Keenan Fast Archives - IPOsgoode

A Whirlwind Tour of IP’s Inner Workings; my time at CIPO

ccraig — Thu, 19 Dec 2019 17:20:00 +0000

My placement at the Canadian Intellectual Property Office (CIPO) provided me with a productive and engaging experience. It consisted of a tour of the different branches at CIPO, which was organized to show me a diversity of the opinions, careers, and tasks that exist at the office. Every week or so I was assigned to a new branch, and given a new contact from within that branch. The contact provided me with legal work and spoke to me about the department, generally taking me out for coffee. At most placements, the head of the branch also introduced themselves to me over coffee. I found these coffee breaks fascinating, both because of the legal and policy discussions, and because of the opportunities to learn about the different career paths available to law school graduates within the federal government.

...

I had many useful experiences during my time at CIPO. I learned skills that can be applied to both sides of the bench, as I was able to both conduct legal research and discover methods of adjudication. My contacts were always attentive with feedback, and I was excited to learn that my work would actually be used, either by others within CIPO, or by the Canadian population looking to secure their IP rights. It was a rewarding experience, and it more than justified my decision to attend Osgoode for the IP intensive program.

Written by Keenan Fast, Osgoode JD Candidate, enrolled in Professors D’Agostino and Vaver 2019/2020 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

The post A Whirlwind Tour of IP’s Inner Workings; my time at CIPO appeared first on IPOsgoode.

China’s Patent Policy: Pros, Cons, and an AI Solution

ccraig — Thu, 28 Nov 2019 15:14:14 +0000

China has historically been a small player in regard to patent filing. ,[i] China’s patent office, SIPO, which serves a country with three times the population of the United States, processed less than half as many patent applications as the USPTO, America’s patent and trademark office. Since the late 1990’s, Chinese patent filing has grown meteorically, and China has become a patent powerhouse. This increase has occurred both within China, [ii], and internationally.

There are multiple reasons for this growth. It is caused partly by China’s evolution from [iii], and partly by China’s role as a leader in many cutting-edge technologies, such as [iv] One of the largest drivers of Chinese patent filing, however, is the Chinese government’s subsidy program, the “”[v] initiative, which provides funding designed to encourage Chinese innovation. While China has experienced large increases in innovation overall, in practice these subsidies have primarily just increased the s[vi], while doing a much poorer job of stimulating research and development.

These subsidies have encouraged a large number of low-quality patent applications, particularly in the subsets of Chinese patents that are subject to a lower degree of scrutiny before grant. As stated by Wang Xiang, the head of Orrick’s China IP practice: “”[vii].

China’s “patent first, innovate later” culture is shown in [viii], both domestically and internationally. The patents obtained by Chinese industry are also maintained at a much lower rate than those from comparable nations, an indicator that they are not particularly valuable.��

In recent years, China has also made these subsidies available for [ix]. This has led to a large number of patent filings abroad and has made China the fifth largest international patent filer. Many of the applications that are filed internationally are the same low-quality applications that are filed within China, which presents a problem to patent examiners globally, as these applications must be examined with the full scrutiny of any other application.

The question becomes, what should the IP offices of the world, SIPO included, do about the volume of low-quality applications that are being produced? These applications are being submitted to patent offices that are generally facing [x] in unexamined patent applications. It will be difficult for patent offices to review the large number of Chinese applications, and these applications will add to the existent patent backlog. Backlog reduces the amount of time and effort that an examiner can spend on a given application and [xi].

In my opinion, the problems associated with this over-burdening volume of poor-quality patent applications can be resolved through worldwide[xii].[xiii] is software that learns how to complete tasks which have traditionally required the use of human thought. It can examine the data given to human decisions makers, observe the outcome of these decisions, and create “rules” with which to make its own decisions. Patent examination produces a large volume of decision-making data, .[xiv]

Given the high cost of an examiner’s time, the large number of subsidized applications being produced by Chinese industry should act as a motivator for further adoption of artificial intelligence by the world’s patent offices. Artificial intelligence could be [xv] that could help regulate the massive number of applications. It could be used to determine the field of technology that an application falls into, if an application describes patentable subject matter, if it overlaps with prior art, and even if it meets a country’s drafting requirements. And, because of scalability, artificial intelligence can process a large number of applications within a much shorter period of time than a human examiner, at a lower cost.

