Androu Waheeb is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Gone are the days when businesses were valued by their ability to market tangible goods. and reported that intangible assets (IP and data) are crucial to wealth creation and represent the “world’s most valuable business and national security assets.” In 2019, they accounted for 91% of the S&P500’s value. Canada has struggled to meaningfully partake in this intangible economy.

Canada’s patent portfolio is incommensurate with its enviable workforce and publicly funded research. Domestically, Canadian patent filings decreased by 3% annually and 7% in the last ten years. Non-resident filings swelled by 1% and 4%, respectively. In 2019, Canadians contributed 12% of the patents filed in Canada, whereas Americans accounted for half. Contrarily, reports that Americans owned 60% of patents filed in the USA.

Internationally, Canadian patent filings decreased after 2012, stagnated after 2014, and are geographically clustered. In 2018, 2/3 of Canadian international applications were filed in the USA – a meagre 2% of applications filed there.

Canada’s struggle to protect ideas has dire economic consequences. As Canada’s IP footprint diminishes, Canadian corporate operations face increasingly onerous restrictions, with portfolios too anemic to leverage. Consequentially, our GDP per capita has declined by 3% since 2010 and job quality by 15% since the 1980s. New jobs generate 2/3 of the income they did in the 1980s.

and blamed this on deficiencies in IP awareness, access, resources, expertise, capacity, laws, and funding. Neither report performed competent modelling or statistical analysis, which led to inadequate recommendations. To implement those recommendations, Canada developed the ; Ontario established the and .

Meanwhile, Peter Nicholson of the blamed Canada’s inability to foster and retain innovative corporations. The technology sector, a driver for innovation, contributes only 5% of the . Conversely, the 75 technology corporations in the constitute 1/3 of the index. Without innovative corporations to develop IP, Canada will never amass the portfolio it deserves. Public funds and talent earmarked for innovation will benefit other economies to the detriment of our own, cementing Canada as an innovation farm for hire.

Innovation emigrates from Canada because of what calls its “buy versus make” economic structure which results in passive posturing and ambivalence about market dominance in Canadian C-suites. Canada’s refusal to acclimate to new global economic realities disincentivizes local innovation independently of the patent system, and the “trend of investment in innovation is not encouraging.”

Canadian innovations’ short-lived victories exemplify this. and revolutionized telecommunications, yet their failure to continue innovating led to their demise. Canada’s abandonment of the shuttered .

Canada must foster a fertile corporate environment and broad innovation incentive structures to fend off the pending economic degradation. All policy instruments must be recruited, including taxation, trade, and regulation. Unfortunately, the current strategy of developing IP awareness, access, resources, and law alone will not suffice.

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Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.

The intellectual property rights victory in Canada for the footwear company Crocs is a timely reminder to keep fleece clogs in mind for your winter wardrobe. Famous for its easily-recognizable design of breathable and water-friendly clogs, Crocs was founded in 2002 in the US by . Though it started out as comfortable boat shoes, Crocs now boasts . Crocs are popular in part because they walk the fine line between functionality and fashion. The clogs appeal to both the practical public with their comfortability, as well as those who see them as a fashion statement, including celebrities. With Crocs’ level of global popularity, knock-offs are inevitable.

The Battle Over Fleeced Clogs

As early as 2006, Crocs has been in numerous intellectual property battles against companies Crocs claims are selling knock-offs. While most of Crocs’ lawsuits are in the US, the battles have also crossed the border into Canada, such as Crocs’ October 21, 2022 victory in . Crocs Canada is a licensed distributor of the US company, and Double Diamond Distribution Ltd is a direct competitor for clog-style footwear operating under Dawgs and Canada Dawgs.

Released on October 21, 2022, this case decision concerned the validity of the industrial design rights for Crocs’ MAMMOTH line of fleece clogs (“939 Design”). rights protect the visual features of an article, including its design, shape, pattern or ornament, or any combination of these features. Crocs targeted the Fleece Dawgs footwear, claiming that they were unlawful imitations of the 939 Design. One of the issues the judge examined in this case was whether the design of Fleece Dawgs footwear differed substantially from the 939 Design under .�� Notably, the judge recognized the of the fleece clogs design that Crocs developed and commented that there was nothing like it previously in the market, which entitled the design to a broad scope of protection under industrial design rights. In finding that there was an , the judge determined that the two designs in question were not substantially different in their key features. The features mentioned included the overall shape, the fold over the fleece collar, the decorative discs, and the inner lining of the fleece clogs. In addition to a declaration that Dawgs has infringed the 939 Design, the judge also awarded Crocs around $700,000 from Dawgs’ profits and pre-judgment interest.

