Pankhuri Malik is an Osgoode LLM Graduate, IPilogue Writer and IP Innovation Clinic Fellow.

Photo by Buda Photography

On November 9, IP Osgoode, Reichman University and Microsoft hosted the first in-person Bracing for Impact Conference since 2019. The conference focused on “The Future of AI for Society.” While AI is full of exciting possibilities, real-world application and integration are relatively nascent. Implementing AI technology in society requires complex interdisciplinary engagement between engineers, social scientists, application area experts, policymakers, users, and impacted communities. At the conference, an esteemed lineup of speakers across disciplines discussed the forms that interdisciplinary collaboration could take and how AI can help shape a more just, equitable, healthy, and sustainable future.

91��ɫ and IP Osgoode have been frontrunners in conversations surrounding AI since 2016, before it was cool. The Panel 2 discussion - “AI for the Future of Legal Practice – Self-Regulation, Access to Justice and the Importance of Legal Data” - is a prime example of the forward-thinking nature of the organizations, which seek to use their diverse and interdisciplinary structure to have well-rounded conversations about incorporating AI in legal practice.

The Panel discussed:

1. AI in law school curriculums;
2. AI as an aid to Access to Justice; and
3. The interplay between AI and Data.

Chaired by Osgoode Prof. Jonathon Penney, Panel 2 featured Sari Graben (Associate Dean at Lincoln Alexander School of Law, Toronto Metropolitan University), Nye Thomas (Executive Director, Law Commission of Ontario), Professor D’Agostino (who needs no introduction) and Ryan Wong (Osgoode Hall Law School alum and Associate at Smart & Biggar, Toronto).

Incorporation of AI in law school curriculums

Bringing her knowledge and experience in devising law school curricula to the table, discussed the delicate balance that must be achieved between law and technology in academics. She highlighted that due to AI’s evolving nature, the rapid pace of innovation in the space, and the lack of conversation between legal and technological experts, AI is a difficult subject to teach in law schools. Sari elucidated the need for innovative and critical thinking when approaching AI’s interplay with law.

Broadly, Sari discussed that to incorporate AI into the practice of law, we must first recognize that human involvement in legal decision-making traverses just a series of rules that must be applied uniformly to a situation in an automated manner.

Sari stated that human sensibilities, the feeling of being “heard,” and the trust placed by the public in a human authority figure who makes rational decisions are irreplaceable in legal practice. Using AI to crystallize a set of rules depersonalizes the law and isolates persons from the human element of justice.

Keeping these considerations in mind, Sari discussed that these challenges might be overcome by connecting technology and law, such that technically qualified and capable people become integral for implementing AI in law and in the use of law to regulate AI. Only dedicated persons actively working towards advancing the field can build a longstanding relationship between the two.

AI as an aid to Access to Justice

discussed the incorporation of AI in mitigating Canada’s prevailing Access to Justice crisis. To mitigate the challenges of a slow, expensive, and opaque system characterized by racial bias and unequal means to access the judiciary, Nye recommended promoting conversations around trustworthy and legal AI. Nye stated that AI-related policy needs to be developed as AI must be incorporated into the due process of law to increase transparency, reduce costs and implement a more uniform justice system.

Nye proposed that a primary tool for this would be the regulation of AI. He highlighted that not all systems that fall within the definition of AI impact society. Nye recommended devising a system to identify impactful AI and developing a regulatory system to monitor and implement it to ensure equal access and transparency for the public.

AI and data protection and ownership

Osgoode’s own discussed the need for different academic fields to come together for an interdisciplinary approach to AI. Prof. D’Agostino stressed the need for the university to lead the debate and conversation around interdisciplinary AI since different departments within the university are already working on various aspects of AI related innovation.

Prof. D’Agostino discussed the need to investigate AI-related data ownership. Through the IP Innovation Clinic, IP Osgoode has undercut 2 million dollars in IP-related services. And while offering pro-bono services to start-ups and individuals looking to grow their business through IP development, Prof. D’Agostino and her team have created a bank of commonly asked questions in the field of IP and developed the AI-driven .

