The Ebay case concerned a company that owned a business-method patent for an electronic market, and was in negotiations to license that technology to two website operators.�� After the parties failed to reach an agreement, the patentee brought a successful patent infringement suit against both website operators.�� The District Court, however, denied injunctive relief on the basis that the plaintiff company was willing to license its patent and was not actively practicing the patented invention.�� The Supreme Court in stating that both the District and Appeal courts had failed to apply the proper test, made it clear that an injunction will not automatically follow a finding of patent infringement.

According to Prof. Epstein, the effect of the Ebay decision is such that the ability to now obtain injunctive relief will turn on whether the inventor practices his patent or issues nonexclusive licenses.�� In the latter case, the patentee runs the risk that neither he nor any of his licensees will be able to obtain injunctive relief.�� If this is indeed what happens, Prof. Epstein suggests that users of a patented technology may begin to see themselves as better off without taking a license.�� A patentee’s revenues will decline accordingly, potentially stifling the flow of inventions.

In addition to the rationale of Prof. Epstein, there may be other reasons why the decision of a patentee to issue nonexclusive licenses should not be a factor against injunctive relief.�� If we put patentees in a position of preferring to issue exclusive licenses, we may need to accept a limited output of a patented technology in the marketplace, or an absence of competition in relation to that technology.�� From a consumer standpoint, perhaps that is not desirable.

Prof. Epstein legitimately points out that it does not need to be an all-or-nothing answer to the choice between damages and injunctive relief.�� In land cases, injunctive relief has been historically offered with a time delay to allow the “infringer” the opportunity to wind down activities in an orderly fashion and the same could apply to cases where a software vendor has infringed a patent.

Discussions between companies in relation to the potential forms of technology licensing are not uncommon, and when those negotiations break down, patent infringement suits do result (for a recent example involving Apple and their touchscreen products, see ).�� It will be interesting to see how the Ebay decision is applied as courts are required to remedy patent infringement.

The post Patent Infringement Remedies: Is a Nonexclusive License Worth Less? appeared first on IPOsgoode.

More specifically, the suggestion has been that has potential to become useful for prior art searching undertaken during preparation of a patent application.�� During that process, patent agents must scrutinize publicly available documents in order to ascertain what information is already in the public domain.�� Any publicly available information may narrow the scope of proposed claims in a patent, since a patentee cannot validly claim what is already described in a publicly available document.�� Nor can a patentee claim subject-matter which would be obvious based on publicly available documents.

Although patent examiners and agents do turn to textbooks in preparing and examining patent applications, this can be rare, since textbooks are sometimes seen as being .�� This is because textbooks are typically prepared with general information for use as teaching tools, and are not typically the first choice for publishing cutting-edge advances that are relevant to patent applications.�� On the other hand, periodicals, due to their characteristic frequent publication, are often the first to share novel technological and scientific advances with the public.

Of course, sometimes general information is exactly what is needed for a patent examiner seeking to understand a basic concept or principle in a specific field.�� This concept was addressed by the Canadian Intellectual Property Office (CIPO) in a canvassing the patent law standard on obviousness.�� According to that report, although the test of obviousness was being applied consistently by patent examiners between different fields of technology, the benchmark at which obviousness was being judged .�� One possibility suggested for this observation related to��the benchmark for obviousness which incorporates the “common general knowledge” of the ordinary workman in the relevant scientific field.�� In areas of newer technology, the proposition was that patent examiners had more difficulty determining the content of the common general knowledge and effectively lowered the expected general knowledge for that field.

That report suggested that the lowering of the benchmark was exactly what was happening in the field of biotechnology.�� The study found that very few objections on obviousness were raised by Canadian biotechnology examiners, who felt that the limited knowledge in the field indicated less predictability such that more inventions were being seen to meet the requirement of being non-obvious.�� Correspondingly, examiners were hesitant to allow patent claims to cover subject matter which went beyond the examples cited in an application.

Although that study was published in 1996, the bottom-line has application today.�� If Google Books, or any other service, for that matter, makes good on an attempt to digitize textbooks relevant to an evolving field of technology, it could be that their service will disseminate exactly the type of general, basic information that is required for patent examiners and agents to properly and efficiently evaluate the common general knowledge in that field.