A Look at Crocs’ Other Battles

Beyond the industrial design victory in Canada, Crocs has other wins in its long battle to protect its intellectual property rights from copycats. ��The US Patent and Trademark Office’s Patent and Trial and Appeal Board, after three rejections, held that the Class Crocs clog design patent was in 2019. In a mass intellectual property protection effort, Crocs in 2021 for trademark infringements. Among these lawsuits was one against a wholesaler for . Crocs has since settled claims with Walmart and a few other companies. Crocs against Daiso this past June 2022, a Japanese dollar store in California, for selling lined casual clogs that are virtually identical to Crocs’ clogs for $3 to $3.50. In its claim, Crocs argued that the design infringement has led Daiso to enjoy gains and profits in misleading consumers. As Crocs continues cracking down on copycats, ��the accumulation of legal victories like ��Crocs v Dawgs will strengthen the company’s argument for ownership over its registered designs, patents, and trademarks.

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Meena Alnajar is an IPilogue Senior Editor, an IP Innovation Clinic Senior Fellow, and a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D'Agostino's IP Intensive Program.

This term, I had the amazing opportunity to work at AstraZeneca Canada through Osgoode’s Intellectual Property Law and Technology Intensive Program placement. I worked within the legal team, under the supervision of Denise Lacombe, Head of Legal and collaborated with Lynne Sweeney, Legal Counsel and Cristina Aguirre, Privacy Officer as well. I know the skills and support I gained will be everlasting in my legal career.

As we slowly returned to in-person work at the company, I had the opportunity to attend some incredible in-person events. The largest event was the All-Employee Event held at the Mississauga Convention Centre. The event started with the CEO’s opening address reflecting on AstraZeneca’s growth over the last few years. AstraZeneca has expanding clinical trial and research teams which is a hopeful development for research in rare diseases. I was seated with a digital marketing employee, employees in the clinical research and development team, and an employee in the respiratory team. We discussed how we can continue to strengthen our teamwork skills and how everyone’s projects were going. I appreciated the company’s efforts to encourage employees to acknowledge not only the strengths, but areas for growth.

The legal team at AstraZeneca is highly adaptable, working with Denise and AstraZeneca’s different teams, I observed her skillfully respond to urgent issues and achieve compromise amongst team members. Some work highlights for me personally were: drafting a procurement contract, investigating the Patented Medicines Prices Review Board (“PMPRB”) Draft Guidelines, and drafting a response to an Access to Information request.

AstraZeneca is a global company, some contracts can require engaging in services in other countries. The contract must be adjusted to meet a jurisdiction’s requirements through a side letter. I worked with Lynne to draft a side letter and she taught me the necessary terms and considerations to comply with Canadian laws, in particular taxation law, privacy requirements in consultation with the Privacy Officer, Cristina, and currency. Drafting this letter helped me practice and execute my contract drafting skills which is essential in corporate law.

It is a tumultuous time for patented medicine pricing in Canada. On October 6, 2022, the PMPRB released Draft Guidelines and is open to consultation until December 5, 2022. PMPRB’s proposed changes have been the subject of judicial proceedings. The new Guidelines could affect how improvement medicines are priced and change the ‘excessive price’ definition. I researched the case law to find areas that may be concerning for the industry and suggested how AstraZeneca could approach the consultation. I remain intrigued to see how the Guidelines, set for implementation in January 2024, may be changed upon receiving consultations.��

As someone with an avid interest in IP, I wanted to be involved in patent-related work. AstraZeneca focuses on clinical research but also marketing and sales of its IP. An ongoing challenge in the pharmaceutical industry is a patented product’s loss of exclusivity. Once the patent expires, the product’s position in the marketplace is compromised as generics can enter without risking infringement litigation. I was fortunate to sit in and learn about creative ways the marketing team was proposing to continue to compete in the market after losing exclusivity.