, an Osgoode Alum and Associate at prominent IP Boutique firm Smart & Biggar, demonstrated how the ChatBot’s bank of intent-based questions provides free and instantaneous IP innovation information without the need for human intervention.

Key takeaways

Since its inception, AI has been received with scepticism. While some warn of it replacing humans, others are optimistic about the scope of innovation AI provides. This panel expressed optimism and presented a picture of AI technology combatting prevalent issues in legal practice.

In the debate about whether technology is new to the law or just another challenge that the law must overcome, the panellists gave me the impression that technology will be the law’s best friend in the coming years. 

The post Bracing for Impact – The Future of AI for Legal Practice appeared first on IPOsgoode.

Pankhuri Malik is an Osgoode LLM Graduate, IPilogue Writer and IP Innovation Clinic Fellow.

In a landmark , Novartis has signed a Voluntary Licensing Agreement with the for its nilotinib drug, used in treating Chronic Myeloid Leukemia (CML) in adults and children as young as a year old. Nilotinib is the first cancer treatment drug and the first drug for the treatment of to be voluntarily licensed in a public health initiative.

The MPP is a public health organisation funded by and backed by the United Nations. The MPP  aims to facilitate access to life-saving medicine in low- and middle-income countries. So far, the MPP has signed agreements with 18 patent holders, MSD and Pfizer, for treatments for tuberculosis, COVID-19, Hepatitis C and HIV.

Nilotinib is a second-generation tyrosine kinase inhibitor offered to patients resistant or intolerant to imatinib. It is administered as an oral medication twice a day. The World Health Organization first added it to its list of Essential Medicines in 2017.

The coincided with the World Cancer Congress’s announcement that nilotinib is now free for development, manufacture and supply in seven countries including Egypt, Guatemala, Indonesia, Morocco, Pakistan, Philippines and Tunisia, subject to local regulatory approvals. MPP’s Executive Director Charles Gore acknowledged that while the remaining term for nilotinib's patent is not significant, with the patent expiring in the US on July 4, 2023, this move is a precedent for MPP’s expansion into drugs for non-communicable diseases. In terms of revenue, nilotinib accounted for for Novartis last year.

This move comes in the wake of Novartis and MPP joining the Access to Oncology Medicines Coalition (ATOM) in May 2022. ATOM is a global initiative led by the Union for International Cancer Control (UICC) to improve access to cancer treatment in low- and middle-income countries. The World Trade Organisations’ Agreement on the Trade Related Aspects of Intellectual Property Rights already provides waiver from patent obligations to the least developed countries. Further, the phase-out period for the waiver has been till January of 2034. Patent protection is only one of many factors that hamper this access.

Since the remaining term of the patent is less than a year, the footprint of this license probably will not be significant. Though, with around Big Pharma’s chokehold on the healthcare industry increasing, this may prove to be a bargaining chip for further discussion on licensing of life-saving medicine in low- and middle-income countries.

The post Novartis signs Voluntary License Agreement with the Medicine Patent Pool for Nilotinib appeared first on IPOsgoode.

Pankhuri Malik is an Osgoode LLM Graduate, IPilogue Writer and IP Innovation Clinic Fellow.

In keeping with our reports on the Unified Patent Court, it was announced on October 19, 2022, that the Administrative Committee of the Unified Patent Court (“UPC”) of 85 judges to the UPC. Further, in accordance with its statute, the Administrative Committee, also shared the composition of UPC’s Presidium.

Essentially, judges have been appointed to UPC’s Court of First Instance and Court of Appeal. Of the 85 Judges, 34 are legally qualified judges and 51 are judges with technical expertise in , including Biotechnology, Chemistry and Pharmaceuticals, Mechanical Engineering and Physics.

for a judgeship, the applicants were required to have experience in patent litigation, be a national of a contracting member state to the UPC, and have command over any one of the official languages of the European Patent Office.