The post Digital Books for Patent Prosecution? appeared first on IPOsgoode.

According to Picard, in the world of cyberspace, scientific “evidence” now increasingly takes the form of anecdotal reports, and “debate” takes the form of personal character assassination.�� The internet allows people to fire off an opinion (however unqualified it may be) with only a moment’s thought and with just the click of a button; and individuals who are not adequately equipped to interpret scientific data are elevated to a platform to comment alongside those who have spent years preparing, compiling and understanding such data.�� At the same time, opinions supported by dubious scientific research (for example, in the area of novel medical treatments and cures) are rampant on the internet and can become accepted as scientific fact.

One of the problems is that the typical layperson is in a difficult position if required to distinguish between so-called quack science and legitimate scientific analysis.�� Many do not have even a basic appreciation for the scientific process or an ability to critically analyze scientific findings.�� According to Picard, this illiteracy in the sciences is part of the reason many are unable to identify dubious health solutions proliferating the internet.

The lack of scientific literacy has been addressed by John Wilbanks, Vice President of Science at , who is currently running the project.�� In a , Wilbanks talked about efforts being made to build a website devoted to preparing “human-readable summaries” of scientific papers in a Wikipedia-type format.�� That type of solution would undoubtedly be of use to many who seek assistance distinguishing between soundly-based science and unfounded hypotheses.

Wilbanks’ efforts at Science Commons also address another issue concerning the availability of scientific data on the internet.�� According to Wilbanks, the copyright system can lock up facts inside scientific papers and prevent movement of information that would otherwise occur freely.�� The creation of Science Commons is an attempt to remove barriers to sharing of information through things like standard copyright licenses in order to convince people that “the public domain is something to be cherished, and not a thing to be avoided at all costs when it comes to things like data.”

The internet has unfortunately been a tool for the worse as far as the spreading of dubious science is concerned.�� Nor has it been used to its full potential since reliable scientific data has remained out of sight or, at least, not readily available to scientists for whom it may be of great assistance.�� But there is clearly an opportunity for the situation to be reversed, and a community-based, information-sharing approach for sound scientific research that will benefit everyone may not be far away.

The post Sound Science in the Internet Age appeared first on IPOsgoode.

The pharmaceutical industry has long taken criticism for the price of medicines, especially ones required for treatment of diseases in developing countries.�� The GSK initiative will counter some of this criticism directly by cutting medicine prices in the 50 least developed countries to no more than 25% of the prices in the UK and US, reinvesting profits from these countries back into local hospitals and clinics, and putting any patent rights it has over chemicals and processes related to neglected diseases into a patent pool so that research can be promoted in those areas.

The move has been received with mixed reviews.�� Although Medecins Sans Frontieres (MSF) has the efforts of GSK, the organization takes issue with the fact that the HIV/AIDS is not being considered one of the neglected diseases.�� According to MSF, there is a gap between what is available for HIV/AIDS treatment and what is needed, and that gap is one that a patent pool could close.���� In particular, MSF has pointed to the necessity for paediatric formulations and studies to address the prevalence of HIV-positive children.

Even though that may be the case, a cautious amount of praise may be warranted.�� The so-called “neglected diseases,” such as tuberculosis and malaria, are disease areas where treatment options are often not fully developed simply because it makes more financial sense for companies to invest in research relating to diseases in developed nations.�� The patent pool is a way to increase the possibility of innovation in treatment options for neglected diseases.�� At the same time,��the move may redefine the comfort level at which other pharmaceutical companies are willing to operate.�� As Chief Executive of GKS, Andrew Witty , “somebody has to move before many people move.”�� With��an industry-leader like GSK being the first to move, that may be enough to reassure other companies to follow along.

MSF and similar organizations undoubtedly have valid concerns about reaching the goal of adequate and affordable treatment options in developing countries.�� However, the GSK move appears to be a good first step towards that goal.

