This article was written in affiliation with Madelaine’s placement at ventureLAB and .

This series provides an in-depth look at different types of intellectual property. As a founder, once you’ve determined what types of Intellectual Property (IP) you need to protect, it’s important to understand the details and requirements of each. A concrete understanding of each type of IP not only allows you to recognize what you may be able to protect, but will also help you to take full advantage of the right.��

‍This article is the second in a 5-part series. ventureLAB’s experts cover everything you need to know when filing for IP protection. Over the next six weeks, we’ll release articles on the following topics. ��to be the first to know when we release an article.��

• Part 2: A Beginner’s Guide to Patenting Software and Artificial Intelligence
• Part 3: Use It or Lose It: How to Acquire and Protect your Trademarks
• Part 4: Don’t You Forget About Me: Protecting Your Company’s Copyrights��
• Part 5: The IP Hidden Gems: Trade Secrets and Industrial Designs

Patenting software, and inventions related to Artificial Intelligence (AI) and machine learning, known as computer-implemented inventions (CII) in patent lingo, is a complicated and evolving area. The difficulty lies in overcoming Patent Office objections related to subject matter eligibility, which prohibits the patenting of abstract concepts and mathematical formulae (for more on this, see��).��

CII, such as algorithms, are frequently deemed an abstract idea, and thus not suitable for patent protection. In order to overcome this obstacle the patent application must explain how the algorithm and the computer are interconnected such that together they form a single invention. To do this, the computer must be deemed an essential element of the invention.

This has been a historically tumultuous area of patent law. The 1981 Canadian Schlumberger case was the first to set out the rule that the use of a computer merely to automate calculations that could otherwise be done by hand is not patentable. This is because the inventive aspect is the calculation itself, not the combination of the calculation and computer. In 2011,����was successful in obtaining a patent on their ‘one-click’ method. This was a controversial decision since not only was it a CII, but it was also considered to be a “business method”, which is notoriously difficult to patent in Canada.

Most recently, in 2020 the Canadian Federal Court decided the case��, which initiated a huge change in the way the patent office evaluates the essential elements that make up an invention. This resulted in the Canadian Intellectual Property Office releasing����on how patent examiners should approach patentable subject matter, particularly for CII.��

Before this decision, patenting was particularly difficult for CII because patent examiners would frequently determine the computer itself was not an essential element of the invention. As a result, what remained was an abstract idea (i.e. the software or algorithm itself) which had no physical substance and was thus deemed unpatentable.��

Now, all elements of an invention are presumed to be essential. Thus, if you include a computer in the claims, it will be assessed as if that computer is essential to the functioning of the invention. This is great news for inventors, since it reduces the likelihood that your CII will be automatically deemed unpatentable.��

Unfortunately, the challenges do not stop here. Having a computer viewed as an essential element of the invention is only the first step in patenting software. Next the patent examiner will look at whether the computer works together with the other essential elements of the invention. Together, the computer and the other elements must form an actual invention that has physicality. This physicality can be physical existence, or the invention can produce a physical effect or change.

The mere use of a computer in a well-known manner, such as to execute the code, will not be sufficient to render the invention patentable. This is because any computer could do that job, and the computer is simply a means to execute the algorithm, which on its own is an abstract theorem or disembodied idea. However, if in processing the algorithm the function of the computer itself is improved, this could be considered a physical effect and thus a unified invention.

In the US the test for patentability is different, but ultimately the outcome is similar. You cannot obtain a patent on a purely abstract idea and merely using a computer in a generic way will not be enough to overcome this hurdle.��

In Europe, the patent office takes a slightly different approach. It is relatively easy to overcome the subject matter barrier as the “any hardware” approach means that simply including a computer in the claim is a first step towards satisfying patentability. However, the patent office also requires a technological solution to a technological problem, which looks only at the technical features that contribute to the solution. Unlike Canada which now presumes most, if not all, elements are essential, a non-technical feature which doesn’t interact with the technical subject matter is essentially ignored.��

Patenting software is a very challenging field. The summary above is a very basic introduction to the field. It is best to seek the advice of a patent professional who can advise on the specific needs of your invention and adapt it for each jurisdiction. A patent professional will consider how your invention integrates the use of a computer, and how the computer and algorithm cooperate to produce a physical effect.

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This article is the fourth in a 5-part series on protecting your intellectual property. ventureLAB’s experts cover everything you need to know before you file for IP protection. Check out other parts in the series:

• Part 5: Why Can’t I Talk About It, It’s My Invention? **Stay tuned for the release of this article on��Monday, October 25! To stay up-to-date on articles like this and the latest tech news,��.

Patent protection is jurisdictional, which means that your invention is only protected in the country (or countries) where the patent was issued. Unfortunately, there is no such thing as an international patent, but there are options for international patent filing. Fortunately, patents are a cooperative system, such that in most cases once you start the process in one country you can use the first filing to kick start your subsequent filings.��

The US Provisional Patent

One of the most common filing strategies is to file a US provisional patent application. US provisional patents are something of an oddity, as few countries have a designated provisional application. Fortunately the US provisional filing date is recognized in almost all countries.

A provisional patent application is beneficial because it allows you to obtain a priority date without being held to the rigid structural requirements of a regular patent application. Unlike a regular patent application, a provisional application does not require claims. As such, you can simply write a description of your invention to fulfill the requirements. Claims can often be harder to amend as you cannot substantially alter the scope of a claim. Thus by not including claims in the provisional application you have the freedom to design the claims from scratch in the regular application.