I also drafted an Access to Information request response letter. An anonymous requester sought information about a contract AstraZeneca recently entered. To balance Canada’s principles regarding freedom of information and the right to maintain confidential business information, a company can respond to the relevant Access to Information office within the government with proposed redactions to the information requested before releasing it to the requesting party. While people have a right to information, companies also have the right to protect confidential, commercially sensitive information that would compromise its competitive position or reveal its business practices. I exercised analytical and legal research skills to support the proposed redactions grounded in the statute, Access to Information Act, and competition law principles. This exercise prepared me for requests that all lawyers typically receive and must respond to for their client.

This placement at AstraZeneca was an invaluable experience as to an in-house counsel’s work experience and a global company’s operations. My insights were encouraged and developed through Denise’s guidance, Cristina’s privacy expertise, and Lynne’s feedback sessions. I contributed towards projects that will help launch lifesaving medicines. Learning about the breadth of stakeholders involved in pharmaceutical development was an unforgettable experience that has deepened my appreciation for this innovative industry. I am grateful to Professor Pina D’Agostino, Ashley Moniz, Denise Lacombe, Lynne Sweeney, and Cristina Aguirre for fostering this opportunity.

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Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

Recently, a controversial trade deal between India and the United Kingdom (UK) was leaked. ��The leaked portion pertains to the trade of intellectual property between the two countries.

UK-India Free Trade Agreement

In , India and the UK began negotiating a free trade agreement (FTA), aiming to double bilateral trade to $100 billion by 2030 via reduction or elimination of import-export tariffs between the two countries. Despite several setbacks, including but not limited to the high turnover of UK Prime Ministers, the deal seems to still be in the works.

The impugned IP portion of the proposal outlines demands by the UK to harmonize India’s patent and drug regulatory laws with those of the UK. These demands are what is mandated by ��international trade rules.. seem to be aimed at tightening regulations on producing, supplying, and exporting generic medications from India. Article E.10 of the IP chapter of the leaked proposal effectively prohibits pre-grant oppositions. This means that India would not be able to stop challenges to weak or invalid patents until after the granting of the patent. Article J.11 gives power to Customs officials to block generic drugs from leaving India for developing countries if a pharmaceutical corporation was to claim that their patent infringement by India-made generic drugs. Lastly, both Articles J.5 and J.7 seek to modify how courts adjudicate IP disputes, which are likely to “.”

Implications of a Reduction in Generic Drugs

Due to these proposed modifications, many are concerned about the global supply of generic medicines because India is a dominating force for generic drug manufacturing. A decrease in the supply of generic medicines could have devastating impacts on global health, especially countries where medicine has historically been less accessible due to high costs — generic drugs are than their brand-name counterparts, while having . In fact, many studies suggest that brand name medications are not superior to generic medications. ��With these potential impacts being so devastating, the medical humanitarian organization Doctors Without Borders/ Médecins Sans Frontières both the UK and India to remove these provisions from their FTA.

At the time of writing this article, FTA negotiations continue. Hopefully, criticism of these provisions will lead to their modification or, if still found to be more harmful than helpful, their removal.

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Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

Controversy and uncertainty in the field of patent eligibility have resulted in decade-long fights over what can be patented and what cannot be, especially regarding diagnostic tests. There is currently a congressional push to let drug companies patent diagnostic tests in the United States. This push comes from Senator Thom Tills. On August 2, 2022, Senator Tills introduced Bill , titled the Patent Eligibility Restoration Act of 2022, which, in part, aims to change currently existing US federal patent law regarding patent eligibility for different classes of inventions. ��

History of Patenting Diagnostic Methods

The bill was largely motivated by several Supreme Court rulings over the past decade, which have created exceptions to patent eligibility in biotechnology and pharmaceuticals. Traditionally, an inventor can gain patent protection for their invention if it is novel, non-obvious, and has utility. However, in 2012, the court in ruled that diagnostic tests that reflect naturally occurring biological phenomena cannot be patented because one cannot have a monopoly on a relationship based on natural principles. This ruling was then reaffirmed later in . This exception in the eligibility of diagnostic tests led to widespread confusion regarding patent eligibility. In particular, the chief judge of the US’s top patent court, Kimberly A. Moore, saying that Federal Circuit judges are now unsure of how to apply the patent eligibility provision. Additionally, these exceptions have led to patents being rejected in the United States but approved in other jurisdictions with similar patent laws, such as Europe, thus discouraging biotech companies from investing in diagnostic methods. In response, Bill S.4734 is being presented to address this confusion and increase innovation in the United States via more specific patent eligibility standards that are likely to expand the ability to patent modified genes and pharmaceutical processes, including diagnostic methods.