The post Pharmaceutical Industry Jumps Into the Patent Pool appeared first on IPOsgoode.

The Intellectual Property Institute (IPI), an independent UK research body that addresses all aspects of intellectual property law, has suggested (in their report - ) that the data analyses seem to have been skewed to fit preconceived theories.�� One such piece of data was the fact cited in the EC report that generic companies won 71% of all patent cases initiated.�� Although the EC report cites this as evidence of relative overall patent quality, the IPI doubts the soundness of this conclusion since (according to IPI) generic companies will usually litigate on the patents they perceive to be susceptible to a successful court challenge.

Another group, the Intellectual Property Lawyers’ Association (IPLA) emphasized in the symbiotic relationship between originator and generic pharmaceutical companies who both have an interest in the continued development of new products by originators.�� As such, patents for “incremental” innovation can be at least as valuable to society as those covering the original molecules, and should not be considered of dubious value on the basis only of their incremental improvements.

IPLA also considered the topic of ever-greening, saying, “if a competitor adopts a business model whereby it chooses not to compete in certain ways, for example by not engaging in marketing activities, but relies instead upon the marketing activities of the originator companies, does this require the originator company itself to limit its activities so as not to take advantage of the shortcomings of its competitors’ business models?” (at page 10)�� This is a relevant question – who are we to say how companies should compete in the open market?�� As IPLA properly points out, if an innovator refocuses its efforts on an improved version of an older product, isn’t that something for consideration by the relevant national authorities when determining reimbursement and the appropriate physicians��when prescribing?

The Chartered Institute of Patent Attorneys (CIPA) represents patent attorneys in the UK and a similar viewpoint.�� CIPA’s response to the EC’s report is that product development is a continuous process in any industry and inventions will be made (and patent protection sought for those inventions) at all stages of the life cycle of a product.�� If those inventions meet the criteria of patentability, the inventor is entitled to exercise her patent rights as she see fit.

The issues raised in the EC preliminary report are clearly not without debate.�� Although the EC sees some practices in patent law as questionable conduct, the question remains whether this conduct should be restricted in any way.�� Perhaps the final report, due to be published this Spring, will consider the perspectives highlighted by these industry reports.

The post EC Pharmaceutical Sector Inquiry Earns Critical Industry Response appeared first on IPOsgoode.

The event is being covered by IPilogue editors Jonathan Giraldi and Brandon Evenson

9:08 Bob Weese, Chair of the Canadian Intellectual Property Council (CIPC) has begun the forum by welcoming all attendees and��discussing CIPC's committment to various IP initiatives.

10:06: We've been hearing a lot about counterfeit goods and the focus has been on products with serious health consequences.�� A National Geographic film we just saw focused heavily on illicit pharmaceutical products that have led to��deaths, and just now Superintendent Graham Burnside, Director of the Federal Enforcement Branch of the RCMP passed around a packet containing counterfeit samples of a common heart drug seized recently in Canada.

10:32 Aaron Sawchuk, Director, Enforcement and Regulatory Affairs Canadian Recording Industry Association introduced the issues and broadly discussed some of the key components of a robust IP system:

1 - Laws: The importance of having adequate laws to protect IP and encourage the commercialization of IP
2 - Institutions: The importance of government, courts, and agencies to enforce IP laws
3 - Education: The importance of education in changing the demand side of the equation in the trade of illicit goods

10:45 One of the areas Aaron Sawchuk touched on was the importance of institutions in driving IP protection. Jeffrey Hardy, Coordinator for the Business Action to stop Counterfeiting and Piracy with the International Chamber of Commerce further expounded on this subject advocating for greater connection and collaboration between regional organizations such as CIPC with other similar organizations around the world.

11:10 A major achievements being discussed by Brad Hunter, Senior Advisor for the U.S. Chamber of Commerce has been the passage of legislation within the US which sets up and attempts to repair legislative weaknesses in the anti-counterfeit regime. The legislation creates a permanent position for an individuals in the White House who will coordinate activity for anti-counterfeit activities. There is also a grant for $10M per year over the next five years to the FBI and $10M per year over the next 5 years for specialized prosecutors in copyright and trademarks.