Another benefit of the provisional application is that you don’t have to include an information disclosure. The information disclosure includes the known prior art, which is essentially the background to your application. Since a provisional application is never examined these additional details are not needed. By not having to include this information you can obtain the early filing date and during the 12-month period you can work at filling in the gaps for the regular application.

It is important to note that a provisional patent application will never materialize into a patent. A US provisional application lasts for 12 months after which you must file a regular patent application or abandon the provisional. If you abandon the application the information included in the provisional is never published and thus will not prevent future applications. However, you also lose the priority date, and thus if you choose to file later you need to restart the clock.����

A word of caution with US provisional applications: they are only as good as the information contained within them. Unlike a regular patent application, a provisional application doesn’t have formal structure requirements. Although it is tempting to file a “quick and dirty” provisional application to get the earlier filing date, if the information in the provisional application doesn’t support the regular application you cannot benefit from the earlier date. For example, if you invented a robot that was capable of cooking and cleaning and you filed a provisional application, it would only enable a regular application for a cooking and cleaning robot. If it turned out the robot was also capable of performing surgery or driving a car, this would not be enabled by the provisional application. This means you could not claim the priority date of the provisional application for these new features.��

As such, it is best practice to have enough detail to file the application as if it were a regular patent application. If you make improvements during the 12 month period (such as the ability of your robot to perform surgery) you can file subsequent provisional applications. You can then file a regular application within 12 months of the first provisional filing date and claim priority to all the provisional applications.

Although the provisional application is filed in the US, almost all countries will recognize their filing date as your priority date. If you first file the provisional application in the US you can still use it to claim priority on US, Canadian, European and PCT (“international”) applications.��

��

Patent Cooperation Treaty Applications

The Patent Cooperation Treaty (PCT) application allows you to file simultaneously in the 153 contracting jurisdictions. This is often a good route for inventors who want to file in Canada, the US and Europe. By filing an international patent application you are able to reserve your filing date in all participating countries. However, a PCT application does not result in an international patent (there is no such thing). Rather, following the PCT process you have the ability to elect in which participating jurisdictions you would like to file a regular application (known as the national phase).��

The PCT application is beneficial in that it not only buys you some extra time, it also provides an international preliminary examination report that can give you an idea of whether your invention is novel, non-obvious and useful. The PCT application provides an additional 18 months before you have to decide what countries you would like to file in. If you filed a US provisional application this gives a total of 30 months from your priority date until you need to enter the national phase in each individual country. This additional time can be beneficial, particularly for generating capital and determining your market.��

During this 18 month time period you also benefit from the international search report accompanied by a written opinion. This is essentially your first examination, which is conducted by the filing country (i.e. if you filed your PCT in Canada, you would have a Canadian patent examiner conduct the search). This is not a legally binding report, but can provide very useful information. Following this report you have two options: to stay in Chapter I or move to Chapter II.��

If you stay in Chapter I, at the end of the 18-month period the application as originally submitted and the international search report are sent to the countries in which you want to seek patent protection. If you elect to move to Chapter II, you can amend your application based on the search report to try to get a more favourable opinion. Following the amendments your application is re-examined and you are issued a new report on patentability. However, the Chapter II phase does not add any additional time. The first international examination report is issued approximately 4 months after filing the PCT application, and any amendments and your request to enter Chapter II are due either by 22-months after the filing date or 3 months after the issuance of the first report, whichever is later.��

By entering Chapter II and amending your application you may save both time and money. This allows you to amend one central application, rather than making the same amendments to multiple applications in each filing country.

Although not legally binding, the international report is often repurposed by each of the filing countries. When you eventually enter the national phase it is common for the examining jurisdiction (i.e Canada, less common in the US) to agree with the international report which then effectively becomes your first legally binding examination report.��

The PCT route can be expensive however if you are considering filing in multiple jurisdictions such as Canada, the United States and throughout Europe, a PCT application is the most efficient route in which to seek protection.

The following timelines help to illustrate the process of different filing scenarios:

��

Regular Filing

��

Provisional Filing followed by Regular Filing

��

International Filing

��

Provisional or Regular Filing followed by International Filing

��

��can help you navigate your IP strategy. Located at the heart of Ontario’s innovation corridor in 91��ɫ Region,��ventureLAB is a leading global founder community for hardware technology and enterprise software companies in Canada. Our initiatives focused on raising capital, talent retention, commercializing technology and IP, and customer acquisition have enabled thousands of companies to create over 4,000 jobs and raise more than $200 million in investment capital.��

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Top Row: Madelaine Lynch, Richard Du, Androu Waheeb Bottom Row: Nikita Munjal, Sarah Raja, Tiffany Wang

IP Osgoode is pleased to announce the new team of student editors for the Intellectual Property Journal (IPJ). Returning this year are Madelaine Lynch and Nikita Munjal. New student editors are Richard Du, Sarah Raja, Androu Waheeb, and Tiffany Wang.

The IPJ is Canada’s leading peer-reviewed journal with a focus on IP law related areas such as patents, trademarks, copyright, designs, trade secrets and competitive torts. Leading the IPJ’s editorial team is Editor-in-Chief, Pina D’Agostino, Associate Professor at Osgoode Hall Law School and IP Osgoode’s founder and director; Deputy Editor Dr. Aviv Gaon, Assistant Professor at IDC Herzliya; and Senior Editor Ryan Wong.