The Court of Appeal will be presided over by Judge Klaus Grabinski, a German Federal Court Judge, and Paris Court of Appeal Judge Florence Butin who will be taking on the role of the President of the Court of First Instance. The Presidium is with five more judges from Netherlands, Sweden, France and Germany. Of these judges, three have been appointed to the Court of First Instance and the remaining two will preside over the Court of Appeal.

With the UPC consolidating patent proceedings for the entirety of the European Union, it is expected to host a multitude of legal proceedings. Since all the judges are working on a part time basis, it remains to be seen if the Court will be able to keep pace with the legal actions it is expected to adjudicate on. , at the local or regional division level, unless the parties agree otherwise, a bench of three legally qualified judges will hear each case.  Technically qualified judges will only be included on the bench if a party or the panel requests it, or in cases involving a revocation or invalidity-based counterclaim. , a case in the Court of First Instance will be heard by a bench of three judges, two of which are legally qualified and one who is technically qualified.

The sunrise period of the UPC is expected to run from January 2023 to March 2023, giving patent holders the opportunity to opt-out of the jurisdiction of the UPC.

Evidently, the selected judges are from a wide range of legal, national and technical backgrounds. Many IP enthusiasts had previously raised concerns over the UPC’s composition, that the global pro-patent bias may trickle into the UPC’s decision making as well. While it is unclear as to whether the composition of judges balances both innovators’ and the public’s interests, the diverse backgrounds of the judges seem to reflect an effort towards attaining this equilibrium.

The post Unified Patent Court’s Judicial Appointments Announced appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

In the latest development in the global patent wars between Google and Sonos, Google has Sonos, having filed two suits in the United States District Court for the Northern District of California on August 8, 2022. Through these , Google has Sonos of infringing seven (7) of its patents related to , including detection of “hotwords” and wireless charging.

Google and Sonos’ spotty history

Google and Sonos have been trying to one-up each other since the beginning of the pandemic. As reported , in January 2022, two years after Sonos filed the first patent infringement lawsuit against Google, the United States International Trade Commission issued a ruling in favour of Sonos holding Google’s products infringing on five of Sonos’ smart speaker related patents, and banning the import of goods with the infringing features into the US.

To circumvent the import ban, Google chose to roll back many features offered to its customers at the time of sale of the products. Expectedly, the decision to remove functionality instead of licensing the patents from Sonos has caused some with Google’s customers.

Allegedly, the companies had previously worked together to incorporate Google voice assistant on Sonos devices. But this relationship soured soon after, with Sonos Google of monopolistic practices and of using patent laws to squash competition from small companies. Google, on the other hand, that they collaborated to develop new technology and accuses Sonos of leading a misleading campaign against Google.

Most interestingly, Sonos has accused Google of something called .  Sonos claims that Google’s infringement of over 100 of Sonos’ patents is deliberate and a business model. Efficient infringement refers to Google’s bet that the cost of contesting and paying off patent infringement lawsuits will be significantly less than the profits earned from sale of the technology. Sonos also says that Google has been undercutting its prices to crowd competitors out of the market.

The present suit

On August 8, Google filed two lawsuits against Sonos it of infringing seven of Google’s patents through a range of products, such as Sonos Move, Sonos Roam, Sonos Arc and Sonos One. The company also plans to file these actions before the United States International Trade Commission to ban imports of allegedly infringing Sonos products into the US.

Sonos has responded by accusing Google of using the lawsuits as an intimidation tactic against Sonos calling out Google’s practices.

What may occur moving forward

Neither company has a history of using patent laws offensively. While Google continues to collect user data and uses online as its main money-maker, its approach on initiating litigation, like Sonos, has been lackadaisical.

But with both companies facing off in multiple jurisdictions, it remains to be seen if there is any merit to Sonos’ claim of efficient infringement.