1:30 We just heard a perspective from the Honourable Perrin Beatty, President and CEO of Canadian Chamber of Commerce who shared his view that IP crime is the crime of the 21st century.�� Mr. Beatty's perspective as a former Federal minister was especially interesting, as he pointed out that it can be frustrating when multiple trade groups attempt to persuade the government to become involved in an issue.�� In this regard, the formation of the CIPC is of��key importance: it allows��government to understand the perspective of multiple industries through a��unified voice.

2:40 We just wrapped up a panel discussion between IPOsgoode’s own Rex Shoyama and Dr. Tom Corr of University of Waterloo’s Accelerator Centre which commercializes the university’s patents. The discussion canvassed UW’s policy of allowing students and professors to keep 100% of proceeds of their discoveries, and how this policy has fostered innovation and encouraged commercialization in the marketplace. According to Dr. Corr, the UW experience has shown that the gains from gifting and other benefits from spinoff companies has amounted to more than the school would ever get from taking a cut of research��from the outset.

Rex shared the IPOsgoode mandate of reaching out to engage multiple disciplines in the ongoing IP dialogue, and providing balanced and objective research. He highlighted patent benefits��that go beyond economic interests, including the ability to encourage collaboration between researchers and enable great ideas to reach the market place.

3:00 Three panalists from different industries: Declan Hamill, Vice President Legal Affairs and Intellectual Property Policy, Canada's Research Based Pharmaceutical Companies (Pharmaceutical), Joseph Neu, Vice President Engineering Codes & Standards, Electro-Federation Canada (Electrical), and Denis Dyack, President, Silicon Knights (Software) have each presented their perspectives of how Canada's current IP regime is affecting their business, industry, and membership. Common amongst all is the belief that part of the solution is a change in mentality of the consumer. Consumers who understand the potential repercussions of their purchase to both their personal life (eg. drugs that have no medicinal ingredient, or electrical equipment without the proper engineering and safety requirements), to the long-term effect on the Canadian economy and funding of organized crime, may change their purchasing behaviour.

The post Live Event Blog: Global Threat - Local Consequences appeared first on IPOsgoode.

The ruling in Micron Technology,��Inc. v. Rambus, Inc. (Civ. No. 00-792-SLR, 2009 U.S. Dist. LEXIS 1260 (D.Del., Jan. 9, 2009)) penalizes Rambus, a corporation that develops and licenses technology to manufacturers of semiconductor memory devices, such as Direct Random Access Memory (“DRAM”).�� As part of its internal business development plan, Rambus had planned to license and enforce its patented DRAM technology throughout the industry in an attempt to achieve recognition as the industry standard.�� To implement that plan, Rambus had designed a litigation strategy to enforce its proprietary technology, which included a document retention policy.�� That retention policy included pre-determined “Shred Days,” during which employees would destroy documents.�� No records were kept of what was destroyed.

In order to avoid licensing from Rambus, Micron initiated an action seeking a declaration of patent invalidity.�� One of the issues at trial was whether Rambus, through its document retention policy, had breached any duty to preserve potentially relevant evidence and, if so, what the appropriate sanction should be.

In finding in Micron’s favour, the court emphasized that even though litigation of the patents in issue was reasonably foreseeable, Rambus went ahead and destroyed documents relevant to the patents relating to contract and licensing negotiations, patent prosecution, Board meetings and finances.�� According to Judge Robinson, “Rambus knew, or should have known, that a general implementation of the policy was inappropriate because the documents destroyed would become material at some point in the future.” Micron at para. 55).�� Although the penalty of unenforceability was harsh, in the opinion of Judge Robinson, the showing of bad faith was “clear and convincing.”

Although two other courts had previously addressed the potential spoliation of evidence by Rambus (see Rambus, Inc. v. Infineon Techs. AG, 220 F.R.D. 264 (E.D. Va. 2004);��and��Hynix Semiconductor Inc. v. Rambus, Inc., No. C-00-20905 RMW, 2006 WL 565893 (N.D. Cal. Jan. 5, 2006)), only one of those courts held that spoliation had occurred.�� Regardless of the split in outcome, the result serves as a reminder that potentially relevant evidence should be preserved in order to avoid dire results.