The Debate over S. 4734

This proposed bill has drawn much debate. On the one hand, , such as the American Civil Liberties Union, have expressed concern that this bill will allow pharmaceutical companies to take advantage of this expanded patent eligibility by creating monopolies over essential diagnostic methods resulting in decreased access to these methods and overall harm to the health of Americans. However, , such as the Council of Innovation Promotion, argue that the bill will increase investment into diagnostic research, which decreased significantly after the Mayo decision. These groups point to the pharmaceutical industry’s response to COVID-19, arguing that patents were the basis for creating the vaccines.

If the bill can clarify patent eligibility in the US, it may be worth pursuing further. However, I also question the idea that patent eligibility is the driving force behind biotech innovation.�� The Invention-Induced Theory, argued by proponents for S.4734, posits that patents are an incentive for inventors and that absent patents, there will be no inventions. However, this theory fails to account for inventions induced by the market, scientific curiosity, accident, or ego. Additionally, have shown that patents are not a significant driver of most innovations. Thus, there may be a better way to both reward biotech companies for their creation of diagnostic methods and prevent harmful monopolies over essential lifesaving inventions.

Regardless of which side of this debate you fall on, it is still being determined if S. 4734 will be further explored. When this bill was introduced in August 2022, the Tillis planned to hold hearings focused on this legislation if the Republicans took the senate in the November midterm elections. However, with the , the future of this matter remains uncertain.

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Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

According to a published in UNSW Law Journal, feminized names are less likely to be granted a patent in Australia. The study investigated female patenting rates in Australia over a period of 15 years. Although similar studies ��have been conducted in Europe and the United States, such a study had not been done in Australia. However, recent advances in computing technology and open data polices allowed the study to be done. Furthermore, studies performed by the US Patent and Trademarks Office typically analyzed patents from a majority of US residents. However, this Australian study better reflects worldwide applications because most Australian patent applications are from international inventors who have filed patents in several jurisdictions.

In order to investigate gender bias, analyzed 309,544 patent applications from 2001-2015 and then categorized approximately one million inventor names based on whether they sounded female or male. The study revealed that male sounding names were much more likely to have their patents granted. Additionally, having an number of male sounding names listed on the team inventors correlated with an increased likelihood of having the patent granted. Patent applications with an increased number of female-sounding names listed on the team of inventors did not significantly correlate with a change in success of patents granted.

The study postulated as to why this gender bias may exist. Researchers considered that women were working in technical fields that typically have a lower patent success rate, such as life sciences. Their investigation found that a majority (greater than 60%) of female inventors were working in life sciences. In particular, women were concentrated in four technical fields: chemistry, biotechnology, pharmaceuticals and medical technology. However, once the data was statistically controlled to account for the effect of the patents being in a less patentable field, it was determined that inventors with male-sounding names were still more successful in obtaining patents than those with female sounding names.

This study demonstrated that despite the advances women have made in obtaining positions and credit in STEM fields, there is still a gender bias against women in obtaining patents. have hypothesized that a major reason for this disparity lies with the patent examiners and that they are biased against women, and thus suggest that the patent prosecution process should name-blind applications to hide the gender identity of the inventors. ��However, some feminist legal scholars believe that the reasons for this disparity go deeper. argue that certain intellectual property agreements, such as TRIPS, exclude domains of female inventorship by focusing on “mechanical, technical, and industrial aspects” of “products and processes.” Other scholars that female patentees have less funds, stamina and mentoring to deal with objections from the patent office, which may result in abandonment of a patent application and thus less accepted applications overall.

Several studies and real life experiences attest to the fact that the gender bias still exists in academia and life science disciplines. Overall, ��gender bias observed in the patent landscape appears to be at least partially a downstream effect of the institutional bias in STEM.