The post Google sues Sonos for Patent Infringement – Again appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On , the Federal Court of Appeal (“FCA”) the Federal Court’s decision, upholding the validity of two of Bristol-Myers Squibb (“BMS”) and Pfizer’s patents. The relevant patents concerned the active pharmaceutical ingredient Apixaban, used in thrombosis treatment. Apixaban is a selective inhibitor of the enzyme Factor Xa (“FXa”) which works by blocking certain blood-clotting proteins.

Through its lawsuit, and subsequent appeal, Pharmascience Inc. (“PMS”) challenged the validity of two of BMS’s patents, Canadian Patent Nos. 2,461,202 (“202”) and 2,791,171 (“171”) on different grounds.

The 202 patent describes the action of many FXa inhibitors, including Apixaban, in thrombosis treatment. This patent was challenged by citing BMS’s expired patent, Canadian Patent Number 2,349,330 (“330”) on the following grounds:

1. Lack of Status as a Selection Patent: Essentially, PMS alleged that the Federal Court did not identify the 202 patent as a selection patent and failed to appreciate that it does not disclose a special advantage over the 330 patent, which is essential for it to be recognized as a selection patent. The FCA, however, reaffirmed the lower court’s finding that a special advantage was disclosed by inference. FCA confirmed that Apixaban, under the 202 patent, was identified from the genus of compounds protected by the 330 patent because it was useful.
2. Anticipation and obviousness, falling within the broad ambit of double patenting: PMS also claimed that the 202 patent did not identify the inventive concept of the claims in issue. PMS claimed that since 202 does not disclose a special advantage, the patent is fatally flawed due to anticipation and obviousness. The FCA disagreed and reaffirmed Federal Court’s finding that apixaban’s inventive concept is that it is an effective FXa inhibitor useful in treatment of Thromboembolic disorders, as opposed to the 303 patent which only had the potential to be useful.
3. Insufficiency: Lastly, PMS challenged the 202 patent as Apixaban was not identified by the patentee at the date of publication of patent; PMS argued that this error constitutes insufficient of identification of the invention. The Court, however, disagreed PMS and held that the relevant specification for determination of sufficiency is the issued patent, and not the publicized patent.

The 171 patent relates directly Apixaban tablets’ formulation, particularly the particle size and dissolution rate of the medicine. The 171 patent describes the method of formulation such that it displays solution-like properties in the body, which optimize absorption.

The primary challenge was obviousness (as discussed ). The contention in this case pertained to a fifth additional component of the test, the “obvious to try” test. This component questions the validity of a patent on grounds that some inventions might be obvious to try due to their chemical structural similarity. PMS claimed that the Federal Court should have concluded that the claims in 171 are invalid because the invention was obvious to try.

However, FCA disagreed. The Court agreed with the lower court in that the formulations of the 171 patent are indeed inventive because a skilled person in the art would not have thought to reduce the particle size to improve absorption, or to target a lower dissolution rate. The FCA held that the lower court considered the correct and relevant factors in determining what would have been obvious to try to a person skilled in the art. The FCA confirmed that the lower court correctly held the patent valid.

Other jurisdictions

It is noteworthy that BMS and Pfizer’s patents for Apixaban have faced similar challenges outside of Canada as well. The companies have, so far, successfully enforced their patents in the . This Canadian decision adds another point to the companies’ win column.

The post Another Win for BMS and Pfizer’s APIXABAN Patents appeared first on IPOsgoode.

Dan Bereskin presenting. Photo by Prof. Pina D'Agostino

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On August 31, 2022, IP Osgoode held its first in-person event in over 2 years and the first instalment of the IP Osgoode Speaks series since 2020. At the event, , the founding partner of the highly regarded IP Boutique firm , gave a lecture on balancing rights to freedom of expression with the rights of IP owners and users.