The IPJ’s editorial board consists of Prof. David Vaver, Hon. Justice Roger T. Hughes, Daniel Bereskin, Prof. Ikechi Mgbeoji, and Hon. Justice Marshall Rothstein. Prof. Bita Amani and Prof. Saptarishi Bandopadhyay are the book review editors.

The IPJ editorial team wishes to thank Prof. David Vaver, IPJ’s founder, for his mentorship and unrelenting support.�� The IPJ’s continued success is made possible by the contributions from its panel of expert reviewers.��

IPJ accepts article submissions on an ongoing basis. If you’re interested in submitting an article to the IPJ, please email us at ipjsubmissions@gmail.com.

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On the most basic level, a patent gives you the ability to exclude all others from the invention the patent teaches. This 20-year term means that nobody else can make, sell or otherwise take advantage of your patent. If they do, they are infringing the patent and you can sue them. However, a patent is much more than an enforcement tool, it can also be your most valuable asset.

Even before your patent is issued, your invention may form the basis of a start-up company. Perhaps, you’ve invented the new wonder-drug and you decide to leave the world of academia to build a pharmaceutical empire. With your patent in hand, there are a few things to consider before you venture into the world of IP commercialization. First and foremost, you want to make sure to protect your IP. You’ll always be the inventor of the patent, but it is good practice to assign the patent ownership to the company. Both patents and companies often have co-inventors or co-founders, which can make things complicated. If the company does not own the IP, a fall-out between co-inventors could prove fatal. In this case, the unhappy inventor could essentially hold the IP hostage preventing the company from functioning. Making sure the company owns the IP would allow for a disgruntled co-inventor or co-founder to leave the company with the IP still intact.

It’s also important to account for future innovation. As the company grows, employees may develop new innovative ideas for which you may seek patent protection. In these events, be sure to have contractual agreements in place to ensure the company owns the IP, not the employee. In the , the law will favour the employee as owner. The company may gain a shop right to use the invention without infringement but won’t own and be able to commercialize the invention.

Having ownership of a patent means you can monetize your invention through licencing agreements. Using the COVID-19 vaccine for example, the patent owners of each vaccine have the ability to license others to manufacture and distribute the vaccine. This has been a particular cause for concern due to compulsory licencing during emergencies, recently discussed on the . Global pandemic aside, inventors have the opportunity to capitalize on their success through a variety of licencing schemes, be it one-time payments, annual licencing fees or royalties.

It’s also important to consider that not all inventions can stand-alone. Consider an inventor who designed an eco-friendly jet engine. The engine alone doesn’t do much good, but licencing the invention to the companies that build planes offers a huge source of revenue. Licensing is often a two-way street. Your competitors may benefit from your invention, but their success is your success as well. By licencing your eco-friendly jet engine, you may ward off the competition from attempting to develop a non-infringing product. This not only keeps the competition in check but allows you to benefit from the success of all the licensees.

A patent is a powerful tool. It can be the basis of a company and open the door to a profitable licensing scheme. So long as you have a strategy to protect and license your patent there is a world of opportunity awaiting. As an inventor, you have 20 years to capitalize on your patent, so make the most of it.

Written by Maddie Lynch, JD Candidate 2022, enrolled in Professor D'Agostino's Directed Reading: IP Innovation Clinic course at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.��

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We were given a hypothetical inventor’s disclosure, which this year involved a collision avoidance helmet. The disclosure provided information on why the invention was created, what features it included, and drawings of the invention. Although the disclosure provided a lot of information, it was challenging at first to sort through all the details and determine what was relevant for the invention. There was also the added challenge of the inventor not being a real person who we could call ask to explain certain aspects in more detail or discuss why a certain feature was included. We’ve since learned that the real world of patent drafting requires a lot more client interaction to make sure everyone is on the same page.

Fortunately, our two excellent coaches, and from Bereskin & Parr LLP, helped us along the way. They made the competition much more approachable, helping us know where to start, and giving us the “dos” and “don’ts” of patent drafting. They helped us figure out a roadmap, starting with a prior art search and then focusing on claim drafting. To conduct our prior art search, we pulled out all the key features of the invention and used these as keywords to find the relevant prior art. Although we were confident that we had a workable list of related keywords for our prior art search, we were surprised to find a lot of prior art that shared our invention’s features. In fact, one prior art reference had almost all of the features of our invention. This prior art reference consisted of an augmented reality motorcycle helmet with comparable audio and visual systems, capabilities of contacting emergency responders in a collision, and even the option to add full or partial brake control to prevent a collision. Consequently, this really limited our claim drafting strategy as we had to keep the patent requirements of novelty and obviousness in mind.

In drafting our claims, we decided on three independent and seven dependent claims. The independent claims consisted of an apparatus, method, and system claim. Admittedly, our first attempt at claim drafting was very naive. We used terms such as ‘helmet’ and ‘camera’, which we later learned were restricting as they didn’t account for the non-helmet and non-video features of our invention, respectively. We also made the mistake of claiming features that other inventors could easily work around. As such, in our first few meetings with Paul and Denver, we focused on refining our claims to make them broader. We also focused on identifying the point of our invention. That said, during our next few attempts, we wanted to root the claims in what we believed was the most novel and non-obvious feature of our invention: the ability to accelerate and decelerate in the event of an impending collision. Or, as we fancily called it, ‘positive and negative acceleration’.