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Michelle Mao is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Moderna and Pfizer battle’s over the inventive process of their respective mRNA COVID-19 vaccines revisit the negative associations of profit, monopolies, and optics in patent litigation. On August 26, 2022, Moderna released a that they will pursue a patent infringement lawsuit against Pfizer/BioNTech for their use of Moderna’s registered mRNA patents in creating the Pfizer COVID-19 mRNA vaccine. Moderna claimed that they had registered foundational mRNA patents between 2010 and 2016. , however, is that while Moderna is pursuing an infringement claim, they clarified that they will not prevent future sale of Pfizer vaccines, will not seek damages from sales of Pfizer’s vaccines in certain circumstances, will not seek a cut of Pfizer’s sales from the US government or from the 92 low and middle-income countries that had trouble accessing COVID-19 vaccines. While the specific remedy sought by Moderna is not defined in the press statement, Moderna wants a chunk of Pfizer’s profits, such as through .��

The strategic choice of Moderna’s press statement to detail remedies they will not pursue without revealing the precise ��remedies they will pursue has led critics to call Moderna out for using “optics” and the quasi-sacrosanctity of intellectual property to further profits and strengthen their position in the mRNA pharmaceutical business. The balance that patent law seeks to achieve is well known, with , of the United States Constitution defining the purpose "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Moderna sought to protect themselves from the feeling of “unfairness” that arises when another appropriates your labour (in this case, Moderna’s labour of researching mRNA-based vaccines). Appealing to deeply engrained values of ownership, investment of resources and labour, and protecting themselves against misappropriation of their invested resources Moderna can protect its brand image while seeking billions of dollars from Pfizer in royalties or other types of remedies by, for example, appealing to deeply engrained values of ownership, investment of resrources and labour, and protecting themselves against misappropriation of their invested resources.��

The values at issue in this lawsuit speak to the current flaws of patent laws around the world, and the lawsuit’s impacts will be especially prominent as it relates to the COVID-19 vaccine that has saved almost in just one year. Currently, the Moderna versus Pfizer patent litigation is only being restricted to high-income countries solely on Moderna’s not to seek money from sales in low-income countries. However, reliance on this promise may be flimsy as Moderna has already its promise to not enforce patents through litigation during the pandemic to enforcement in high-income countries (as seen now). This exposes some concerns about our patent laws. For example, this lawsuit may have a chilling effect on future mRNA vaccine development. Another concern is how low- and middle-income countries (LMICs) may suffer from future patent lawsuits where promises not to seek sales from LMICs are not made and in the context of . Balancing the need to encourage rapid responses to global emergencies that require new technologies and access to these technologies all while discouraging monopolies will need to be scrutinized as we head out of the COVID-19 pandemic.��

So what solutions are available to prevent slowdowns in innovation and concerns for access in LMICs? What solution could be to make amendments to a country’s patent act, such as Canada’s which included such amendments. However, the impacts to the patentee could be significant, especially in terms of profits in a national or global emergency. While the amended Patent Act ensures payment of remuneration which the Commissioner of Patents deems adequate in of the Patent Act, this provision may not be feasible in countries with weaker economic power. A statutory defense to patent enforcement could be another solution, as seen in the American approach in This section allows patent “infringement” if the manufacturers are manufacturing goods for the use of the government in difficult times. Interestingly, we are already seeing this defense being used by Moderna themselves claims made against them. While these are two approaches available, the countries implementing these adjustments to patent protections are high-income countries with economic power to guarantee patentees are adequately recompensated, leaving the issue for LMIC concerns unaddressed. Additionally, these solutions also may not adequately address the chilling effect on innovation as the statutory defense is limited and the consequences of patent litigation are expensive.

Currently, no court decisions have been rendered regarding Moderna’s patent infringement claim against Pfizer. However, given the novelty and scale of the COVID-19 pandemic, there is no doubt that whatever decision is made, it will become a new precedent for future patent infringement claims of this scale.

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Nancy Chen is an IPilogue Writer and a second-year JD/MBA Candidate at the University of Toronto.

In 2020, COVID-19’s emergence prompted scientists across the world to race against time to develop a vaccine, with the pharmaceutical giants Moderna, Pfizer and BioNTech (“Pfizer/BioNTech”) leading the way. Two years later, as the world adapts to the new normal and vaccine supply is no longer a preeminent issue, against Pfizer/BioNTech for unlawfully infringing upon Moderna’s patented mRNA technology in the making of their COVID vaccine. The was filed on August 26, 2022 in the United States District Court for the District of Massachusetts as well as the Regional Court of Düsseldorf in Germany.

