesting, is that the institution’s focus on early-state neurological research allows for a smoother transition from closed to open science. This is where Copyleft practices can help promote a more effective form of scientific development. By acting as a leader in open access and open intellectual property distribution, MNI’s historic move may inspire other institutions to openly share their results as well.

It’s unclear what the effect of MNI’s support of open science will be, but one hopes that it will lead to a more collaborative scientific community driven by an increasing sense of joint innovation and sustainable research funding. Integrating a more careful examination of whether one’s scientific discoveries are worth patenting and whether a patent would generate substantial returns throughout the scientific research process may promote more cautionary patenting and a greater understanding of what legal rights are necessary for sustainable research in an interdependent field. Furthermore, the development of open science can allow smaller research institutions to contribute in a more meaningful way to broader scientific discourse by not necessarily creating new research findings, but interpreting results and offering new perspectives.

Similarly, open science can inspire youth who are considering a career in science to engage with the state of the art and witness scientific discovery as it develops in the literature and market. However, the interests of third parties who have existing intellectual property rights would need to be balanced with those of academic institutions who want to make the patented techniques or methods available to the public, free of charge. This may lead to insurmountable hurdles to open access, but with good reason. The revenue generated by some patents may be necessary to a third-party’s business model and funding further scientific experimentation. Consequently, in moving forward as an interdisciplinary community, constructive negotiation and foresight to the marketability of scientific discoveries will be paramount in ensuring adequate access to information is maintained without infringing on the sustainability of institutions or third-parties.

Dominic Cerilli is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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What is CRISPR?

Some scientists believe the design and development of new biomolecules is as much an art as it is science. The ��discussed, and used, by Dr. Pearlman capitalizes on an adaptive immunity system found naturally in bacteria and archaea that uses clustered, regularly interspaced short palindromic repeat (CRISPER) DNA segments to fend off invading viruses. In naturally adapting to a virus invading the cell, CRISPR associated proteins (Cas proteins) will create a spacer unit of genetic code that is unique to the invading virus and incorporate this spacer into the CRISPR region of the cell’s genome. This unique spacer unit will then be transcribed (that is, converted from double stranded DNA to RNA), associate with Cas proteins to form a functional complex, and then target and inactivate the very same type of virus that led to the creation of the spacer unit.

In the laboratory, genome editing uses the functional complex found in this adaptive immunity mechanism to insert or remove genetic code from the genome of a cell. By attaching a synthetic, guiding portion of RNA (sgRNA) to Cas proteins they can be directed to a portion of the genome, through complimentary base pairing with the sgRNA, where Cas will recognize a portion of the genome and cut it to either insert a new region or to remove a portion and disrupt the expression of a gene. By cutting out sections of DNA a gene can be disrupted and lose its functional expression in the cell. In other words, it will no longer be able to produce the molecular products responsible for its former physical trait. By inserting new regions of DNA, the genome can be expanded to confer resistance to invading pathogens, such as viruses, or to express new protein products that can add or enhance the cell’s function. For example, a new portion of DNA may be inserted that codes for a digestive protein not normally found in the cell and, consequently, grant a new molecular digestive mechanism.

What does Genome Editing have to do with Law?

Dr. Pearlman noted that there has been an explosion of scientific literature covering the CRISPR system of genome editing since 2010 and it appears that the momentum will only grow in the coming years. The ability to edit genomes can allow for the expression of new protein products that can be of great commercial value as well as pave the way for new medical treatments that circumvent traditional pharmaceuticals. Additionally, Dr. Pearlman noted that the CRISPR system can be used to produce heritable traits – that is, changes that can be transferred from a parent to their offspring. With this sort of molecular modification becoming more pragmatic, it becomes paramount to have a thorough understanding of the biochemical expression pathways that govern genomic expression to keep an eye on the ethical implications of modification. If human genome editing were to become available, should those with advantageous genomic modifications be treated differently by public health systems? To whom should these technologies be made available, if ever? These questions are beyond the scope of current genomic technology but, with the growing pace of CRISPR methodologies, designs may soon start to reach more readily into the macroscopic domain.

What Makes Scientific Designs Different?

