There is nothing in this world that excites me more than creativity. It is the underlying reason I want to practice intellectual property law. My expectation was that a placement at ventureLAB would afford me the opportunity to work in an environment rich in creativity and innovation. Combined with my legal training, I expected that my background in engineering and business would provide me with a comprehensive set of knowledge to assist the entrepreneurs that I would encounter at ventureLAB. Although my expectations were fulfilled, I treasure my internship at ventureLAB for entirely different reasons. If I was forced to describe my internship in one word, it would be “enlightening”.

Prior to beginning my internship at ventureLAB, I completed a positive Summer work term at Bereskin & Parr LLP, an intellectual property law firm in Toronto. In the academic year leading up to this Summer work term, I completed courses in Patents, Copyright and Trademarks. I remember feeling like my feet were firmly on the ground heading into ventureLAB for my first day. I realized early on that I had an incomplete perspective of how intellectual property law, my chosen field, intersected with entrepreneurship. I was no longer looking at intellectual property law through a textbook or lecture notes. I was no longer looking at intellectual property through the established clients I typically encountered at Bereskin & Parr. I was now looking at intellectual property through the eyes of a start-up. It is a primal perspective unlike any other, one that is steeped in bewilderment and coated with a layer of misconception.

My experiences leading up to my internship with ventureLAB offered minimal opportunity for direct interaction with the client. Throughout the internship, the opportunities I had to engage directly with clients were abundant. I contributed in a legal clinic led by , an associate of Ricketts Harris LLP, for ventureLAB clients with specific legal questions relating to their business. I learned a great deal from Mr. Sasha in the effective way to communicate legal information to clients. I participated as a legal advisor in several Review Panels. In Review Panels, entrepreneurs pitch their business to business analysts, enabling ventureLAB to determine what assistance it can offer the entrepreneur. However, the most rewarding experiences came when I had the opportunity to interact with clients one-on-one. Several clients looking for legal advice in intellectual property law were referred to me by ventureLAB business advisors. It was these interactions that broadened my perspective of intellectual property law.

ventureLAB holds partner meetings every Tuesday morning. Attendance at these meeting reveals the vast ecosystem of which ventureLAB is part. ventureLAB is one of many non-for-profit organizations in the Ontario Network of Entrepreneurs (ONE Network), a collaborative network with the goal of helping small businesses succeed. It is through these partner meetings that everyone in the ecosystem is updated on upcoming events, success stories, and new initiatives. Chris Dudley of Seneca College, who I met at a partner meeting, asked me to deliver a set of lectures on patent prosecution to a group of entrepreneurial students at the school’s Newnham Campus. Ken Bousfield, a partner at Bereskin & Parr, was generous enough to come help me deliver the lectures. Like many of the clients I interacted with at ventureLAB, the students who attended these presentations were largely uninformed in intellectual property law. This is great for lawyers practicing intellectual property law, but alarming for those trying to innovate and protect their business. I found that many clients and students had developed cynical feelings towards intellectual property; feelings I can now properly appreciate. It comes as a shock to many entrepreneurs when they realize that attaining intellectual property rights is more complex and expensive than originally perceived.

I likened my role at ventureLAB to that of a gap-filler. I was providing entrepreneurs foundation in intellectual property law that would enable them to make sound decisions regarding their potential intellectual property rights. It was clear to me that many entrepreneurs have an insufficient understanding of intellectual property before they approach a lawyer practicing in the field. This can lead to ill-fated decisions when the lawyer assumes the client is sufficiently versed in what the they wish to pursue or is too self-interested to inquire.

Where my academic studies and experience at Bereskin & Parr prepared me for the substantive and nuanced elements of intellectual property law, my experience at ventureLAB provided me a more holistic vantage of intellectual property law. Instead of working on specifics, e.g. arguments to obviousness rejections, I advised clients on what applying for a patent could do to their business and all the crucial questions they should answer before applying. The entrepreneurs I interacted with throughout my internship possessed passion and determination in staggering amounts. Having the opportunity to assist entrepreneurs in their navigation of intellectual property law was extremely rewarding work. I highly recommended ventureLAB as your placement if this kind of work is of interest to you.

Justin Philpott is a JD Candidate at Osgoode Hall Law School 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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When an considers subject matter of an application to be an aggregation, the defect is identified under section 28.3 of the Patent Act as being obvious. Obviousness subject matter is broadly described as lacking an . Aggregations are believed to lack an inventive step since the absence of integration between elements makes their results predictable. However, since the patent system is founded on incentivizing the dissemination of knowledge for the advancement of society, should aggregations that lead to advances in social utility be considered defective simply because there is no integration of elements?

