Prof David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and Emeritus Professor of Intellectual Property & Information Technology Law at University of Oxford. This is an abstract from Prof Vaver's recently published article which will also appear in the Intellectual Property Journal. You can read the full article either on or .

The post The Perplexities of Patent Prosecution History: Procedure over Principle? appeared first on IPOsgoode.

Descriptions of the available positions are reproduced below, with details for applying at the bottom of the page:

Senior IPilogue Editors

Senior IPilogue Editors review contributors’ content before it is approved by the Managing Editor and posted by the Content Manager on the website.

Benefits:

• Profile on our website
• Byline with photo on the articles that you contribute
• Access to forum where you can share ideas with IPilogue Contributors
• Name included on the website’s main menu with a page dedicated to your contributions

Responsibilities:

• Revise, edit, and proofread content from IPilogue Writers and Guest Writers to ensure both a neutral perspective and high-quality writing
• Content will be divided between Senior Editors
• Contribute a minimum of 1 article per month
• Keep track of content reviewed and update Managing Editor and Content Manager about progress
• Liaise with Writers about clarifications and corrections needed for articles

Qualifications:

• Exemplary revising, editing, and proofreading skills
• Strong writing, research, and critical thinking skills
• Strong organization and communication skills, including providing regular updates
• Ability to meet deadlines and turnaround work quickly
• Interest in learning about IP law and Technology issues
• Respect/openness for differing opinions and evidence-based issue analysis
• Preference will be given to:
  • Osgoode JD or LL.M students
  • Writers who have actively contributed to the IPilogue in the past

��

IPilogue Writers

IPilogue Writers will be in charge of contributing timely articles related to IP law, technology, and related legal issues to the blog.

Benefits:

• Profile on our website
• Byline with photo on the articles that you contribute
• Access to forum where you can share ideas with other Contributors
• Name included on the website’s main menu with a link to your articles

Responsibilities:

• Contribute at least 1 article every 2 weeks (for a minimum of 8 articles over the summer); Writers may contribute more articles earlier in the summer to be spaced out over the term
• Keep track of articles written

Qualifications:

• Exemplary writing, research, and analysis skills
• Interest in learning about IP law and technology issues
• Respect/openness for differing opinions and evidence-based issue analysis
• Preference will be given to:
  • Osgoode JD or LL.M students
  • Writers who have actively contributed to the IPilogue in the past

��

Application Details

Please submit the following documents to iposgoode@osgoode.yorku.ca:

• Cover letter (outline your interest in IP law, as well as your relevant writing/editing experience)
• ��é���ܳ�é
• Updated Transcript (unofficial is acceptable)
• Writing Sample: a 750 word (max) blog article about an IP issue

All positions are part-time and voluntary, running from May-August 2021 with the possibility of continuing during the 2021/2022 academic year.

If you are applying for a Senior IPilogue Editor��position, please address whether you would be interested in an IPilogue Writer position if you are not hired as a Senior IPilogue Editor. If your application is chosen for further consideration, you will also be required to complete a short editing exercise after you apply.

Please don't hesitate to contact us if you have any further questions. We thank all applicants for their interest. We will only contact those selected for an interview.

The post IPilogue Summer 2021 Team - DEADLINE EXTENDED! appeared first on IPOsgoode.

Mitacs designed the BSI program for students to find employment this summer and to help participating partner organizations to restore or modify their business operations in response to the COVID-19 pandemic. This is the first year that Mitacs will run this program. Our students will be able to further their legal knowledge beyond the classroom through practical work on real world projects.

Here is some more information about each project:

3D Bridge Patenting and Commercialization Research

has developed a secure digital medication platform through which health practitioners and other authorized care providers can connect with patients remotely. The device will help to ensure that the medication is properly administered to patients, specifically the elderly, patients with comorbidities, and those who take addictive or high-cost medication. Krystel Ametepeh, 1L student and IP Innovation Clinic Fellow, will work under the supervision of Karima Bawa, CEO and in-house lawyer of 3D Bridge, to provide legal research services in intellectual property, health and privacy law and to address the legal requirements associated with commercialization amidst this product’s pre-commercial rollout.