With the cost of biochemical research and development increasing and a billion-dollar entry fee for the drug and biomolecular development market it follows that when an industrially relevant molecule is finally created the developer should be able to recuperate their investment and benefit from their work. Normally, the boundaries of property rights require contextual understanding: what is the nature of comparable products, if the new product’s design is generic or obvious, and if the new product can have a place in its intended market. The differentiating criteria of the sciences become pronounced when considering the esoteric nature of the discipline. How can one reasonably expect a thorough consideration of the distinguishing criteria for obscure scientific concepts, like base pair fidelity, when the requisite knowledge is held only by a few people, like Dr. Pearlman, who have committed years, if not decades, to the study? The nuanced nature of genetics can make innovations in genome editing or CRISPR technology appear to be near imitation; however, the modification of a single nucleotide in the genetic code can have a profound impact on the success and possible application of a biotechnology.

Synthesis, Structure, and Industry

What amount of scientific knowledge is sufficient in legal practice? that a special breed of IP lawyer will arise to confront the high demands of contemporary science and technology patents. Considering the high financial stakes and the significant likelihood that a new molecule or molecular technique will fail the requisite safety tests at any of a multitude of stages, a lot of designs are left in the laboratory. A re-engineering of the approach or scrapping the project in its entirety may follow, meaning product patents should not be initiated until after the molecule has been proven safe for its regular use instead of when it is first designed or synthesized in the lab. Additionally, research and development can indirectly prioritize self-benefit over scientific collaboration since scientists rely on design details to learn about their ever-developing field and most details are kept secret until after a patent has been granted.

This is where innovation becomes conservative and structure becomes especially important. Does a single elemental substitution in the genetic code constitute a new product if the application remains the same? What about changing a single gene to modify a physical characteristic that relies on multiple genes? While certain business practices, such as non-competition deals, are commonly found outside of the sciences, unique can arise from small chemical modifications which effectively extend a patent beyond its expiry date through the issuing of a new patent for a highly similar molecule. Furthermore, patents may be sought for generic parts of biotechnology procedures that are nonessential to its action, prohibiting competitors from including strategies in their approach and significantly , or even demolishing, a competing synthesis. Lastly, meeting the testing and safety demands of different communities poses an for introduction into a global market due to different national regulatory standards.

So, What Makes It My Molecule?

The same fundamental concepts that apply to patents outside of genome engineering also apply to those inside the discipline but with a stringent demand to understand the nuances of molecular design. An integration of mechanistic knowledge may prove to be key when evaluating possible distinguishing criteria among patents filed for similar compounds but it is ultimately up to practicing lawyers to integrate sufficient scientific knowledge to accurately capture the scope of their client’s designs.

Dominic Cerilli is the Content Editor for the IPilogue and a JD Candidate at Osgoode Hall Law School.

[1] Dr. Pearlman's talk was organized by The 91��ɫ Collegium for Practical Ethics and The 91��ɫ Centre for Public Policy and Law under the leadership of Ian Stedman.�� Support for the event was provided by IP Osgoode, McLaughlin College, 91��ɫ - Faculty of Health, 91��ɫ - Faculty of Science, and 91��ɫ's Office of the VPRI.

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If you were born in the late 1980s or early 90s or have young children, you have probably encountered a red-cheeked mouse called Pikachu or any of the hundreds of other that exist in the �ʴǰ�é���Dz� media franchise. While the premise of catching colourful creatures is rather straightforward, its simplicity and charm belie its commercial value.

The �ʴǰ�é���Dz� franchise started as a pair of handheld video-games but currently spans 19 television seasons, 20 movies, 10 cinematic shorts, 2 television specials, a 20-year-old trading card game, 27 video games, a multimillion dollar smartphone application, and many other enterprises. So, when considering the substantial amount of success the franchise has had, why might the legitimacy of the �ʴǰ�é���Dz� name not be held in the same esteem as other brands? One possibility is that the youth-oriented nature of the brand casts doubt on its potential; however, with its revenue earnings standing at ��the name and associated characters are well worth protecting.