Being the first in-person event since the beginning of the pandemic, the lecture brought us back to an energised and inquisitive group addressed by Mr. Bereskin’s ease and sense of humour. Dr. Pina D’Agostino began with opening remarks, recognized the novelty of an in-person lecture in 2022 and acknowledged all the work that went into bringing it together.

Mr. Bereskin began his lecture by acknowledging the multitude of perspectives held by different IP enthusiasts, such as academics, IP owners and private practitioners. He recognized that the views he presents maybe termed as him “going over to the dark side.”

He proposed that in IP infringement cases where freedom of expression is a concern, an injunction should not be granted without proof of actual substantial harm or proof of likely actual substantial harm. This harm primarily consists of economic loss and reputational loss. It is noteworthy that, in the absence of proof of economic loss, Mr. Bereskin does not include mere rhetoric of reputational harm, without solid evidence, within the ambit of actual substantial harm.

To make his point, Mr. Bereskin used some interesting examples of how courts have treated parodies of IP rights around the globe. He discussed examples of corporate overreach by IP owners, such as Louis Vuitton and United Airlines.

Upholding Freedom of Expression

Most notably, Mr. Bereskin discussed two unsuccessful actions by Louis Vuitton (“LV”). The first was LV’s suit against artists Nadia Plesner. Plesner had used a sketch of an LV bag in her painting to showcase the commercialising of Darfur genocide victims to appease first world audiences. This painting was later reproduced on t-shirts which were sold to raise money for the genocide victims. LV sued Plesner alleging trademark infringement. Ultimately, Plesner won the case against LV and her rendition of the bag with the court upholding her right to freedom of expression over LV’s . Mr. Bereskin astutely noted that Plesner’s artwork would have been less popular if LV had abstained from legal action.

(Photo credits: )

Mr. Bereskin also discussed LV’s case against Haute Diggity Dog, a company that makes plush toys for pets to chew through parody of famous trademarks of luxury products. One such example is Haute’s “Chewy Vuiton” plush toys. LV sued Haute for trademark infringement and trademark dilution. The US Court of Appeals (4^th circuit), however, that Haute’s products are successful parodies of LV’s handbags, do not raise any likelihood of confusion and are therefore, not infringing.

Priortizing IP Rights over Freedom of Expression

On the flip side, we have the case of United Airlines and Mr. Jeremy Cooperstalk, a Canadian professor who catalogued complaints against United Airlines on the parody website “Untied.���dz�”. United Airlines filed a lawsuit in 2012 alleging IP infringement and confusion through the website which led people to believe that they are registering complaints with United Airlines themselves. This reasoning was dubious at best, since “���Գپ����’s” website denied any allegiance with United Airlines. The Federal Court however disagreed with Mr. Cooperstalk and held his website violative of United’s IP rights. Interestingly, Jimmy Kimmel’s amended slogan (“F**k You”) and accompanying ad for the airline in the US continue to be available due to the US’s stronger protection of freedom of expression.

Takeaways

Through these, and many more examples, Mr. Bereskin made a compelling case for not only recognizing creators’ IP rights, but also the limitations of those rights, especially when they conflict with the right to freedom of expression. Overexpansion of IP owners’ rights poses risks to freedom of expression and should be curbed before these rights go rogue.

For a student who did not get an opportunity to experience Osgoode and IP Osgoode pre-pandemic, the energy and fervour of the lecture hall, the brilliant insights by Mr. Bereskin and the surrounding conversations around his lecture, this lecture served as a unique insight into the power of hallway chatter. Surrounded by snacks and coffee, the lecture was a unique opportunity to learn from an IP legend. It also marked the first step in IP Osgoode’s next chapter where a hybrid system can bring together IP enthusiasts in a most enriching way.