Innovative Educational and Marketing Tools for Prospective IP Rights Owners (Bereskin & Parr)

(B&P) has struggled to market their services and educate clients without their usual in-person events. With funding from Mitacs, B&P will hire Bonnie Hassanzadeh, 2L student and IP Innovation Clinic Fellow, to create educational and marketing tools for various purposes, including training for new staff and educating prospective and existing clients. Under the supervision of B&P Partner Reshika Dhir, Bonnie will also research marketing strategies about tailoring these materials to various clientele and determine the most effective media to convey the relevant information. Some of these materials will be available for use by our IP Innovation Clinic.

Interaxon Scaling Project

is a Toronto-based company that helps customers to build rewarding meditation and sleep practices to lead healthier and happier lives. As the COVID-19 pandemic has increased their need to address mental health concerns, Interaxon is looking to increase the commercialization of its products and services. The funding will allow Androu Waheeb, 1L student and IP Innovation Clinic Fellow, to work alongside Naseem Bawa, General Counsel at Interaxon, in developing licensing arrangements for the company’s relevant IP and seeking FDA approval to make Interaxon’s devices more accessible to users.

We are very grateful to Mitacs for approving IP Osgoode's proposals in this inaugural year of their Business Strategy Internship program. We would also like to thank our supervisors at 3D Bridge, Bereskin & Parr, and Interaxon for working hard on such short notice to make space for our students and put our proposals together. We look forward to seeing how our students grow and what they accomplish with our partner organizations.

The post 3 IP Innovation Clinic Fellows to Receive Mitacs Business Strategy Internships appeared first on IPOsgoode.

Positions Available: Innovation Clinic Fellows (2-3 positions).

Students will mostly assist clients with patent or trademark law matters. Their remaining time will be spent working��on other IP and start-up business related needs as they arise. Tasks may include:

• Patent prior art searches;
• Trade-mark searches;
• Other tasks as assigned and supervised by the supervising lawyer.

Term: Summer 2021 with the possibility of extension for the school year of 2021/2022.

Commitment: This is a part-time, OPIR qualifying, volunteer position. Fellows are expected to��provide approximately 2-3 hours a week with opportunity expand.

Training: While a general understanding of intellectual property law is helpful, interest is more critical.

Qualifications:

• Fellows must be Osgoode Hall Law School students.
• An interest in IP law, technology and commercialization law.
• Responsiveness and a commitment to client service.
• Attention to detail and ability to write clearly and concisely.
• Excellent time-management, organizational, and interpersonal skills.

Application Process:

Deadline: Monday, March 22, 2021 at 8 am

Please provide the following materials via email (subject: Application: IP Innovation Clinic Fellow) to iposgoode@osgoode.yorku.ca:

• One page cover letter. Please outline your interests in IP law in addition to other areas of interest. For reference, see current fellow bios.
• A copy of your résumé.
• Unofficial grades, if available

Only those selected for an interview will be contacted.

The post CALL FOR APPLICATIONS: Summer 2021 IP Innovation Clinic Fellows appeared first on IPOsgoode.

Eligibility

To be eligible, you must be currently enrolled as a JD candidate at Osgoode Hall Law School.��

All applicants must possess strong grades, exemplary organizational skills, be proficient in legal research and writing, and have a strong interest in intellectual property law.

Term

May 2021 to August 2021, with a possibility of continuing on for the 2021/2022 academic year.

The successful candidates will receive compensation.

Application Procedure

To apply, please submit:

1. A cover letter;
2. A copy of your resume;
3. A copy of your grades (can be unofficial grades; please include any previous degrees); and
4. A sample of your written work on any topic of your choice (please limit to 3-5 pages).

to��iposgoode@osgoode.yorku.ca��by��March 19, 2021.

We thank all applicants in advance, only those students who will be interviewed will be contacted.

The post CALL FOR APPLICATIONS - Summer 2021 Research Assistants appeared first on IPOsgoode.

We are looking to hire Senior IPilogue Editors, IPilogue Writers, and a Content Manager.

Senior IPilogue Editors (2 positions available)

Senior IPilogue Editors review contributors’ content before it is approved by the Managing Editor and posted by the Content Manager on the website.