A well-known English states that "necessity is the mother of invention". This implies that the driving force for invention is need. In response to this proverb, author stated “I don’t think necessity is the mother of invention – invention, in my opinion, arises directly from idleness, possibly also from laziness. To save oneself trouble.” Neither of these quotes incorporate any consideration of the patent system; however, they point to a flaw in the way obviousness is used to invalidate an application.

(1875) is a U.S. Supreme Court decision on the validity of patent for an eraser fixed to one end of a wooden pencil. In the decision, Justice Hunt writes that “a combination, to be patentable, must produce a different force, effect, or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; otherwise it is only an aggregation of separate elements.” Consequently, the application of a piece of rubber to one end of a pencil was ruled an aggregation. When the eraser is removed from the pencil, the pencil and eraser continue to function as intended. Strictly speaking there is no integration of elements; however, the eraser and pencil when manufactured together produce a product that has a utility greater than the utility of the elements by themselves. In other words, the aggregation produces “a utility step”. A pencil with an eraser attached saves oneself trouble.

As indicated in Article 27 of the agreement, an inventive step is necessary for patent eligibility in member states. Member states adopt their own tests for determining the presence of an inventive step. In the U.S., the use of “” allude to the imperfect nature of its test for obviousness. Secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results. Evidence of secondary considerations can prove an invention is non-obvious even though, in theory, it appears to be obvious.

The ingenuity of an invention is often inextricably linked to its utility. Consequently, separate tests for utility and obviousness present a problem. Utility, after all, is what society needs for the patent system to have value. The current Canadian test for obviousness provided in does not contemplate utility advancements because utility occupies a separate requirement. The test for obviousness contemplates only whether differences between the state of the art and the inventive concept of the claim would have been obvious to the person skilled in the art. Prior to Sanofi, the most recent Canadian comprehensive obviousness checklist was that of Justice Sharlow from , the levofloxacin infringement case. The list incorporates many of the secondary considerations used in the U.S. and is still used in Canadian patent law. However, I believe law on obviousness remains inadequate for to its failure to incorporate utility analysis as a secondary consideration to prove non-obviousness.

Aggregations which produce a utility step suffer from hindsight bias when undergoing the obviousness test. An useful aggregation will tend to look obvious after the fact. Hindsight bias is thought to be safeguarded by viewing prior art through the eyes of a person not having knowledge of the claimed invention. An additional safeguard from hindsight bias requires the Examiner or judge to articulate why it would have been obvious to combine prior art to arrive at the claimed invention. I believe these safeguards to be overly idealistic.

There is a small, but significant, number of that offer protection (also known as petty patents or innovation patents). In the utility model, the stringent requirement of non-obviousness is lowered, or absent altogether, for protection that lasts between 7 and 10 years (depending on the country). I believe the utility model represents a strong compromise between the desire to incentivize improvements for the benefit of society while offering shorter terms of protection to indicate the level of inventiveness does rise to that of a patent. I believe they are a practical solution for utility step aggregations. Canada currently does not offer utility model protection.

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

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In a hundred years, the vaulting pole has changed from a piece of hardwood to an intricately-built piece of fiberglass and carbon fiber, assembled through patented methods. Unsurprisingly, the pole vault record is the most frequently broken world mark in men’s track and field history. As of 2014, the International Association of Athletics Federations (IAAF) has reportedly ratified , set by 33 different vaulters. The is Renaud Lavillenie of France, who cleared a height of in Donetsk, Ukraine in 2014. To put this into perspective, the world record in 1904 was 4.02 metres. The best pole captures all of the energy transferred to it by the vaulter and efficiently transfers it��back to the vaulter as they are launched into the air. Minimal increases in the world record in the last decade have hinted that the combination of materials technology and athletic performance may be reaching its peak. The heights achieved by modern pole vaulters undoubtedly rely on the pole. However, with all vaulters equipped with similar fiberglass poles, the sport becomes a truer contest of technique.

The Technology

Originally, vaulting poles were made out of , typically solid ash or hickory. Starting around the beginning of the 20th century, poles began to dominate the sport. These poles were significantly lighter their hardwood counterparts, allowing for a faster run up. More importantly, they could bend, whereas hardwood poles could not.

The next innovation in poles came along with the introduction of aluminum as a key material. The Carpenter patent () discloses a hollow vaulting pole made from an aluminum alloy. The invention provides for a significant reduction in weight over vaulting poles formed of wood which typically require a large diameter to prevent splintering. The invention's one-piece design is swaged into successively smaller cylindrical sections throughout its length to create a pole that gradually reduces in diameter up to where the vaulter grips the pole. Furthermore, the bottom end of the pole is closed with a convex-shaped endcap that acts as a pivot when the pole contacts the ground. The rounded endcap replaced a metal spike at was normally attached to the bottom of the wooden vaulting poles.