Left to Right: Prof. Pina D'Agostino, Dan Bereskin, & Rhoda Gryfe. Photo by Ashley Moniz

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Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

NBC Universal has filed a against Jay Kennette Media Group (“JKMG”), an entertainment company over the latter’s registration of the mark “Dunder Mifflin.” As “The Office” fans know, Dunder Mifflin is the name of the fictitious company prominently featured in the show. NBC that JKMG is practicing trademark squatting to unfairly make money by registering trademarks belonging to others. JKMG for registration of the mark for sale of apparel under Class 25, and the mark was registered in July 2017. Recently, NBC’s application for registration of the mark “Dunder Mifflin” was by the USPTO citing JKMG’s mark, presumably prompting the lawsuit.

What is trademark squatting?

WIPO trademark squatting as the act of a person registering a trademark for a brand that belongs to someone else. Many companies have turned trademark squatting into a . NBC’s “Dunder Mifflin” has been a particular target of trademark squatting .

In terms of defences, the is a useful tool against the practise of trademark squatting. If NBC can successfully prove that JKMG had knowledge of NBC’s reputation in Dunder Mifflin, which is likely, and registered it with the dishonest intention of trading upon its goodwill, JKMG’s registration of the mark stands to be revoked.

JKMG’s trademark portfolio

, both current and expired marks, may prove to be useful for NBC’s case. JKMG’s trademarks include “Hillman College” (popularly featured in “The Cosby Show”), “Super Saiyan” (from the “Dragon Ball Z” universe), “Scott Body Shop” and “Tree Hill Ravens” (from CW’s “One Tree Hill”) and “Nostromo” (a ship from the movie “���������”). While the owner of JKMG, Kenneth Talbert, has for “Hillman College” and “Nostromo”, it may be difficult to justify some of his other registrations.

First-to-use trademark rights in the USA

Similar to Canada, under established , trademark rights vest in the first person to use the mark in commerce, or for the purposes of distinguishing their goods and/or services. While JKMG has been using the mark for hoodies, t-shirts and other apparel, NBC’s use has been for its TV show and related campaigns. NBC’s application for registration was also under Class 41 for Entertainment.

What’s next?

NBC’s goodwill and reputation in the mark is undeniable. While the show went off-air in , it continues to be massively popular with extended episodes being released to date. “Dunder Mifflin,” registered or not, leads most of us to automatically think of the popular sitcom. Talbert is in his rights and the strength of his case, but it would be interesting to see the court’s stance in this ongoing lawsuit.

The post “Identity theft is not a joke, Jim!” – Trademark battle over “Dunder Mifflin” appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

Streaming giant Pandora has been hit with . In early February 2022, Pandora was sued in a series of lawsuits from the estates of comedians such as Robin Williams, George Carlin, Bill Engvall, and Ron White for publicly broadcasting, reproducing and distributing their copyright protected content without obtaining licenses.

Initial lawsuits

Pandora was named in a series of copyright infringement suits in early February this year that were later combined into one action before the United States District Court in the Central District of California.

The plaintiffs contended that comedy works are subject to the same copyright rules as musical works. This means that, like musical works, comedy works are also subject to two separate copyrights: one in its recording and one in the underlying literary work. While musical works are licensed as two separate rights accordingly, comedy works are only licensed as recordings without the underlying literary license. The plaintiffs contend that this constitutes copyright infringement.

According to Pandora’s own reports, in January 2022, Bill Engvall, George Carlin, and Ron White garnered 227,000,  81,000, and 233,000  monthly listeners, respectively. The total valuation for damages in the suit exceeds $70 million.

The tussle between comedians and streaming services is not new. Following pressure from artists for appropriate licensing and royalties for the underlying literary content, Spotify recently chose to belonging to multiple comedians that are represented by literary works rights agencies, such as John Mulaney, Kevin Hart, Jim Gaffigan, Larry the Cable Guy, and Jeff Dunham.

However, Pandora’s case is distinguished by its alleged admissions of copyright infringement in to the United States Security and Exchange Commission (SEC) from 2011 to 2017. The plaintiffs claim that Pandora admitted that it does not have the necessary public performance licenses for their comedy recordings and may face copyright infringement actions from rights-owners. Following the filing of the lawsuits, Pandora has also removed the comedians’ content before issuing its response. 