The post Patentees: Destroy Evidence at Your Own Peril appeared first on IPOsgoode.

��

The inquiry was initiated in January 2008 because the EC felt that the pharmaceutical markets may not be working as efficiently as they should.�� The EC also expressed the��concern that��the entry of generic medicines into the market were being delayed and restricted.����Since the pharmaceutical sector is, in the words of the preliminary report, “vital to the health of Europe’s citizens,” it is no surprise that the EC decided to take action.�� Their findings implicate industry use of the current patent system as being a major cause for concern.

��

According to the report, one of the biggest issues revolves around “ever-greening.”�� This term refers to the over-abundant filing of patent applications of arguably dubious value which relate in some way to a medicine already covered by patent.�� According to the EC, ever-greening takes place throughout the commercial life of the most profitable medicines and in some cases increases as the expiry date of the original patent approaches.�� The commission found that this strategy discourages generic companies from entering a market due to litigation risks associated with so many patents, even ones of questionable relevance or validity.�� The EC pointed out that even though the majority of patent litigation between 2000 and 2007 was initiated by originator companies, generic companies won 62% of cases where final judgment was given.

During public presentation of the report this point of the UK Court of Appeals, who agreed that “There is no doubt, [as] the Canadian Supreme Court observed about two weeks ago, ever-greening is a legitimate concern.”�� But Jacob LJ. suggested that innovator companies are not the only barriers to affordable medicine, asking “Why is it… that after a product is off-patent, the generic price may be as much as 80%?�� …Generic companies are not in favour of lower prices; just as everybody is in, they’re in it for the money.”��

��

The report also discussed other factors that tend to diminish pharmaceutical competition.�� For example, there have calls from both the innovator and generic pharmaceutical industry for a centralized patent court to eliminate the requirement that European patents be litigated in individual European countries.�� There are numerous cases where different countries have given conflicting final judgments on the same issues, creating a climate of uncertainty and dissuading companies from attempting to market a drug product covered by a patent that may or may not be valid.

��

The final report is to be published in the Spring of 2009, and the take-home message right now appears to be that the balance between competition and patent protection needs to be adjusted.�� This is clearly an important issue, especially since it has potential to affect access to medicines.�� But there is at least one other view of the matter: corporations compete on many different fronts in order to provide the best return for their investors, why should they not be allowed to compete through the use of defensive patenting strategies?

The post European Commission: Ever-Greening Reduces Competition in Pharmaceutical Sector appeared first on IPOsgoode.

This high-impact ruling was a result of a complaint brought by the pressure gauge manufacturer ITT against Douglas Nicoll and his company Differential Pressure Instruments.�� Nicoll’s company had acquired surplus ITT pressure gauges and registered several domain names to sell the excess product without authorization from ITT.�� The domain names included the ITT trademark by using web addresses such as ittbarton.com and itt-barton.com.

ITT argued that Nicoll had no right or legitimate interest in the domain names and asked WIPO to adopt a favourable interpretation of a 2001 case that dealt with a similar issue.�� In that 2001 case the computer accessory maker, Oki Data Americas, had brought an unsuccessful claim against an authorized reseller who was using the domain name okidataparts.com.��

In order to distinguish its claim from the 2001 case, ITT argued that the reasoning from that case applied only where a reseller was authorized to sell a product by the manufacturer.�� In dismissing ITT’s complaint, the panel looked for the satisfaction of four conditions laid out in the to determine whether Nicoll's company had a��legitimate interest in the domain names:

• the respondent must actually be offering the goods or services at issue
• the respondent must use the website to sell only the trademarked goods (in order to prevent a possible bait-and-switch scenario where consumers are duped)
• the site must accurately disclose the relationship between itself and the trademark owner
• the respondent must not try to “corner the market” in all relevant domain names, depriving the trademark owner of reflecting its own mark in a domain name

The WIPO panel concluded��that these conditions were met and that ITT’s complaint failed. ��In addressing the argument that��the Oki Data case was��limited to situations where the reseller was authorized, the panel decided��that the “issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties.”