We decided to include this feature in our independent claims. For example, in our method claim, we drafted a step-by-step approach wherein the cameras and sensors of the wearable headpiece (the broader term for helmet that we decided on) would detect a threat object and subsequently engage breaks or the electronic power assist to provide positive or negative acceleration in the event of an impending collision. In our system claim, we drafted a circuitry wherein a control signal would be transferred from the receiver to the transmitter by the processor – all of which were embedded within the wearable headpiece – to do the same. As for our dependent claims, we included less important features of our invention which served to invalidate a subsequent invention should it successfully go through the independent claims without infringing. Overall, our independent claims varied in scope and content in order to strike a balance between honouring our inventor’s vision and gaining as wide protection as possible.

While we experienced great relief upon submitting our patent application and a sense of joy after conquering the tediousness of claim drafting, we went to the virtual regional rounds ready for questioning; sure enough, we were challenged on the narrowness of some aspects of our claims. All this to say, this experience taught us that the claim drafting process is never-ending, but that’s okay. Different people will have different approaches and viewpoints and there is no one perfect claim. We tried, and we are extremely proud of our growth in just a few months. Not to mention, we did this all virtually for the first time ever.

We encourage anyone interested in patent prosecution to try out for next year’s team. It’s a challenging but extremely rewarding experience!

Written by Maddie Lynch and Eloise Somera.��

Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

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

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Plant breeders’ rights allow for the protection of new cannabis varieties, which can give licenced producers a 20-year monopoly on their unique strain of cannabis. This is not to be confused with the 20-year monopoly granted by patent protection. While plant breeders’ rights protect the plant itself, plants cannot be patented. The Supreme Court of Canada in held that “higher lifeforms”, which encompasses plants, are not eligible for patent protection. However, the subsequent ruling in held that while a plant itself cannot be patentable subject matter, the genes and modified cells that make up the plant are eligible for patent protection.

Despite the cannabis plant itself not being eligible for patent protection, novel pharmaceutical compositions, such as cannabinoids, therapeutic uses of cannabis, and cannabis-related products, machines, processes and methods, are patentable. Indeed, since the Cannabis Act received Royal Assent in June 2018, related to various methods, processes and apparatuses have been filed.

The difference in the scope of protection between patents and plant breeders’ rights may appear small, but plant breeders’ rights create loopholes which make enforcement more challenging. For example, the Farmers’ Privilege allows farmers to save and replant second generation seeds on their own property rather than purchasing new seeds every year. For cannabis producers, this means that a licensee of a protected cannabis variety could save propagating material in order to replant year after year. This exception can be problematic for cultivators who want to protect their cannabis but may not be eligible for patent protection.

Trademarks are also an important IP strategy. However, the strict packaging and advertising restrictions regarding brands and logos on cannabis products limits the utility of trademarks. Under the , cannabis products may display the brand name and one additional brand element, but the size, colour and location are heavily regulated. The limited visibility and promotion make it difficult for producers to cultivate brand loyalty. Fortunately, the recent introduction of in June 2019 offers a new IP strategy for cannabis producers. Producers will be required to demonstrate that the scent or taste is distinctive of their product. Currently, the includes only two taste marks and one scent mark related to cannabis.

The of the Cannabis Act will include regulatory standards, marketing, promotions and labelling as well as the potential for cannabis health products. Particularly, a relaxation on labelling restrictions and the introduction of cannabis health products would create new opportunities for cannabis producers to expand their IP protection.

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.��

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The patent application at issue concerned a computer-implemented method for weighing investment portfolio assets. The application was initially rejected because the essential elements were said to fall outside of the definition of “invention”. Section 2 of the defines an invention as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. Defining a computer-implemented invention as a "machine" or "process" is controversial because, under section 27(8) of the , mere scientific theorems or abstract principles are not patentable. This results in a somewhat grey area in software, where an algorithm itself may not qualify, but its computers and hardware can be both a machine and a process. This by Andrew Currier and Stephen Perry provides interesting insights on the challenges in construing software claims.

To assess a claim’s essential elements, section 12.02.02e of suggests a problem-solution approach. Here, the essential elements of a claim are those which are necessary to achieve the disclosed solution to an identified problem. In Choueifaty, the Federal Court opined that the Commissioner was incorrect to use the problem-solution approach for construing claims, but instead should have used the purposive construction test set out in and (at para 38).

When determining whether an element is essential, the purposive construction test requires the examiner to ask the following questions:

“(1) Would it be obvious to a skilled reader that varying a particular element would not affect the way the invention works? If modifying or substituting the element changes the way the invention works, then that element is essential.

(2) Is it the intention of the inventor, considering the express language of the claim, or inferred from it, that the element was intended to be essential? If so, then it is an essential element.”

Indeed, in response to Choueifaty, the Canadian Intellectual Property Office (CIPO) released on the subject matter of claims related to computer-implemented inventions, medical diagnostic methods, and medical uses. In doing so, they confirmed that the Commissioner should use purposive construction, not the problem-solution approach, to construe claims. Furthermore, CIPO clarified that when a computer is identified as an "essential element", the subject-matter is not automatically patentable. The Commissioner must consider whether (1) the computer cooperates with the other elements as a single invention and (2) the invention has physical existence. A computer used in a well-known manner will not suffice to allow its scientific principles or abstract theorems to be patentable as a single invention. To qualify, the algorithm must improve the computer’s function.