Adapting this new technology would better enable patent offices worldwide to reward Chinese innovators for legitimate contributions to technology, while also managing the worst of the mass filing conundrum.

Written by Keenan Fast, Osgoode JD Candidate, enrolled in Professors D’Agostino and Vaver 2019/2020 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.

��

[i]Jane Croft, “China plays catch-up with Europe and US in patents filing race”, Financial Times (9 July 2019), online:

[ii] “World Intellectual Property Organization”, WIPO Intellectual Property Statistics Data Center, online:

[iii] Michael C. Wenderoth, “China Is Innovating Faster Than You Imagine”, Forbes (11 April 2018), online:

[iv] Louis Columbus, “How China Is Dominating Artificial Intelligence”, Forbes (18 December 2018), online:

[v] “Premier Li on ‘Made in China 2025’”, The State Council of the People's Republic of China, online:

[vi] Lulu Yilun Chen, “China Claims More Patents Than Any Country—Most Are Worthless”, Bloomberg (26 September 2018), online:

[vii] Ibid

[viii] Ibid

[ix] “Notice on Printing and Distributing the Measures for the Administration of Funding for Foreign Patent Special Funds”, The Central People's Government of the People's Republic of China (31 May 2012), online:

[x] Patent Backlogs and Mutual Recognition, London Economics (January 2010) at 59, online:

[xi] Mark Schultz & Kevin Madigan, “The Long Wait for Innovation: The Global Patent Pendency Problem Center for the Protection of Intellectual Property”, Center for the Protection of Intellectual Property (2016) at 5, online:

[xii] “Index of AI initiatives in IP offices”, WIPO online:

[xiii]BJ Copeland, “Artificial intelligence”, Encyclopædia Britannica online:

[xiv] Steve Lohr, “The Age of Big Data”, The New 91��ɫ Times, (11 February 2012), online:

[xv] Tabrez Y Ebrahim, “Automation & Predictive Analytics in Patent Prosecution: USPTO Implication & Policy” (2019) 35 Ga St U L Rev at 57 online

The post China’s Patent Policy: Pros, Cons, and an AI Solution appeared first on IPOsgoode.

Unwrapping File Wrapper Estoppel: Some Effects of Bill C-86

ccraig — Mon, 28 Jan 2019 21:11:44 +0000

To the delight of patent litigators everywhere, After more than 18 years since Justice Binnie rejected the doctrine in Canada in his ruling in ., it will come into force via Bill C-86, likely in late 2019. While this move may help “”, it is not likely to help many other members of the patent community.

File Wrapper Estoppel (or “Prosecution History Estoppel”) is a concept from American jurisprudence that was best described by the Supreme Court of the United States in . ��It is an equitable power of the court designed to hold an inventor to the representations they made during the patent application process. It does this by allowing a patent-holder’s competitors to rely on the patent’s prosecution history to estop the patentee from recapturing subject matter surrendered by amendment as a condition of obtaining the patent.

The estoppel arises from any amendment that narrows a claim to comply with any patent legislation requirement, and when it applies it bars the doctrine of equivalence (the doctrine which deems any modification to an invention that performs an equivalent function to be infringement) for the element that was amended. When estoppel applies, it does not completely bar the patent-holder from claiming infringement of their amended claims, but only for the aspects of those claims that were amended.

There are many ways in which file wrapper estoppel can lead to increased litigation. Determining what the amended claim does or does not cover, through the lens of the patent prosecution dialogue, is where the largest amount of litigation arises.�� There are also cases in which estoppel would normally arise, but doesn’t because the alleged infringing equivalent was unforeseeable at the time of the amendment, a fact which must be proven in court, through litigation.

It’s for the above reasons that Justice Binnie completely rejected the concept of file wrapper estoppel in Canada in his ruling in He confined the scope of a patent to the “objective manifestation of that intent in the patent claims, as interpreted by the person skilled in the art”, rejecting “extrinsic evidence such as statements or admissions made in the course of patent prosecution”. ��Justice Binnie reasoned that allowing file wrapper estoppel would weaken the public notice function of a patent’s claims, and that it would also introduce an uncertainty that could only be resolved with litigation.

