ventureLAB is led by CEO Jeremy Laurin, a seasoned entrepreneur who has taken up the mantle to help others also succeed with their new ventures. Helping him in this task is a group of very talented and amazing individuals who take customer service to a new level. Further to the regular staff at ventureLAB, the organization also leverages experts in the industry, called "Executives In Residence" (EIRs), who provide expertise and connections in diverse fields for the benefit of the entrepreneurs.

Building Relationships With Clients

My role at ventureLAB was to assist clients with their legal questions, in particular those dealing with their IP issues. The close proximity to clients was my primary motivation for seeking this particular internship during the application process. When working in a large law firm, there are often few opportunities afforded to summer and articling students to develop client interaction skills. ventureLAB provided a great experience that allowed me to enhance my understanding of intellectual property law and to strengthen personal relationships with the clients of the organization. Almost every day of the internship provided some way to interact with a client: whether that meant answering a quick question via email or engaging in more involved discussions about an invention or venture.

My supervisor at ventureLAB was Paul Rivett, an experienced entrepreneur and manager in the industry, who is usually the first point of contact for clients who register with ventureLAB’s business advisory program. Paul told me on my first day that I would essentially be managing my own clients - exactly the type of experience I wanted from the IP Intensive. During my internship, many clients were referred to me by the ventureLAB staff and other experts that work with ventureLAB. I was also proactive in seeking out my own clients by visiting the various workshops and sessions that ventureLAB conducted. Some clients had prior experience with IP, while many did not. However, it was great to see that even those individuals who did not have much previous exposure to IP were very eager to learn more about the topic.

I also participated in the pro-bono Legal Information Clinic every month conducted by Jason Sacha, an IP Intensive alumnus. Each day consisted of 1-hour individual sessions with clients, primarily focusing on IP and business law questions. While each of those days tested personal endurance, they were an extremely rewarding experience.

Organizing an IP Conference

Paul also asked me if I was interested in organizing an IP conference to educate the ventureLAB clients and other interested parties about intellectual property, which I thought was an invaluable opportunity. While I concentrated on selecting the topics, inviting guest speakers, and preparing my presentation, Brigitte Sharpe and Mercedeh Andalibi played an invaluable role in organizing many of the other aspects of the event. We were also very fortunate to have Bhupinder Randhawa from Bereskin & Parr, Eugene Gierczak and Meg Spevak from Miller Thomson, and our very own Michelle Li from IP Osgoode participate as co-presenters at this event.

Although I have spoken to large audiences before, it has never been on the substantive topic of IP law. As such, the conference was a unique experience for me. I knew the audience would be comprised of individuals with varying degrees of understanding about the topic, so I had to ensure that the coverage was both broad enough to be understood generally and narrow enough in the areas that were most important to the attendees. Of course, one of the biggest challenges in doing a legal related presentation is to keep it interesting; while lawyers and law students find legal topics fascinating, not everyone is likely to share the same sentiment. Based on the feedback we received after the presentation, I knew that we had succeeded in ensuring that the event was both fun and informative.

Final Thoughts

Once again, I cannot say enough about how useful this experience has been for my career development. I already feel significantly more comfortable in dealing with clients on a personal basis. For anyone who wishes to build upon their client management skills, I would highly recommend that you consider the IP Intensive program and as your placement.

Pasan Hapuarachchi is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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Especially in high tech industries, it is possible to observe awards of damages that seem disproportionate to the infringement that occurred. A team of engineers at work on a problem may find many solutions to it. Is it reasonable to expect them to scour the patent registry to ensure every solution that is implemented does not fall within a claim in some obscure patent? With so many patents with so many broad claims on the register, a solution that a team independently arrived at may randomly overlap such a claim. The scenario is like buying a lottery ticket where patents are the winning numbers. If one buys enough tickets, the winning (or rather losing) number will likely come up. Chances are less for high quality inventions that represent a real advance in the art and that may be difficult to duplicate accidentally, but may be greater for lower quality patents that represent more modest advances or variants.

The way United States courts calculate damages in this situation is instructive. In and subsequent cases, the court adopted a “but-for” test where the damages are the profits the patentee would have made “but for” the infringement, having due regard to acceptable non-infringing alternatives (NIAs). In essence, the court calculates what the patentee would have lost if the infringer had not infringed, but instead had used a NIA. So in our example, had the engineers unwittingly stumbled on a patented technology by independent research where NIAs were also available, they would be liable only for the incremental damages the patentee suffered had the defendant used an NIA instead of the patented invention.

Recently in Canada, this approach was summarily rejected by the Federal Court in . The court acknowledged the US NIA principle, but held that in Canada NIAs were irrelevant in calculating damages. One merit of this approach is to remove the incentive a potential infringer may have to infringe on purpose, knowing that his damages liability from lost profits will be limited to the incremental lost profits.  What some might think would be a flagrant abuse of the patent system is thus prevented.

Both the US and Canadian approaches have their merits. Can they be reconciled while maintaining their respective advantages? One way, inspired by such cases as , is to have regard to the intention of the infringer. While Qualcomm had infringed, the court’s finding that the infringement was not wilful significantly reduced the amount of damages awarded. The divergent US and Canadian approaches on NIAs may therefore be reconciled by making the infringer’s intention a threshold test in calculating damages: if infringement is innocent, NIAs may be considered as a more accurate assessment of damages; if wilful, they should not be considered. Deterrence is a legitimate aim of compensation schemes, and deterring wilful wrongdoers more than innocent ones seems logically justifiable.

One concern with this approach is that an infringer’s intention may actually serve to change the method of calculating damages. But, from an economic viewpoint, any assessment of the actual damages suffered by a patentee must inherently consider the availability of NIAs. From this perspective, the unavailability of an “NIA defence” may simply be considered as a punitive measure that is awarded to deter abuse of the patent system, instead of a different method of calculating damages.

Even though punitive damages have rarely been awarded in patent infringement cases in Canada, in the Federal Court of Appeal affirmed their availability, while noting that not every deliberate infringement case necessitates punitive damages. In cases where the court feels that the high standard of bad conduct required to award punitive damages is not present, it may still achieve a similar punitive effect by being “less generous” with the NIA deductions, as was done with the deductions in the US copyright case involving deliberate infringement. In such cases, upon wilful infringement, the strength of the NIA deductions may be lowered, even if the defence may still be technically available.

The interesting question remains: may this result be achieved judicially or is legislative action first required?

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

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