Moderna’s position

According to before the District of Massachusetts, Moderna was founded in 2010 “on the promise of developing mRNA technology to create a new generation of transformative medicines.” The company has since been singularly focused on developing all aspects of mRNA medicine, cumulating in the process.

because of their extensive experience researching mRNA technology and using their patented mRNA platform, they were “uniquely positioned” to respond to the COVID-19 pandemic. As a result, Moderna’s mRNA vaccine, Spikevax, successfully reached clinical trials within just two months after the publication of the genetic sequence of the virus. Other were predicting that vaccine development could take years.

Infringement Allegation

In a , Moderna stated that they believed Pfizer/BioNTech unlawfully copied two key features of Moderna’s patented technologies in the development of their mRNA vaccine, Comirnaty. Specifically, Comirnaty contains the exact same chemical modification as Spikevax and it was developed using Moderna’s patented approach “to encode for the full-length spike protein in a lipid nanoparticle formulation for a coronavirus.”

Moderna also that Pfizer/BioNTech did not have the same level of experience as Moderna in developing mRNA vaccines, and despite testing four different vaccine candidates that did not use Moderna’s patented technology, they ultimately knowingly copied Moderna’s platform.

Pfizer/BioNTech addressed the allegations in a , stating that these lawsuits were unexpected given that Comirnaty was based on BioNTech’s own proprietary mRNA technology. They intended to “vigorously defend against all allegations of patent infringement.”

In recognition of the need for ensuring vaccine access, that it will not seek to remove Comirnaty from the market or prevent future sales of this vaccine. The company will also not seek compensatory damages from sales occurring before March 8, 2022, the date the company considers to be the end of the pandemic. Sales to the U.S. government or to a list of 92 low and middle-income countries in the Gavi COVAX Advance Market Commitment will also be excluded from damages.

It is, however, seeking monetary of up to three times the amount of compensatory damages found in relation to all other instances of infringement including reasonable royalties and/or lost profits, together with interest, costs, expenses, disbursements.

Looking forward

Patent lawsuits typically take years to resolve and this particular action is further complicated by . Pfizer/BioNTech has a solid defense by arguing reasonable reliance on Moderna’s to not enforce patents while the pandemic continues. Although Moderna perhaps made this promise in the hopes of an end date to the pandemic, this date will likely be contested given the ongoing nature of COVID-19.

The outcome of this legal dispute will have implications for the future uses of mRNA technology, which boasts the potential for future vaccines against a myriad of diseases such as influenza and HIV. If Moderna succeeds, there may be a chilling effect in biotech development which may be detrimental in the event of another pandemic. It would be interesting to see how courts construe public promises and their validity against patent rights, or if broken promises may affect a company’s goodwill in the eyes of the public.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

Is technology’s rapid rise really a great equalizer for improving social welfare globally?��

Professor Ruth L. Okediji is the Jeremiah Smith Jr. Professor of Law at Harvard Law School, where she teaches contracts, international IP, patents, copyright, and courses on Biblical Law. She is also the Co-Director of Harvard University’s Berkman Klein Center for Internet & Society. Her research and scholarship focus on examining innovation policy, the digital economy, and global knowledge governance. On September 29th, students and staff at Osgoode Hall Law School were honoured to welcome Professor Okediji in person at Osgoode, where she delivered a lecture on ‘’.��

The paradox is outlined as followed: while the existence of intellectual property (IP) protection is often justified by its contributions to improving human welfare (such as incentivizing innovators to create public goods), the benefits of technological improvements protected by these same systems are, in reality, not, experienced equally. . ��Legal regimes, including the IP system, often work to facilitate and increase global inequality by accruing wealth for their holders in the global north. However, this system often decreases the value of labour and unilaterally defines protectable subject matter based on imperialist norms.

In the tech sector, “skill-biased” advancements increasingly reduce opportunities for low-skilled workers, while elevating the productivity and earnings of high-skilled workers. Increasing prices of technology have only served to further disparities in access and skill development. The evolution of artificial intelligence (AI) systems, along with the effects of the recent pandemic, have also played significant roles in displacing human labourers. In terms of overall welfare, IP injustice is almost exclusively felt from the bottom-up.