CIPO included of patentable subject-matter under the new guidelines, such as a computer algorithm which analyses seismic measurements. This added performance discerns a physical effect which renders the claim to the algorithm, in cooperation with the computer’s other elements, patentable. However, a hypothetical computer-implemented method which merely receives, processes, and displays seismic measurements is not patentable because the disclosure focuses only on the algorithm (input/output), which neither has a physical existence nor causes any physical changes.

Beyond the scope of Choueifaty, CIPO clarified that when determining the patentability of medical diagnostic methods, all elements in a medical diagnostic claim are presumed essential unless established otherwise. As points out, the previous approach would exclude the “elements of measuring or detecting the genetic alteration or analyte, finding those elements to be inessential.” According to , using this [incorrect] approach, the correlation between the analyte and the disease was considered an abstract idea. As a result, this correlation would fail to receive patent protection. Under the new guidelines, the abstract idea combined with the other elements of the claim (i.e. measurement or detection) make up a single invention. In the provided, a method for diagnosing the risk for developing cancer, measuring the analyte X, and comparing it to a reference sample is patentable. However, a method which includes comparing a report summarizing the levels of X to a reference sample would not be patentable. Thus, a successful claim depends on the physicality of the measurement step.����

Lastly, CIPO clarified that “medical uses” excludes inventions which require the exercise of professional skill and judgement. This is consistent with the established rule that medical treatments and surgery are not patentable. For example, a compound X to treat peptic ulcers is patentable, but a titration regime which requires a medical professional to monitor their patient is not.

����ʰ�’s response to Choueifaty provides long awaited clarity for construing the essential elements of patent claims. Although Choueifaty did not concern medical diagnostic methods, the guidelines that require patentable subject matter to include a detection and measurement element have ushered in a new era of opportunity for medical innovation.

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is an IPilogue Contributing Editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

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Top 10 Most Read Blogs of 2020

COPYRIGHT LAW

CUSMA Implementation

On July 1, 2020, the (CUSMA) officially came into force, replacing the North American Free Trade Agreement (NAFTA). Signed in 2018, the desired effect of CUSMA is to preserve existing trade relations between the three North American countries, and to introduce modernized provisions that address 21st-century trade issues. In particular, the builds upon the legal framework of standards in North America for the protection and enforcement of IP rights.��

Regarding copyright and related rights, Canada is increasing the duration of its term for general copyright protection from 50 to 70 years following the life of the author. Canada will have a two-and-a-half-year transition period to realize this new measure. Additionally, the term of protection for performances and sound recordings will also increase from 70 to 75 years plus life. CUSMA will also increase protection for Rights Management Information (RMI), also known as digital watermarks. While Canada already imposes criminal remedies for altering or removing Technological Protection Measures (TPMs, or digital locks), the Agreement creates new criminal remedies for circumventing RMI. Organizations will have to be mindful when implementing these new provisions to ensure that their practices align with CUSMA’s new obligations.

Canadian Copyright Case Law

91��ɫ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91��ɫ (“91��ɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91��ɫ by the Copyright Board are not mandatory, but dismissed 91��ɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91��ɫ for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because 91��ɫ opted out of the tariffs in 2010, they are not enforceable against 91��ɫ. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

Fair Dealing
91��ɫ argued that it was not accountable for any tariffs associated with the reproduction of materials because they met their “” and therefore constituted fair dealing pursuant to section 29 of . On this issue, the FCA found that the Federal Court made no palpable error in its analysis, concluding that even though copying followed the guidelines, this did not necessarily make it a fair dealing.

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in 91��ɫ’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

Wiseau Studio, LLC et al. v. Harper et al., 2020 ONSC 2504

On April 23, 2020, Justice Paul Schabas’ released his decision in the case of . Filmmaker Tommy Wiseau brought a claim against the defendants, alleging that their documentary, Room Full of Spoons, about Wiseau’s film, The Room, breached his copyright. In his reasons, Justice Schabas provides artists in Canada with an authoritative statement defining documentaries an allowable purpose under the Copyright Act’s fair dealing provisions, “to the extent that a documentary uses copyrighted material for the purposes of criticism, review or news reporting.”

The decision affirms fair dealing as a user’s right, as opposed to a defense to the copyright infringement alleged by the plaintiff, solidifying the balancing of rights and freedoms as a core purpose of the Canadian Copyright Act. In addressing the Copyright Act’s fair dealing provisions, the Court offers useful guidance to documentary filmmakers wishing to stay on-side with section 29 through an analysis of the factors outlined in . A more in-depth discussion can be found . As well, Justice Schabas’ reasons address the Copyright Act’s moral rights provisions, fundamentally finding that criticism or negative tones alone will not trigger a breach of an author’s right to the integrity of a work.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada 2020 FCA 100 & CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101

On June 5, 2020, the Federal Court of Appeal released two decisions (2020 FCA 100 and 2020 FCA 101) which ruled on the applicability of the “making available right” (“MAR”) under s. s.2.4(1.1) of the Copyright Act. The FCA found that songwriters are not entitled to royalties when music is first posted online, but only after it has been downloaded. This decision overturns a 2017 ruling from the Copyright Board, which found that composers and songwriters are entitled to two royalties: first when it is made available under a streaming platform such as Apple Music or Spotify, and second when the song is downloaded or streamed.