Term: May - August 2021

Benefits:

• Profile on our website
• Byline with photo on the articles that you contribute
• Access to forum where you can share ideas with IPilogue Contributors
• Name included on the website’s main menu with a page dedicated to your contributions

Responsibilities:

• Revise, edit, and proofread content from IPilogue Writers and Guest Writers to ensure both a neutral perspective and high-quality writing
• Content will be divided between both Senior Editors
• Contribute a minimum of 1 article per month
• Keep track of content reviewed and update Managing Editor and Content Manager about progress
• Liaise with Writers about clarifications and corrections needed for articles

Qualifications:

• Exemplary revising, editing, and proofreading skills
• Strong writing, research, and critical thinking skills
• Strong organization and communication skills, including providing regular updates
• Ability to meet deadlines and turnaround work quickly
• Interest in learning about IP law and Technology issues
• Respect/openness for differing opinions and evidence-based issue analysis
• Preference will be given to:
  • Osgoode JD or LL.M students
  • Writers who have actively contributed to the IPilogue in the past

��

IPilogue Writers (up to 15 positions available)

IPilogue Writers will be in charge of contributing timely articles related to IP law, technology, and related legal issues to the blog.

Term: May 2021 – August 2021

Benefits:

• Profile on our website
• Byline with photo on the articles that you contribute
• Access to forum where you can share ideas with other Contributors
• Name included on the website’s main menu with a link to your articles

Responsibilities:

• Contribute at least 1 article every 2 weeks (for a minimum of 8 articles over the summer); Writers may contribute more articles earlier in the summer to be spaced out over the term
• Keep track of articles written

Qualifications:

• Exemplary writing, research, and analysis skills
• Interest in learning about IP law and technology issues
• Respect/openness for differing opinions and evidence-based issue analysis
• Preference will be given to:
  • Osgoode JD or LL.M students
  • Writers who have actively contributed to the IPilogue in the past

��

Content Manager (1 position available)

The Content Manager is responsible for preparing all content to post on the website and making sure that we have enough content each week.

Term: May 2021 – August 2021

Benefits:

• Profile on our website
• Byline with photo on the articles that you contribute
• Access to forum where you can share ideas with other IPilogue Writers and Guest Writers

Responsibilities:

• Preparing articles for publication on the IP Osgoode website (including tags and categories)
• Finding or preparing images to accompany articles
• Co-ordinating between Senior IPilogue Editors, Managing Editor, and IPilogue Writers or Guest Writers as necessary

Qualifications

• Strong organizational skills
• Strong attention to detail
• Ability to meet tight deadlines and adapt to changes
• Interest in learning about IP law and technology issues
• Respect/openness for differing opinions and evidence-based issue analysis
• Preference will be given to:
  • Osgoode JD or LL.M students
  • Writers who have actively contributed to the IPilogue in the past

��

Application Details

The deadline to apply for all positions is Friday, March 26, 2021. To submit your application, please send the following documents to iposgoode@osgoode.yorku.ca:

• Cover letter (outline your interest in IP law, as well as your relevant writing/editing experience)
• ��é���ܳ�é
• Updated Transcript (unofficial is acceptable)
• Writing Sample: a 750 word (max) blog article about an IP issue

Please note that all positions are part-time and voluntary. Please include in the subject line which position you are applying for. If you are interested in more than one position, you may tailor your application to the position that you are most interested in, but please indicate in your email all positions to which you are interested in applying.

If you are applying for a Senior IPilogue Editor position, please address whether you would be interested in an IPilogue Writer position should you not be hired as a Senior IPilogue Editor. If your application is chosen for further consideration, you will also be required to complete a short editing exercise after you apply.

We thank all applicants for their interest. We will only

The post CALL FOR APPLICATIONS: Join the Summer 2021 IPilogue Team appeared first on IPOsgoode.

This past Monday, the Federal Court published the Honourable Justice Fuhrer's decision in the matter. We anticipate a full analysis and commentary on the decision on our site next week. But in the meantime, you can read Justice Fuhrer's decision .

The post Decision in "Sim & McBurney v En Vogue Sculptured Nail Systems Inc." appeared first on IPOsgoode.