The Lindler patent () represents an improvement in the manufacture of vaulting poles made using the next key material: fiberglass. It discloses a glass-fiber reinforced vaulting pole that possesses 10% greater hoop strength than previous glass-fiber vaulting poles. To manufacture the improved vaulting pole, knitted glass-fiber tape pre-impregnated with a thermosetting resin is wrapped around a mandrel. Next, pre-impregnated longitudinal glass-fiber filaments are laid about the tape substantially parallel to the axis of the mandrel. Four layers of cellophane tape, two layers clockwise and two counter-clockwise, are then helically wound about the longitudinal glass-fiber filaments. The assembly is hung in an oven heated to a range of temperatures for specific durations to cure the epoxy resins. After the cooling, the mandrel and cellophane are removed. Next, a helical winding of glass-fibers, pre-impregnated with a thermosetting resin, is applied to the surface of the pole. After curing and hardening the winding to the pole, the pole is cut to its desired length and is fitted with a pivot endcap in one end and a plug in the other.

The Jenks patent () presents a fiberglass vaulting pole manufactured in a way to improve hoop strength. The pole is built on a mandrel by first helically winding epoxy impregnated fiber glass tape into a continuous succession of butt-jointed turns with the tape's fibers��extending lengthwise of the tape. Next, a rectangular shaped piece of epoxy resin impregnated fiberglass broadcloth is wrapped multiple times over the tape. A fiberglass tape, identical the first tape, is then helically wound over the cloth in the direction opposite to the first tape. Since the taped turns are crossed with one another, the butt joints of each tape are reinforced by the tape of the other layer. Next, another cloth wrapping is added but with an isosceles trapezoidal shape. Having the trapezoidal wrapping as the outer layer is advantageous because changes to the shape of the trapezoid and the number of times it is wrapped around the mandrel can be used to alter the pole's design. Finally, the mandrel comprising the four wrappings goes into an elongated curing chamber which applies heat to cure the resin and external pressure to compact the fiberglass and epoxy into a unitary rigid structure. The two tape layers give the pole great hoop strength since the fibers on the tape extend primarily around the pole, is in contrast to woven tape where 50% of the fibers extend lengthwise and do not contribute to hoop strength. With the broadcloth being located between the tape layers, it acts as a column load barring member since its lengthwise fibers are firmly fixed in position to resist splitting.

The Johnston patent () improves upon its predecessors by describing a vaulting pole endcap designed to provide additional forward penetration of the pole into the plant box. This design allows the vaulter to hold the pole higher and hang for a greater period of time below the rotating pole.

The Watry et al. patent () presents a vaulting pole manufactured with five filament layers in which at least one is a carbon weave layer. The preferred location of the carbon weave is in the second layer of the body wrap due to its strength in all directions. The weight of the vaulting pole can be further reduced by replacing additional fiberglass layers with carbon fiber layers. Most world class vaulters have continued to use 100% fiberglass poles as the reduction in weight provided by carbon fiber does not overcomes the slight decreases in durability.

The Bentley patent () introduced a vaulting pole with an angular deviation away from the pole’s lengthwise dimension for increasing the vaulting pole plant angle and providing an ergonomic hand grip. The greater the pole angle a vaulter can achieve when planting the pole in the plant box, the greater the vaulter’s ability to move the pole toward the landing pit. This invention has not yet gained widespread use by vaulters.

Canada in Rio

Canada is a medal threat in both the men’s and women’s pole vault in Rio. Shawnacy Barber of Toronto enters as the reigning men’s world champion after his win at the 2015 World Championships in Beijing. Earlier this year, Barber joined the , becoming its 19th member and, at age 21, the youngest ever to clear the height. On April 9, 2016, Alysha Newman of Delaware, Ontario set the new Canadian women’s pole vault record by clearing a height of . Newman, at age 22, enters Rio as the 4th ranked women’s vaulter in the world. The men’s pole vaulting final starts at 8:35 pm on Monday, August 15, while the women’s pole vaulting final starts at 8:30 pm on Friday, August 19. Be sure to tune in to cheer on our Canadian vaulters all the while contemplating the remarkable evolution in pole vaulting patents.

Justin Philpott is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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Mark Towle is the owner of which produces unlicensed replicas of the Batmobiles from the 1966 TV series and 1989 movie. Towle made two claims in defense to the copyright action: first, the Batmobiles appearing in the 1966 TV series and 1989 film were not entitled to copyright protection; and, second, DC Comics did not own the copyright to the Batmobile that appeared��in the show and movie.

Judge Ikuta, who wrote the opinion, stated��that the Batmobile contains consistent, identifiable character traits worthy of copyright protection, similar to that of a sentient character. She also found that DC Comics never surrendered their underlying rights when licensing derivative works of the Batmobile. Although a fair judgment may have been reached in this specific situation, Towle's application to other cases offers a low threshold for sufficient character delineation and may result in copyright protection where none is warranted.