The WIPO decision has been criticized as being poorly decided on the facts. ��One states that the complainant’s original name was ITT Barton but was changed to ITT upon being acquired by another company.�� Thus, that argument goes, since the original name of the company, ITT Barton, was being used as part of the domain name, consumers may have inferred that ITT had authorized the website. ��But even if these facts are correct, this concern would arguably be addressed through the third point above – the requirement that the website disclose the exact nature of the relationship between ITT and the website reseller so that consumers recognize that the website was created independently of ITT.��

One of the often-cited policy reasons behind this area of IP law is that trademark protection puts the public in a better position since they can know what kind of quality to expect with any given product.�� With this policy reason in mind, this WIPO decision does not appear to be a bad one: there is no question in this case that the respondent was selling legitimate ITT products.�� It is not as though Nicoll’s company was free-riding on the good will and effort invested in the ITT name in order to sell an inferior product.�� As such, the WIPO panel ruling appears to provide a balanced decision that one would hope will be followed where necessary.

The post Trademark Protection Under Pressure appeared first on IPOsgoode.

One area where this overlap can occur is between industrial designs and patents.�� Industrial design protection is awarded for a ten-year-term to protect features that “appeal to the eye.”�� These features can be a particular shape or pattern, for example the shape of a utensil or shoe, and must be original.�� Section 5.1(a) of the states, however, that no protection will be granted for features that serve “solely” a functional purpose.�� Patents, on the other hand, provide twenty years of protection for products that satisfy a “utility” requirement, in other words, they must have some functional purpose.��

But the subject matter of an industrial design and patent can coincide.�� Consider, for example, Canadian Patent No. 1,176,566, (see the drawings and the description ) which protects pharmaceutical tablets manufactured in such a way that one or more edges are always tiled upwards.�� The advantage is described as being that these tablets can be picked up more easily (presumably to facilitate their use by elderly patients).�� The patent includes drawings of several different versions of these tablets.�� As it turns out, several of these tablet designs were actually awarded industrial design protection as well (see, for example, ).

The tablet design clearly appears to have a functional purpose – the tilt allows it to be picked up with greater ease – satisfying at least part of the requirements for appropriate subject matter for a patent.����Perhaps this is appropriate subject matter for industrial design protection as well – maybe the tablet tilt is not there “solely” for functional purposes.�� Is it conceivable that this design was prepared as a creative feature that “appeals to the eye” and utility was only realized after?

The bigger question is whether overlapping IP is a good or bad thing – should different areas of IP be mutually exclusive or should overlap be allowed?�� What are the implications?�� In examples such as the above, an IP owner would have recourse under both the Patent Act and the Industrial Designs Act in a case of infringement.�� The potential defendant would have to be concerned with infringement under two different pieces of IP legislation even though the basis for infringement would flow from the same concept (the shape of the pharmaceutical tablet).

This overlap is not limited to patents and industrial design.�� An artistic creation (appropriate subject matter for copyright protection) can also form the basis of an industrial design.�� The Copyright Act protects such an artistic creation during the author’s life plus 50 years.�� It also states that copyrighted articles could lose their protection under the Act if they are incorporated into a design and are reproduced more than 50 times. ��Should both industrial design and copyright protection be allowed when a copyrighted work is incorporated into 49 identical items?

Behind each form of IP are different policies explaining why protection is granted.�� Patent rights are typically said to reward ingenuity and to foster creativity and research by encouraging inventors to publicly disclose and disseminate their work.�� As noted in a recent Supreme Court of Canada case (CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339), the purpose of copyright law is��the need for a just reward for a creator, while balancing “the public interest in promoting the encouragement and dissemination of works of the art and intellect.”�� Trademarks are protected so that consumers can distinguish goods and services of one company from those of another.�� Perhaps an examination of the policies behind each form of IP is the best way to begin a discussion of the overlap and any merits.

The post Overlapping IP Protection – Is the Sky the Limit? appeared first on IPOsgoode.