By way of background, The Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) administers the right to “communicate” musical works on behalf of copyright owners. It filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through online music services including Apple Music and Spotify. These tariffs are available when a musical work is “communicated.”

After SOCAN had filed its proposed tariffs, the Copyright Act was amended to include the MAR Provision, which reads as follows:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

This raised the question of whether the mere making available of a work on a server for the purpose of later streaming or download by the public was a “communication” for which a tariff was payable. In 2017, the Copyright Board concluded on the basis of expert witnesses that the double royalty scheme is available.

Stratas J, writing for the FCA, overturned this conclusion and stated that the Copyright Board "skewed its analysis in favour of one particular result" and relied on "leaps of reasoning" that are incompatible with the precedent set out in the Supreme Court of Canada’s (SCC) 2012 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada decision. In that decision, the SCC concluded that transmission over the Internet of a musical work that results in a download of that work is not a communication.

PATENT LAW��

The Impact of COVID-19 Legislation on the Patent Act and Patentee Rights

(“An Act respecting certain measures in response to COVID-19”) received Royal Assent on March 25, 2020.�� Included in this bill was the addition of section 19.4 to the which significantly changed the rights of patent owners this year. For instance, while section 19.4 allowed the to authorize the government’s use of previously patented inventions to respond to a public health emergency, the Commissioner’s new powers permitted authorization to be granted to other entities as well. In addition, there was no requirement for applicants (be they the government or otherwise) to inform the patentee in advance of applying for authorization to use its patent. This meant that patentees received no notice if an applicant applied to use its intellectual property. Instead, patentees only received notice if the Commissioner granted authorization to the applicant following their submission. Moreover, section 19.4 precluded patentees to an express right of appeal of the Commissioner’s authorization. Instead, patentees were left to rely on section 19.4(8) of the Act and had to apply to the Federal Court to prevent the government (or any applicant) from “making, constructing, using or selling the patented invention in a manner that [was] inconsistent with the authorization.”

While patentees seemingly received little benefit from the Patent Act's amendments mentioned above, the legislative changes offered some positive developments for patent owners. For example, pursuant to s.19.4(5), holders of the patent are compensated for government use, “taking into account the economic value of ‘the authorization and the extent to which they make, construct, use and sell the patented invention.’” Additionally, as of September 30, 2020, the Commissioner can no longer award the government with any authorizations, which effectively serves as an imposed limit on the Commissioner’s powers. While COVID-19 may arguably be captured by other provisions of the Patent Act (cf. s. 19 or s. 21), s. 19.4 clarifies the boundaries of government uses of patents for public health emergencies.��

CIPO Issues New Guidance Document After Federal Court Rejects Problem-Solution Approach to Claim Construction

Following the 2020 Federal Court decision in , CIPO released a new to clarify patentable subject matter under the Patent Act. The court, and CIPO, endorsed the purposive construction approach to constructing claims set out in 2000 by the SCC in and . The new guidelines cover the framework to be followed by patent examiners while identifying certain elements of patent claims as essential. ����ʰ�’s earlier pointed at undertaking claim analysis, which involved identifying the “proposed problem to the disclosed solution.” The Federal Court in Choueifaty clarified this problem-solution test as incorrect for claim construction.

The Federal Court held that a correct approach looks at the entirety of the specification and presumes an element as essential unless demonstrated to the contrary. Purposive construction attempts to give effect to the intentions of the applicant in determining the scope of the claimed monopoly.

This is particularly important for computer-implemented inventions. CIPO, in the , clarified that an algorithm that improves the functioning of the computer would constitute a single invention and is patentable subject-matter. However, the mere use of a computer to execute an algorithm remains nonpatentable subject-matter under subsection 27(8) of the . This update has brought much needed clarity to the subject matter eligibility issues in computer-related patents.

TRADEMARK LAW

Claims to Official Marks not a Complete Defence to an Infringement Claim��

In February 2020, the Federal Court of Appeal upheld the Federal Court’s decision in , finding that public authorities cannot rely on relating to official marks as a complete defence against an infringement claim. At its most basic level, official marks allow public authorities to , even those that may not otherwise be registered as regular trademarks. Quality Program Services Inc. (QPS) brought a Federal Court claim against the Ministry of Energy (MOE) for infringing their “EMPOWER ME” trademark related to energy awareness, conservation, and efficiency services. The MOE had launched a website with the mark “emPOWERme” to educate Ontario residents about the province’s electricity system. In response to QPS’s claim, the MOE sought protection and public recognition of its mark as an official mark pursuant to which states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… any badge, crest, emblem or mark…adopted and used by any public authority, in Canada as an official mark for goods or services.”

However, the Federal Court was not persuaded that s. 9 provided the MOE complete immunity from an infringement claim. Instead, it was recognized that the infringement rights of a trademark holder, such as QPS under , could not be ignored simply because a public authority has been given public notice of its adoption and use of an official mark, especially when that mark follows a registered trademark which could cause confusion between the two marks, as was the case here. The Federal Court of Appeal further that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril.” As a result of this case, we get more clarity and limitations to the confusing and all-encompassing world of official marks. While it is clear that official marks following an existing trademark do not automatically strike down an infringement claim, the official mark and the preceding trademark must be similar in some way to set off a trademark confusion analysis.