With Canadians' mounting frustration��and the dwindling prospects of exiting��this pandemic any time soon, it is vital that we unite as a nation to innovate. How Canada continues to respond to the pandemic will also define how we respond to future global challenges. Leading the development of new vaccines, more effective personal protective equipment, and new and improved systems��of distribution and administration of the vaccine are just some instances of what is necessary now. This pandemic has highlighted our societal inequalities and our fractured innovative landscape.

The university, one of Canada’s cradles of innovation, must continue to innovate out of this crisis and future crises. With innovation more critical than ever, how do we increase collaboration, coordination, and access to salient data and information during prolonged isolation?

Intellectual property (IP) is a powerful legal tool to foster innovation. It merits a context-specific approach on when, and whether, to protect assets from the inventor/ startup stage to the scale-up phase. However, COVID-19 has amplified the challenges faced by our brightest researchers and innovators. They are unable to access laboratories, have limited access to funds to start up a company, lack the know-how and support, and do not know where to go to obtain the needed help to protect their inventions. Under these conditions, IP can go undetected until it is too late. Patents, trademarks, and copyrights protecting valuable work are not well understood, and often never see the light of day. Finally, when IP is detected and advised to be protected, the innovation costs are prohibitive, starting with the patent pro- cess costing upwards of $20,000 to protect a single patent.

It is no wonder then how Canada, a country with so much talent and potential, is still playing catch up to other countries’ patent filings and, importantly, commercialization successes in the form of licensing deals, startups, and scale-ups from their own valuable IP.

As a response, closer partnerships between universities and industries��are becoming commonplace. Take as��an example the University of Oxford��and AstraZeneca trailblazing partnership to tackle the global pandemic with a COVID-19 vaccine. While these university-industry partnerships can help, they also risk a power imbalance between Canadian universities and multinational companies. There is no guarantee that Canadian jobs will be generated and retained in Canada, even though they may be founded on Canadian science and innovation.

Another promising mechanism is the use of university commercialization clinics such as the IP Innovation Clinic at 91��ɫ’s Osgoode Hall Law School. The clinic is the first of its kind, where law firms supervise law students who work directly with clients to formulate an IP strategy. This initiative accounts for more than 6,000 hours of pro-bono work, saving innovators close to $2-million to date during a nascent stage where resources are scarce.

One of the clinic’s success stories is Skygauge Robotics, a drone robotics company that landed a $3.3-million funding deal, and did so during a pandemic through the clinic’s support. Skygauge’s ambition is to build a company that keeps people innovating and working in Canada — a perfect example of how providing a friendly and supportive innovation ecosystem can be a game-changer to Canada’s innovation economy.

Seeing the need to continue innovating, especially during the pandemic, the IP Innovation Clinic, seized on the possibilities of artificial intelligence (AI). Enter Isaac Pewton, the IP Innovation ChatBot that��can now answer any number of intellectual property questions. Powered by AI, the ChatBot learns and becomes smarter the more questions are asked of it. The goal is to balance the informational asymmetry in the innovation ecosystem and make valuable IP knowledge accessible to everyone for free.

This ChatBot is more important than ever to underrepresented communities, including women and Indigenous peoples who have typically not fared well in our in- novation ecosystem, and whose conditions are exacerbated from the pandemic. The ChatBot empowers these disenfranchised and remote communities with valuable information and direct access to the clinic for further services for free.

The ChatBot itself is an innovative example of a successful university-government-private partnership. Funded by Innovation, Science, and Economic Development Canada’s IP Clinics Program, pursuant to the federal government’s National IP Strategy and developed by a team of lawyers and technical experts at Norton Rose Fulbright Canada LLP, and Osgoode Hall Law School, the AI-powered ChatBot, by providing highly valuable IP information, can help Canadian entrepreneurs scale and learn quickly to innovate us out of this crisis and help future proof Canada against the next one.

Prof Giuseppina D’Agostino is a senior fellow with CIGI’s International Law Research Program (ILRP), effective November 2016. She is��the 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.

The post Asking ‘Isaac Pewton’ to Innovate Out of a Crisis appeared first on IPOsgoode.