Pandora’s response

Pandora filed a counterclaim accusing Word Collections, the comedians’ performing rights collection agency, of anti-competitive practices. Pandora claims, as it did in its SEC filings, that its licensing of only the sound recording, without obtaining the underlying rights, conforms with “industry-wide custom and practise” and Word Collection is attempting to illegally monopolise its content in contravention of the .

Industry-Wide Custom and Practice?

While Pandora’s claim of its actions being in line with industry-wide custom and practice may not be unfounded, this is a valid defence in a copyright infringement action.

Pandora also claims that the system of licensing rights separate from the different right owners for musical compositions is inconvenient, “”, and should not be adapted to cover comedy recordings. Pandora argues that unlike musical works, comedy is written and performed by the same artist and therefore does not need separate protection.

This argument, however, may not have sufficient merit since a) various musicians write and perform their own music; and b) the licensing process simply being complicated is no excuse to forego it.

What’s next?

There has been increasing backlash against Pandora, among other streaming services like Spotify, outside of Court. Another prominent comedian, Lewis Black, issued a public statement asking Pandora to remove his works from its platform. Black said that while he does not need the money or exposure that Pandora claims to offer, it is time for comedians to be recognized and compensated for their writing in addition to performance.

Many expect the suit against Pandora to illuminate the stance of the law going forward. If the comedians succeed, it would open a floodgate of actions against streaming services for appropriate licensing of comedic works.

The post No laughing matter – Lawsuits for protection of copyright in Stand-up Comedy appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On May 31, 2022, the Federal Court of Canada in favour of the plaintiffs, Janssen and Actelion Pharmaceuticals ("Janssen”) in their action against Sandoz. The Court held that Janssen’s combination therapy patent is valid. is often used to treat ailments and medical conditions where treatment through single-agent therapy has proven to be challenging.

Background

The present case concerns the validity of claims 21 to 31 of Janssen’s Canadian combination therapy patent for treatment of diseases involving , including pulmonary arterial hypertension (PAH). The patent seeks to treat the ailments through a combination of Macitentan (sold under the brand name Opsumit) and phosphodiesterase type-5 inhibitor (PDE5-1).

Sandoz sought permission from Health Canada to market generic medicine containing 10mg of Macitentan as the active pharmaceutical ingredient (API) for use alone, or in combination with PDE5-Is. Janssen filed an action before the Federal Court claiming that Sandoz’s generic medicine will infringe upon claims 21 to 31 of the plaintiffs’ patent.

Defences

Sandoz conceded that its proposed medicine does infringe the alleged claims, but defended against Janssen’s claims by raising four different grounds of invalidity. However, the Court rejected Sandoz’s arguments that the combination therapy invention was obvious, lacked a sound prediction of utility, and that the patent was overbroad, and the specifications were insufficient.

1. Obviousness

The Court in held that whether an invention is “obvious” depends on if the skilled person (without any inventiveness), in view of the state of the art and the common general knowledge on the date of publication, would have directly or without difficulty come to the same conclusion as the patent. Plainly, the test can be understood as:

1. Identify the person of skill in the art (“POSITA”), and their common general knowledge;
2. Identify the inventive concept;
3. Identify the difference between the inventive concept and the “state of the art”; and
4. Determine if the difference is obvious or if it requires inventiveness.

The Federal Court followed the test down to the T and held that the available evidence and prior art do not indicate that the POSITA would have considered the combination of Macitentan with PDE5-I to show effectiveness in treatment of ailments involving vasoconstriction, where monotherapies have failed.

Since Sandoz raised the defence of invalidity, Sandoz had the onus to establish obviousness, which it was unable to do.