While it is true that file wrapper estoppel has the ability to tie an inventor to their correspondence during patent prosecution, it is much simpler (as Justice Binnie stated) to just have the claims accurately reflect what was agreed upon in the negotiations instead of determining it through litigation. File wrapper estoppel within the finalised and published patent in the determination of an invention’s limits, while subsequently elevating the importance of “rough drafts” of the patent and their surrounding correspondence. This has the very real effect of detracting from the primacy of the claims, and making the monopoly covered by the patent more uncertain.

The changes brought by Bill C-86 with the introduction of file wrapper estoppel will affect the patent prosecution process at every stage. Inventors will need to turn their minds to not just the prior art, . in their language during the prosecution process. Patent owners will have less certainty than before as to what their amended claims actually cover, and because of this, less certainty as to which acts are infringements of their patents. Potential patent infringers will now have a new tool of defence to any accusations of infringement. And, of course, the benefit of the newly-created doubt will go to the patent litigators, who will be needed to define the scope of the claims.

Written by Keenan Fast, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

The post Unwrapping File Wrapper Estoppel: Some Effects of Bill C-86 appeared first on IPOsgoode.

The Highs and Lows of Patenting Marijuana Strains

ccraig — Sat, 11 Aug 2018 01:01:53 +0000

After over��, recreational usage of marijuana will be legalized nation-wide��.��While the��will transform cannabis breeding from an illegal cottage industry to a legitimate profession, there has so far been no corresponding change in plant breed intellectual property protection. While there are some protections under existing Canadian law, they are weak by international standards.

Cannabis breeding is a��. It requires patience, sensory acuity, long-term planning, and a working knowledge of genetics. Through their work, breeders can greatly enhance the commercial value of their product. They can create plants that give greater yields, disease resistance, hardiness, and, of course, drug potency, among many other desirable and profitable traits.

Cannabis breeding can also be expensive. To recoup expenses, developers ��rely on profits from their new strains. If there is nothing preventing competitors from selling the developer’s strain, without first paying the developer for the research and development needed to create the strain, then there is very little financial incentive to develop these new breeds. If Canada is to encourage better, more efficient, and more profitable strains of Marijuana, then the government will need intellectual property laws that can protect the investments of time and money that Cannabis breeders put into their work.

��for novel plant breeds themselves, a legal conclusion which stems��In the landmark 2002 Supreme Court patent case of��Harvard College v Canada (Commissioner of Patents), it was decided that “higher lifeforms”, which include plants, could never be subject to a patent protection per the��Patent Act. This ruling was complicated two years later in��Monsanto Canada Inc. v Schmeiser.��Schmeiser’s ruling decided that, while it was true that a plant itself could not be patented, a man-made gene within a plant could be. If a plant contains such a modified gene then, for all practical intents and purposes, the plant itself could be patented because “where a defendant’s commercial or business activity involves a thing of which a patented part is a significant or important component, infringement is established”.

While these rulings may satisfy Monsanto and the other members of the (extremely limited) genetic-insertion community, they are of little recourse to those who breed new plant strains through more traditional means, like cross-breeding. Patent protection would therefore benefit only the most high-end marijuana breeders.

All hope is not lost, however, for marijuana breeders who don’t engage in genetic insertion, thanks to the 1990 Federal��Plant Breeders Rights Act (PBRA). This Act��to plant breeders if they can demonstrate that a strain they have created is “new”, clearly distinguishable from all existing varieties, stable in its essential characteristics, and sufficiently homogenous across plant generations. To date, a handful of marijuana strains have been protected through the��PBRA, and it has the potential to give some relief to breeders.

��of Plant Breeders Rights is that the protections they give are weaker than those protections given by the Canadian patent regime. A patent grants the right to prevent others from using, selling, offering for sale, and importing the patented invention into Canada for a period of 20 years. By comparison, Plant Breeders Rights exclude others from selling, producing, exporting, importing, making repeated use of, conditioning, and stocking the seeds of the plant, also for a period of 20 years. While these collections of rights are superficially similar, Plant Breeders Rights come with some major exceptions not shared by a patent. Anyone can use the seeds and product of a protected plant for private non-commercial purposes, for experimental purposes, and for breeding purposes. At the same time, the “farmer’s privilege” allows for farmers to replant the seeds from plants they have obtained legitimately in perpetuity.