DRAMATIS PERSONAE: ����������������������

Justice R. Bitter, judge (J)

Sue N. Ewon, plaintiff (P)

Wigmore Cross, plaintiff’s counsel (PC)������������������������������������������������������������������������������������

Chick Fowler, defendant (D)

Ms Chiff Maker, defendant’s counsel (DC)

PARTIAL TRANSCRIPT OF CROSS-EXAMINATION OF PLAINTIFF SUE N. EWON:

DC: So, Ms Ewon, you say the defendant’s chicken-plucker infringes claim 1 of your patent?

P: Yes.

DC: Because it includes chicken-pluckers with a widget, and the defendant’s plucker has that widget?

P: Yes.

DC: Did you ever tell anyone that claim 1 doesn’t include chicken-pluckers with a widget?

PC: I object, what plaintiff thinks her claim means is irrelevant. That’s for the judge.

J: Yes, I think that’s right. Ms. Maker, I decide questions of law.

DC: All right. (To P:) When you applied for your Canadian patent, did your patent agent write to the examiner to say that pluckers with widgets were excluded?

P: I’ve no idea.

DC: I show you Exhibit K. You recognize that letter from your patent agent to the examiner?

P: Yes, she sent me a copy.

DC: You see where it says “Enclosed is a new claim 1 that corresponds substantially to the claim submitted in prosecution of the related United States patent application”?

P: Yes.

DC: You did have such an application in the United States, didn’t you?

PC (to J): With respect, Your Ladyship, I have no idea where this is all heading.

J: Nor do I, but I’ll cut Ms. Maker some slack for the moment.

DC: Thank you. (To P:) I repeat, you did have an application filed in the United States for the same invention as in this case, didn’t you?

J: Yes.

DC: Are you aware that the attorney handling your American application wrote to the American examiner, saying that a new claim 1 he was submitting would overcome the examiner’s objection that chicken-pluckers with widgets were known to the prior art?

PC (to J): I object most strenuously to that whole question. Even if my client personally wrote to the American examiner saying that, it is inadmissible here.

J: Why? Because it wasn’t said in Canada to a Canadian examiner?

PC: Yes.

J: Would it have been admissible had your client written the same thing to the Canadian examiner?

PC: I don’t believe anything said anywhere else than in a Canadian prosecution has anything to do with this case. May I draw Your Ladyship’s attention to the Court of Appeal’s reasons in CanMar at paragraph 70? The Court there said you should be “wary” about allowing anything other than Canadian prosecution history in. And then at paragraph 71, the Court went on to say you should “tread carefully” in admitting extrinsic evidence to interpret a patent claim. And once again in that paragraph, “Opening the door to allowing foreign patent prosecution history into the analysis might lead to overly contentious and expensive litigation.”

J: Well, I am treading carefully and warily, and I haven’t turned the door knob yet. Hasn’t this litigation been contentious and expensive enough anyway? Aren’t you making it more expensive and contentious by raising these sorts of objections? I can’t see why a statement that would be admissible and relevant if made in Gatineau becomes inadmissible and irrelevant if made in Alexandria. What happens in Virginia doesn’t have to stay in Virginia.

PC: With respect, it is not Your Ladyship’s role to question the wisdom of Parliament. Both Justice Manson and the Court of Appeal said very clearly that section 53.1 applies only to communications to the Canadian Patent Office.

J: I am not questioning Parliament’s wisdom, only the awkward statutory language used to translate it. Hasn’t one of my colleagues just decided that even Canadian history isn’t admissible if it’s the licensor rather than the patentee who sues, even where the patentee is a defendant (Allergan Inc v Sandoz Canada Inc, at [126])? Why couldn’t section 53.1 just have said that any prosecution history from wherever is admissible, but its weight is for the court? Is section 53.1 based on any other country’s legislation?

PC: Not that I know, Your Ladyship. It is homegrown, although I accept there may be a few weeds among the roses.

J: What I am saying, I guess, is much what Justice Manson said in CanMar. Here we have the extraordinary circumstance that the Canadian communication expressly refers to the corresponding US application and the clear inference is that the Canadian claim is being replaced precisely to overcome the actual or anticipated citation of the same prior art against the Canadian application.