Lack of Use is Insufficient for Opposing a Trademark Application

In , the Federal Court affirmed the Registrar’s decision to reject Pentastar Transport Ltd’s opposition to Fiat Chrysler Automobiles (FCA) US’s trademark application for Pentastar. Pentastar Transport Ltd owns a registered mark Pentastar for its oil and gas services, whereas FCA US applied to register Pentastar for its vehicle engines. Pentastar’s ground of opposition is that FCA US did not possess a genuine intention to use Pentastar for its engines, which contravened s. 30(e) of the old Trade-Marks Act. As summarized��, “opposition proceedings involve a two stage inquiry. First, the opponent bears an evidential burden to establish that the facts alleged to support the issue exist. If established, then the applicant bears a legal burden to show that its application does not contravene the provisions of the Act as alleged.” The Court upheld the Registrar’s factual finding that Pentastar did not adduce sufficient evidence as the factual ground of its opposition. The Court also agreed with the Registrar that “use” and “intended to use” were not synonymous. In this case, this ruling entails that even though FCA US had not started using Pentastar as a trademark on its engines, it did not follow that FCA US had no intention to use it in the future. In fact, there was circumstantial evidence (as summarized��) indicating that FCA US indeed harbored the intention to use Pentastar as a mark for its engines.

United States Supreme Court Developments

In April 2020, the United States Supreme Court decided the case . The Court determined that even an innocent trademark infringer could lose its profits and that wilful infringement is not a pre-condition to a profits award. The Court came to this determination by interpreting which does not mention the condition of wilful infringement. Fossil was liable for $6.7 million in profits to Romag, for using counterfeit Romag fasteners in its manufacturing of leather goods.

In June 2020, the Court in held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Booking.com sought to register a mark with the USPTO but was denied because “Booking.com” was not a generic name to consumers. Therefore, the term was not held to be generic. The USPTO analyzed the terms “Booking” and “.com” separately. This decision suggests that domain names may need to be marketed to consumers as such to be trademarked.

Trademark Law and Sports in 2020

With all its troubles, 2020 has also been an eventful year for trademark lawyers in sports. In February, a Maryland-based nonprofit Game Plan����against Lebron James and his commercial associates, including Nike, ESPN, and Take-Two Interactive. Game Plan claims that Lebron and his associates had encroached upon its trademark rights by unauthorized use of the registered slogan “I am more than an athlete” to make profits. In April 2020, Michael Jordan����in China that had dragged on for eight years. China’s highest court ruled in favor of Jordan against a Chinese company which had been marketing its sports products under the brand name Qiaodan - a Chinese transliteration of Jordan - since the 1980s.

In September, soccer superstar Leo Messi’s legal team����Europe’s highest court that Messi should be granted the exclusive right to the brand name Messi. Other similar names, such as “Massi,” should be disallowed for commercial purposes to avoid confusing the consumers. Lastly, although the Washington Football Team (formerly, Washington Redskins) changed its name in 2020, it now runs into��. As it turns out, many alternative team names have already been registered by a trademark squatter Martin McCaulay. Washington fans may need to wish for the new year that their team will receive a new name that neither infracts trademark law nor carries racist connotations.

Fashion Trends Followed by Brand Owners throughout the Pandemic��

As it is said, every crisis brings new opportunities. While some members of the general public may have doctor-recommended masks in the early months of the pandemic, they have become a trend for upcoming years. As a result of this trend, big luxury brands tapped into this unchartered territory just after the���� in July. Luxury fashion companies are now monetizing their brand value through this����i.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands like����have already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,����for its uniquely styled��Toile Monogram print for its��Face Shield, filed for��“protective face shields; protective masks; protective chin shields; [and] protective gloves” (class 9), and “face masks for medical use; Surgical masks; protective face shields for medical use; protective chin shields for medical use; [and] gloves for medical use” (class 10).����

On the other hand, , Nike, and����masks also lead the charts of most searched and purchased masks.��Small and high street brands are attempting to claim proprietary rights in these trademark classes because of the long-term monetary potential. The new fashion ornament brings in value, and the brand owners wish to benefit from damages in infringement and counterfeits cases. Counterfeits are also escalating on e-commerce portals, such as��. A Chinese company has filed a trademark infringement suit for its brand����in the Illinois state. Furthermore, on December 14, 2020 the����announced an initiative to accept expediated examination requests for trademark applications for COVID-19 related goods and services, which include sanitary masks and other things. In view of this, we can predict an����from such luxury and burgeoning fashion brands.����

Bricks and Mortar Presence No Longer Necessary to Establish Use of a Trademark

In the past, the Federal Court of Canada has been unclear as to the fate of travel-related services that do not have a physical presence in Canada, but seek to maintain their Canadian trademark registration through regular use. However, following the Federal Court of Appeal’s decision in , that fate has been clarified in favour of travel-related services. Since 2014, Miller Thompson has tried to expunge Hilton’s WALDORF ASTORIA trademark given that it did not offer physical WALDORF ASTORIA hotel-related services in Canada. As such, Miller Thomson commenced proceedings under s.45 of the Trademarks Act, which would require Hilton to show use of its WALDORF ASTORIA trademark during the three years prior to the proceedings, known as the Relevant Period.