While Plants Breeders Rights are a good start, full patent protection is necessary if Canada wants to fully encourage large-scale development and experimentation in marijuana breeding. Full Patent protection would be an excellent way to encourage the investment of time and money that breeding requires, and would allow for smaller corporations to protect their investments better than the current gene-insertion protections. While it is true that this could result in initial monopolization of certain desirable strains, the benefits of breeding protection would extend to the cannabis-enjoying population after just 20 years. Extending these rights would not be unprecedented, as plant strain patents are available both��, and in the��Canada should take example from the successful plant strain patents found in the international community, instead of letting a potentially valuable incentive for agricultural development go up in smoke.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post The Highs and Lows of Patenting Marijuana Strains appeared first on IPOsgoode.

Nothing to Turn Your Nose up at: Playdoh and the dawn of scent trademarks

ccraig — Mon, 25 Jun 2018 16:40:43 +0000

On Friday, May 19th, Hasbro announced that the characteristic scent of their well-known Play-Doh product has been officially recognized by the . This presents a major step forward in the evolution of “scent trademarks”, with Hasbro being by far the largest corporation to obtain one since America started allowing such . While Hasbro is to obtain a scent trademark, they are a large company who has just brought attention to a niche area of intellectual property law with a lot of potential.

The company was initially unsuccessful in obtaining the trademark: the trademark examiner rejected Hasbro’s first filing on May 26, 2017, on the grounds that scented dough lacked distinctiveness (most similar products are also scented). Hasbro�� the decision, and Play-Doh’s distinctive “sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough” is now a protected American trademark, preventing other moulding dough companies from using the scent on their own products.

There are involved with scent trademarking, including the subjective nature of smell, the temporality of scents themselves, the difficulty in making the existence of a scent trademark known to consumers, and the possibility of exhausting all available scents. However, the benefits of tying a specific scent to your product are numerous, as they allow you to leave a mark on consumers through . Hasbro themselves have mentioned the benefits of scent trademarking, as stated by Jonathan Berkowitz, senior vice president of Global Marketing for Play-Doh: “By officially trademarking the iconic scent, we are able to protect an invaluable point of connection between the brand and fans for years to come”.

As American law currently stands, in order to trademark a scent, a “substantial threshold” . This has historically been quite difficult for companies to achieve, as applicants must prove that their product’s scent is both nonfunctional and distinctive, in order to receive full trademark protection.

“Nonfunctional” in this context stipulates that the trademark cannot cover aspects “”. As a result, Verizon can trademark the smell of their marquees, but Chanel cannot do the same for their perfumes . The of the product, just as Play-Doh’s scent is arbitrary to its function as moulding dough. If a company can show that their product’s scent is nonfunctional, then it can be added to the supplemental trademark register, and gain limited legal protection (.)

In order to register a scent as a trademark (and not merely be protected under the common law principle of passing off), companies must show that their product’s scent is distinctive. This is no easy task and, before Play-Doh, only ��have reportedly satisfied the test. To prove that a product’s scent is distinctive per the USPTO “.” Passing this stage of the test is what made the Play-Doh decision newsworthy, and required Hasbro to present . In Hasbro’s : “Since the PLAY-DOH brand’s inception in 1956, the distinctive smell has consistently served as a hallmark of the brand, and after more than six decades providing children with a source of imaginative and creative play, the scent has become increasingly recognizable among children, parents and grandparents alike.”

Awarding a trademark to Play-Doh shows a departure from the original rationale behind scent trademarking. While the original scent trademark was given to OSEWEZ thread, in part because they were the only company manufacturing , it has been acknowledged by the trademark board itself that Play-Doh is far from the only toy putty company that scents its product. As Play-Doh’s original scent trademark rejection stated, “when purchasers are confronted by the scent of applicant’s goods, they are likely to perceive it as an incidental feature of the goods rather than perceiving it as a source indicator.” In now giving Play-Doh’s scent a trademark designation, they are saying that the specific scent can be a source indicator, not just an incidental feature of the product. This would suggest that the distinctiveness designation could be moving away from the standard of scenting a product in general, towards the standard of giving a specific scent to a product.

While scent trademarks are very much in their infancy, existent through only sparse case law, Hasbro’s actions and publicity will certainly bring these trademarks a large amount of attention, and allow for the development of some often vague laws. This may prove to be the catalyst that could bring a valuable marketing tool the protections it deserves.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Nothing to Turn Your Nose up at: Playdoh and the dawn of scent trademarks appeared first on IPOsgoode.