Is the Batmobile entitled to Copyright Protection?

In order to attract copyright protection, a character must be “”��and contain��consistent and recognizable characteristics. DC Comics must show that the Batmobile is sufficiently delineated to be recognizable whenever and wherever it appears. Relying on the��2008 decision in��, the court distinguished physical appearance from attributes and traits. Towle correctly pointed out that there are several physical differences between the 1966 Batmobile, 1989 Batmobile, and the iterations in the comic books, positing that these differences are enough to declare the car insufficiently delineated.�� However, the court rejected this line of argument, and stated that it is enough that the Batmobile always maintains consistent attributes and traits, including��interactive features, bat-like design, and high-tech weaponry that help��Batman fight crime.

The court used spurious examples from other films to show how consistent traits are sufficient for this stage of the test. Judge Ikuta, for example, stated that “Godzilla is always a prehistoric, fire-breathing, gigantic dinosaur alive in the modern world”. However, the two most recent Godzilla films have shown this to be untrue. ��is a member of a species of massive, prehistoric amphibious reptile that feeds off radiation. Technically, Godzilla does not breathe fire, but atomic breath, gained from exposure to the atomic bomb that mutated him.�� is a mutated lizard, specifically a marine iguana.

Similarly, Halicki decided that “Eleanor”, a car that appeared in both the and of Gone is 60 Seconds, is��entitled to copyright protection. The court ruled it warranted protection after considering Eleanor’s persistent attributes like the��name--“Eleanor”--and its difficulty to steal. The court was silent on��the distinct variation in colour and model of the car between films.

Another example drawn on by the decision-makers in Towle was the 2011 case of , where the Eighth Circuit stated that “the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance [emphasis added].” The character��must be sufficiently delineated to be recognizable . It would be interesting to see how the Court would have ruled if Towle had copied the Batmobile (referred to as the ) in the recent Dark Knight Trilogy. Here, the "bat-like design" emphasized by the court as a delineating attribute of the Batmobile is absent. The Tumbler looks more like a cross between a Lamborghini and tank than the "bat-like" vehicle depicted in the DC comics. The Tumbler is recognizable as the Batmobile solely because Batman is driving it. It is true that the Batmobile consistently��contains high-tech weaponry and helps fight crime, but so do James Bond’s cars. This would suggest that the "Batmobile" name in combination with its innate characteristics plays an important role in its delineation; however, this is not explicitly stated in the judgment.

It is unclear how many attributes or traits, and in what combination, suffice to justify protection. This stage of the test relies heavily on the intuition of the judiciary to set a threshold, resulting in uncertainty as to what constitutes sufficient delineation.

Does DC Comics own the Copyright to the Batmobile appearing in the 1966 TV series and 1989 movie?

After the Court established the copyrightability of the��Batmobile as a��character, it turned its collective mind to whether Towle’s replicas infringed DC’s copyright. Towle claimed that the Batmobile appearing in the 1966 TV series and 1989 movie productions are not what is depicted in DC’s comic books. In the 1990 case��, the court��stated that when the owner of a copyright protected work authorizes a third party to prepare a derivative work, the owner of the underlying copyright retains copyright in that derivative work with respect to all elements that the derivative creator relied upon. The derivative creator holds a copyright in non-trivial contributions to the original work. This makes the absence of a comparison between DC's underlying work and Towle's replicas very troubling. Towle willingly admitted to copying the derivatives; but, it is not the derivative producers that are claiming copyright infringement, it is DC Comics. Therefore, Towle's replicas should be compared to the elements of the underlying DC comics which were relied upon by the derivative creators.

Final Thoughts

Although the derivative Batmobiles copied by Towles are not the spitting images of those found in the DC comics, they were not distinct enough to deny DC ownership of the underlying work. However, it's doubtful whether the decision will consistently��lead to just results��when applied to future cases. The decision admirably attempted to clarify the��copyrightability of characters. But the court��missed the mark on��a robust definition of “sufficiently delineated”. The examples provided within the judgment suggest that the court is putting too much emphasis on consistent underlying traits and not enough on physical similarity when it comes to determining if objects are characters worthy of copyright protection. When objects are permitted to change in physical appearance but maintain copyright protection because they have consistent traits, protection is essentially being afforded to the "name" of the object and not the object itself. I think it is very likely that this application will lead to protection for characters, specifically objects, that are not sufficiently delineated to warrant copyright protection. On a positive note, the decision is clear in that non-sentient characters, even ones that do not communicate are copyrightable.

I would love to hear your thoughts on this decision. Do you share my concerns?

Justin Philpott is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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