PC: With respect, that is exactly the same situation as in CanMar, and the Court of Appeal explicitly overruled Justice Manson’s admission of the American file.

J: We have this anomaly then, haven’t we? If the Canadian patent had been granted unchanged and without reference to the US application, your client could have asked for it to be reissued with the changed claim under section 47 of the Patent Act because of an inadvertent mistake. Foreign prosecution history has long been admitted on a reissue application to show there was a mistake and that the reissued patent would be for the same invention. Why allow the foreign file to be admitted to show the reissue was justified, but exclude it to show what the claims now mean?

PC: If that was the position before section 53.1 took effect, then I submit that such foreign history can no longer be admitted in reissue.

J: What do you say, Ms. Maker?

DC: Section 53.1 states that it specifically applies to reissue and no intent to change current Patent Office practice appears. Nor is there any apparent attempt to overrule long-standing cases such as Northern Electric Co v Photo Sound Corp, , where the whole case depended on foreign prosecution history. If foreign history is admissible in reissue to determine the scope of the invention, as I submit it was before and is after s. 53.1, then I cannot see why it is inadmissible where an ordinary patent is involved.

J: Well, it’s a brave trial judge who says the Court of Appeal has decided something per incuriam and should not be followed.

DC: May I make one further point? The Court of Appeal in CanMar relied on a decision of the United States Federal Circuit Court of Appeals to say that the reference in the plaintiff’s letter to the Canadian examiner to “a related United States patent application” wasn’t specific enough to incorporate the corresponding US file. The point on how specific a cross-reference must be to allow another document to be read has not been decided by the US Supreme Court, and I would point out that the Federal Circuit Court of Appeals is a court with one of the highest reversal rates before the US Supreme Court, and especially so in patent cases.

What our Court of Appeal should have done was to apply the general law in Canada on when documents can be looked at together. Cases on the Statute of Frauds are the most obvious source. The Statute requires contracts, such as guarantees or sales of land, to be evidenced by a memorandum in writing, and ever since the 19th century, it has been held that two or more documents can form a single memorandum. Supreme Court of Canada authority going back a century says, and I quote, “parol evidence may be given to connect two documents together which do not expressly refer to each other, but which connection and reference is a matter of fair and reasonable inference:” Doran v McKinnon, , 53 SCR 609 at 611. I can say that is also the law in most Commonwealth countries and state courts of the United States. Not to put too fine a point on it, the US Federal Circuit has gone rogue by making up its own rule of incorporation and ignoring the general law of the majority of state courts.

I submit that in our case the reference to the US application is plain enough in the letter to the Canadian examiner. It is also distinguishable from CanMar in two respects. First, our letter refers to “the” US application, whereas the Canmar letter referred only to “a” related application. We are very specific. Second, the US application in CanMar was abandoned, whereas here the plaintiff’s application specifically claims priority from the corresponding US application which was granted. It is open to the Court to hold the US history admissible on either of these distinctions, since the Court of Appeal specifically refused to express any “firm view on the broader issue of whether foreign prosecution history can be considered under section 53.1.” I ask for Your Ladyship’s firm views now. ��

PC: I submit this case is covered exactly by the Court of Appeal in CanMar and the foreign history cannot be looked at.

D (intervening): You mean Sue can lie to a Canadian judge where she wouldn’t dare to an American one? [Scuffle breaks out.]

J: Ms. Maker, could you kindly restrain your client? [Order resumes.]

Thank you, counsel.

I propose to admit the statement in the US patent file into evidence. I shall not at this stage indicate what weight it deserves or what use I may make of it. This case is not covered by CanMar because the Canadian patent here relies for its priority on a stated US patent. The plaintiff cannot blow hot and cold by then dismissing the very patent from which it claims priority and on which it may well depend for validity in Canada.

The Court of Appeal thought it “a stretch” to incorporate a US patent file on language as general as that which points to “a” related United States application. There is no “stretch” at all here since, as defendant’s counsel submitted, the letter to the Canadian examiner points to “the” related US application, not merely “a” related one. I nevertheless must say that, at a time when we are all urged not to subject patents to “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” (Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183, 243 (HL)), I would be reluctant to have to read the documents leading to the grant of a patent more meticulously than I would read the patent itself.