2. Utility

The requirements to establish a sound prediction of utility were set out in the case of as:

1. A factual basis for prediction;
2. An articulable and sound line of reasoning; and
3. Proper disclosure.

The Court, having considered the POSITA’s common general knowledge and the test results provided in the patent, concluded that the plaintiffs met the requirements of sound prediction of utility.

3. Overbreadth

Here, Sandoz recycled its argument of utility in claiming that the patent does not disclose a sound line of reasoning and claims overtly broad protections. However, the Court relied on its own analysis under Utility and concluded that a sound line of reasoning is present, thereby invalidating the overbreadth argument.

4. Sufficiency

A patent specification is required to provide sufficient disclosures to enable the POSITA to use the invention. Sandoz claimed that the specification of the patent does not enable the POSITA to put the invention to use. The Court reasoned that Sandoz’s “sufficiency” argument contradicted its “obviousness argument.” Further, Sandoz failed to explain the lacunae in the specification that needed filling for the disclosure to be sufficient.

The Judgment

Unable to find merit in Sandoz’s arguments, the Court declared that Sandoz would infringe the asserted claims if granted permission to market its generic medicine in Canada. As of July 20, 2022 Sandoz has filed an against Federal Court’s judgment.  

The post Federal Court rules in favour of Janssen for its combination therapy patent appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On June 8, 2022, Apple took a hit to its trademark portfolio when it lost another trademark battle with Swatch, the famous Swiss watchmaker, before the General Court of the European Union. Through its , the General Court upheld lower court decisions revoking Apple’s rights in its THINK DIFFERENT trademarks.

Apple v Swatch 3.0?

This case is not the first time Apple has lost in court to Swatch. In 2016, Swatch Apple’s trademark application for the mark “iWatch” before the UK Intellectual Property Office, forcing Apple to call its smartwatch “”

Then in 2021,  a UK High Court permitted Swatch to seek trademark protection for Steve Job’s famous phrase “One More Thing.” The Court did not find evidence of in Swatch’s application, though it noted that Swatch had filed it only to Apple.

Now, Apple has lost its third, or rather trademark battle against Swatch.

Background

In 2016-2017, Apple and Swatch, regarding their “Think Different” and “Tick Different” marks. In 2016, Swatch filed three applications before the European Union Intellectual Property Office (EUIPO) seeking revocation of Apple’s “Think Different” marks on grounds of . Then in 2017, Apple sued Swatch for trademark infringement against its mark “Tick Different”, an action it lost in 2019 before the Federal Administrative Court in Switzerland. Apple claimed that the mark was deceptively similar to its “Think Different” marks. But the court found that the marks were more dissimilar in the eyes of the average consumer.

Now, the proceedings emanating from Swatch’s revocation petitions have finally come to a head. In , the Cancellation Division of the EUIPO revoked Apple’s rights in its “Think Different” marks, a decision that was upheld by the Board of Appeal in November 2020. On the General Court of the European Union dismissed Apple’s applications for review of the Fourth Board of Appeal’s decision.

The Turning Point

The crux of the issue came down to evidence. Swatch filed the petitions on October 14, 2016, so Apple was required to present evidence showing “genuine use” of the mark in the immediately preceding five years. of a mark can only be found when it has been used to distinguish the goods to identify their origin.

In Apple’s case, the mark “Think Different” was used extensively till 2002, when its use mostly faded with the launch of the MacBook. The court noted that the mark does not appear prominently on Apple’s products nor does it draw consumer attention. The court also stated that “Think Different” had not been used to satisfy the essential function of a mark; in essence, to identify the origin of the goods.

Apple was required to submit evidence corroborating its use in the five years immediately preceding Swatch’s applications. The court noted, however, that Apple’s evidence either does not show genuine use or falls of the five years.

What’s next?

The decision effectively makes the mark “Think Different” fall in the public domain and is closely preceded by chatter about Apple’s unethical trademark practices. While this battle between the companies seems to have ended, it will be interesting to see if they will oppose each other again.

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