The Difference a Name Makes

The �ʴǰ�é���Dz� brand can have a substantial impact on the public’s perception and purchasing habits of goods. For example, compare and contrast the success of ��last two mobile gaming applications: ��and . Both games feature location-based, augmented reality gameplay with king of the hill style competition between players. However, there is a drastic difference in the success of the two games. Despite being released two and a half years earlier, ��with only a tenth of ��on the Google Play store. Given the similarities in the core mechanics of gameplay, the fact that both games were developed by the same company (Niantic), and that both use the same map databases on which their augmented reality features work, it seems likely that the main contributor to the difference in public reception of the titles is the �ʴǰ�é���Dz� branding. Thus, when considering the protection of intellectual property rights for even youth oriented products, it is important to consider the full scope of the effects a simple change in name and characters can have on otherwise similar products.

Fandom

The �ʴǰ�é���Dz� universe has experienced a significant amount of growth since its inception, which is partially attributable to the thriving fandom and associated subculture. Having mediums to discuss interests or share themed artwork is��good publicity that compounds the awareness and recognition of the name-brand. While this sense of camaraderie among consumers has helped substantially, sometimes the limits of what is lawful are crossed. ��sought an injunction over the inclusion of two �ʴǰ�é���Dz� characters, Pikachu and Snivy, in promotional material for a �ʴǰ�é���Dz� themed event. At first, it seems like a straightforward case: the defendant did not acquire permission to reproduce the two creatures and the plaintiff wanted their IP rights respected. The peculiarity of this case comes from its context within the tech, fantasy, sci-fi, gaming, art, and internet subculture.

The contested promotional material was for a sold-out, �ʴǰ�é���Dz� themed party at the , a large and well-established gaming convention founded��in 2004 by the authors of . The ��is partly attributable of these types of social events, where like-minded individuals can meet, discuss their interests, and foster recognition for their hobbies. So, when a �ʴǰ�é���Dz� themed party to celebrate the start of PAX is cancelled, there is some damage to the promotion of the subculture itself. That is to say, the people who are using the intellectual property of others unlawfully in a promotional context are often also the��individuals who have indirectly developed the franchise and contributed to its popularity.

To the disappointment of many fans, the �ʴǰ�é���Dz� themed party was cancelled because of the lawsuit. The plaintiff, �ʴǰ�é���Dz� Company International Inc., put forth an initial settlement offer for damages and its attorney fees. In response, the self-representing defendant who organized the party��turned to the �ʴǰ�é���Dz� fandom through crowd-funding to cover the costs of the settlement and successfully raised enough money. However, the defendant, Ramar Larkin Jones, did not respond in time to the offer and published a ��from the �ʴǰ�é���Dz� Company detailing the settlement, which is generally an unwise decision in the normally confidential process of settlement discussions. What the this did achieve for the defendant was substantial community outcry over the lawsuit, with , , , and many other publishers within the subculture expressing dissatisfaction with the �ʴǰ�é���Dz� Company suing one of its own fans. In response to this backlash the �ʴǰ�é���Dz� Company lessened the settlement to a against the defendant’s unlawful reproduction of copyrighted material, who accepted the new resolution.

Moving a Franchise and��its Subculture Forward

Obviously, lawyers��cannot allow the free use of copyright-protected images, like our friend Pikachu, without any restraint. However, by being overly inflexible about the use of any character with a vague likeliness to a �ʴǰ�é���Dz� the brand itself may be damaged. Consider Maroon 5’s latest music video for their song , which features a star-studded cast of celebrities, including Ed Helms, Sarah Silverman, Vince Vaughn, and Shaquille O’Neal, being chased by throngs of people looking to “catch” them on their smart phones in a manner similar to �ʴǰ�é���Dz� Go’s mechanics. There is a strong resemblance in the video between certain costumes and �ʴǰ�é���Dz� characters, with front-man Adam Levine’s costume appearing to be based on the Squirtle �ʴǰ�é���Dz�. Yet the homage paid by Maroon 5 is likely to be of great benefit to the �ʴǰ�é���Dz� brand due to the association with a . This becomes��especially important when considering that the widely popular �ʴǰ�é���Dz� Go game has lost . Ultimately, the protection of IP rights for a franchise must be a careful balancing act that does not preclude the possibility of growth through fandom, since��the fans are the same people��who are responsible for the brand’s success.

Dominic Cerilli is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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