I am also not sure that incorporation is the mot juste for the ability to follow a signpost and explore the destination to which it points. There is no difficulty in identifying that destination off the face of the Canadian file. Canadian patent law is no Alsatia where the general law stops, nor is it one where the US Federal Circuit’s writ runs. To adapt L.P. Hartley’ s words in The Go-Between, patent law should not be a different country where they do things differently. Law under the Statute of Frauds lets two documents be read together where their “connection and reference is a matter of fair and reasonable inference:” Doran v McKinnon, , 53 S.C.R. 609, 611, which I note was recently applied to a series of emails in Druet v Girouard, at [34]. Canadian patent law should let patent files be cross-referenced that way too. The location of the second file should not matter, any more than it does under the Statute of Frauds. If a multimillion dollar guarantee or land contract can be interpreted and enforced by means of such a connection, so should a patent.

None of the parade of horribles trotted out by the Court of Appeal (CanMar at [71]) is present here. There is no translation problem with the US file, and the Court of Appeal specifically said at [72] that “one should not underplay the public interest in keeping those who have previously disclaimed elements from their patent from re-claiming them in future infringement cases.” I do not expect that the plaintiff will ask me to take such a course, which Locke J (now JA) in Pollard Banknote Ltd v BABN Technologies Corp, at [237] described as “breathtaking.”

I would only add in passing that, when the Court of Appeal comes to take a “firm view” on foreign prosecution history and section 53.1, it may well have to take account of the long-standing practice, sanctioned by consistent Supreme Court authority, of relying on evidence of such history to decide when the reissue of a defective or inoperative patent under section 47 of the Patent Act is warranted or valid.

Ruling accordingly

Prof David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and Emeritus Professor of Intellectual Property & Information Technology Law at University of Oxford. This is an abridged version of a Comment that will appear in the Intellectual Property Journal.

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Most recently, American pop-star Ariana Grande sued the company and its beauty brand, Riley Rose, for $10 million USD for using her while marketing its products to consumers.^[1] The retailer shared wearing Forever 21 products and resembling the likeness of the pop-star across its social media channels and platforms without Grande’s permission. The lawsuit seeks damages for copyright infringement, trademark infringement, false endorsement, and violations to Grande’s right of publicity.

In early 2016, Forever 21 began selling a “,” resulting in many Gucci-loyal consumers noting the resemblance to the high-fashion brand’s signature look. The Italian design house maintains a for the specific blue-red-blue and green-red-green stripe combinations, which were found on the Forever 21 embroidered sweater.^[2]  Upon receiving three cease and desist letters between 2016 and 2017, Forever 21 requested that the courts determine that Gucci does not have a . A United States District Judge ruled in favour of Gucci.

Forever 21 has also been accused of attempting to profit off of the substantial goodwill of both a fashion brand and influencer figure in one single lawsuit. In early 2017, the retailer began offering lookalike versions of the footwear found within Rihanna’s Puma Fenty line. for design patent, trade dress, and copyright infringement, arguing that the company is attempting to trade on the substantial goodwill of both Puma and Rihanna.^[3]

In something of an ironic turn of events, Forever 21 has also found itself at the receiving end of an infringement lawsuit against fast fashion rival and . The Swedish fast fashion giant sued Forever 21 for with respect to its “Beach Please” tote bag. This matter was settled out of court.

With Forever 21 closing a majority of its North American stores, designers and creators may find some comfort in knowing that a major fashion copycat is now out of business. However, with the rise of online retailers and the continuous operations of various other fast-fashion companies, the battle to protect one’s intellectual property rights still remains a prevalent issue with the fashion industry.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

^[1] Ariana Grande-Butera v Forever 21, Inc, and Riley Rose LLC, 2:19-cv-07600 (CD Cal).

^[2] Forever 21, Inc v Gucci America, Inc, et al, 2:17-cv-04706 (CD Cal). 

^[3] Puma SE v Forever 21, Inc, 2:17-cv-02523 (CD Cal).

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