But, on September 9, 2020, the Court of Appeal upheld the Federal Court’s decision that Hilton had demonstrated use of their WALDORF ASTORIA trademark during the Relevant Period. Among other evidence presented by Hilton, during the Relevant Period, Canadians could see the WALDORF ASTORIA trademark when visiting their website and could book reservations in several ways, including directly on the site. As well, Canadians generated $50 million in revenue for Hilton as a result of their stays at WALDORF ASTORIA hotels outside of Canada. Thus, the Court of Appeal summed up the as follows: “so long as consumers, purchasers, or members of the public in Canada receive a material benefit from the activity at issue, it is a service.” This means that online reservations and payment services for later stays outside of Canada are included under the meaning of “hotel services.” Furthermore, a brick and mortar hotel is no longer absolutely necessary to establish use. In fact, in the Court of Appeal’s conclusion, it stated that “the requirements for ‘use’ under section 45 of the Act must adapt to accord with 21st century commercial practices.” For other trademark owners facing the same issue as Hilton, the Federal Court of Appeal provided guidance on how to make a , including website metrics showing that Canadians access their services online and subsequently purchase services as a consequence of their mark being displayed.

Trademark Modernization Act of 2020 Passed

On December 21, 2020, Congress passed the . This bill was enacted to amend the 1946 Trademark Act and authorized third parties "." The bill also introduced a����that would allow any party to petition for the expungement of a registered trademark that is not commercially active. The goal of these amendments was to reduce the number of “” that were on the register despite not being in use, allowing a more productive, competitive commercial trademark market. These amendments are also speculated to affect the longevity of trademark registrations as trademarks become increasingly vulnerable to cancellation. The Trademark Modernization Act of 2020 will certainly continue to generate more discussion and result in changing practices in Canada.

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

With contributions from IPilogue Editors:

Copyright:��Meghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,��Saumia Ganeshamoorthy

Patents:��Dan Choi, Gurbir Sidhu,��Khristoff Browning, Jin Xu,��Madelaine Lynch

Trademarks:��Adele Zhang, Aishwerya Kansal,��Jingcai Ying, Eloise Somera, Lauren Chan

Bonnie Hassanzadeh, Nikita Munjal, Sebastian Beck-Watt, and Alessia Monastero

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Beware of the copyright

Generally, Halloween costumes are not protected by copyright as articles that serve a utilitarian function (i.e. clothing) are not eligible for protection when produced in quantities greater than fifty. However, not all aspects of a costume qualify as useful. For instance, masks are not considered to serve a utilitarian function and can indeed be protected by copyright in the United States. held that nose masks were not useful articles, and thus entitled to copyright protection. While there may not be an equivalent Canadian case regarding novelty masks, (c.o.b. SpareParts), a jewellery case, stated that “[i]t is not enough to hold without evidence that because jewellery is worn it is ipso facto useful.” This would suggest that the mere fact that something is worn, such as a mask, would also not be automatically considered useful and could be protected by copyright.

More recently, in the United States Supreme Court held that “the design of a useful article is eligible for copyright protection… if the feature (1) can be perceived as a two- or three- dimensional work of art separate from the useful article, and (2) would qualify as protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated”. The Supreme Court determined that the design on the cheerleading uniform could be protected by copyright as separate from the clothing itself. This could have wide-reaching implications beyond Halloween costumes, as it would be beneficial to the fashion industry’s war against knockoffs.

Although this was a US decision, it helps to shed light on the potential scope of fashion copyright infringement. The protection of a design, be it fashion or Halloween costume, would extend protection beyond masks and jewellery. A specific design of colours and shapes, such as those on Varsity Brands cheerleading uniforms, are now eligible for protection. This would mean United States fashion designers could apply for copyright protection on stripes, buckles and many other artistic combinations.��

Under section 29.22(1)(e) of the , it is not an infringement of copyright for an individual private use. While big box stores selling Marvel superhero costumes likely have a licence to do so, those putting together their costume at home need not worry. There is no need to fear the legal boogeyman, your homemade Halloween costume is unlikely to land you in a courtroom.

Spooktacular patents

There are a number of Canadian patents covering all aspects of Halloween. The Evil Eye () is a Halloween mask that has voice activated light-up eyes. There are even patents on your trick-or-treat bags! is a trick-or-treat bag with a light in the handle. The is another fun trick-or-treat patent to give unwary parents a trick in exchange for their treats. Even jack-o-lanterns are covered with the to make sure they are displayed for optimal spookiness. This year when you’re out collecting candy, take a second to look at all the inventive genius that has gone into Halloween over the years.��

Candy

In 2019, estimated there were 4 million children of trick-or-treating age (5 – 14 years old). With all those candy-hungry children, it’s no surprise that revenue from ��Halloween candy was . With so much at stake, candy makers are eager to protect their money-making trademarks. Most, if not all, of the candies you know and love are protected by trademark law. The classic love-it or hate-it is protected by trademark. Hershey’s Chocolate has numerous trademarks, such as the classic or the phrase. In fact, even the of Hershey’s Kisses are protected!

Hershey and Mars are two of the big players on Halloween night. However, when kids are sorting through their piles of candy, little do they know of the battle that has raged between these two candy empires. In 2015 Mars and Hershey settled their US case regarding . This isn’t the first time that Hershey and Mars have been at odds. In 1998, that Mars infringed upon the trade dress of their Reese’s Peanut Butter Cups was dismissed. Understandably, Hershey is very protective of their peanut butter cups, and again filed suit against Mars for trademark infringement, but

So next time you hear someone say Halloween was “invented” by the candy companies you can say, actually, Halloween was perfected by lawyers!

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

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