In her lecture, Professor Okediji briefly charted the history of technological imperialism, and highlighted the structural, demographic, geographic, and cultural inequalities that arise from the modern IP regime. IP protection may no longer be said to primarily generate rewards and incentives for creativity and innovation. Instead, the structure of the modern IP system lends itself to be used as a vehicle to accumulate wealth and investment for the already affluent. Individuals and companies commonly ��engage in the strategic purchasing of critical blocking patent portfolios. For example, the rise of patent trolls, who litigate cheaply-bought patents, use the IP system as a legal weapon. Moreover, damage demands in litigation cases involving IP are rising. In 2021, for patent infringement relating to chip-making technology – one of the highest ever patent damage awards in the US. As modern IP regimes continue to tend towards serving purely economic interests, one cannot help but concede to the significant role that the modern IP system plays in perpetuating economic inequality.��

The global IP system is also ill-suited for the needs of developing economies. Not only is it inherently embedded in colonial traditions, even modern agreements such as TRIPS that seek to tie IP protection with trade policy effectively coerce developing nations into accepting stronger IP standards that are ill-suited to their needs. . Formal IP protection requirements such as standards of fixation, originality/novelty, individual ownership, or limited terms of protection, are all deeply rooted in Western ideals and norms, and often preclude valuable conceptions of innovation and creativity from Black and Indigenous populations in particular.��

Emerging scholarship increasingly demonstrates how inequality is embedded in the very foundations of IP law. In considering proposals for doctrinal reform in order to address these inequalities, Professor Okediji emphasizes the need to thoroughly explore related institutional and technological trade-offs, and advocates for radical transformation. Exceptions to international IP standards, enforcing mandatory licensing provisions, or speaking about “access” as the primary measure of equality may no longer be enough. Instead, we should focus on engendering educational reform in law schools, boosting literacy, improving the quality of education in marginalized communities, or developing and ameliorating community healthcare systems. Just as the problem is deep-rooted, the solution must be as well.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Sonos achieved a major milestone in their Canadian patent battle against Google, which follows several rulings in favour of Sonos in their corresponding US litigation (previously published in the IPilogue ).

In an infringement action against Google LLC (“Google”) dated August 15, 2022, Justice Zinn of the Federal Court of Canada in favour of the defendants, Sonos, Inc. (“Sonos”). This case concerns the infringement of Claim 7 of Canadian Patent No. (“150 Patent”) relating to Google’s method and apparatus for adaptive echo and noise control. Sonos counterclaimed, alleging that Claim 7 of the 150 Patent is invalid for obviousness and lack of invention.

The Court held:

1. Sonos does not directly infringe Claim 7 of the 150 Patent;
2. Sonos does not indirectly infringe Claim 7 of the 150 Patent by inducing users to infringe; and
3. Claim 7 of the 150 Patent is valid.

This decision follows the of Sonos’ motion for summary judgment in March 2021, where Sonos alleged that Google made factual admissions in a corresponding US proceeding related to the infringement of US Patent No. , for which the 150 Patent claims priority. Justice Southcott of the Federal Court of Canada rejected Sonos’ arguments that Google’s voluntary dismissal in the US action represented an admission of non-infringement or eliminated any genuine issue for trial.

BACKGROUND

Claim 7 of the 150 Patent, owned by Google, details a method and device for echo and noise control in a device that adaptively determines an order of noise suppression and echo cancellation based on noise in the input signal. This patent allows for voice assistants in smart speakers, such as Amazon Alexa and Google Assistant, to change how much background noise is filtered out (i.e., noise suppression) when addressing a user’s commands, also referred to as “echos” (i.e., echo cancellation). Google claimed that five of Sonos’ products (collectively, “Sonos Devices”), all of which are compatible with Amazon Alexa and Google Assistant, infringed Claim 7 of the 150 Patent.

CLAIM CONSTRUCTION

In constructing Claim 7, Google and Sonos’ experts disagreed on whether echo cancellation is a subset of noise suppression or whether these terms are mutually exclusive. Google submitted that “noise”, as confined to the asserted claim, was to be interpreted generally to include all background sound and user commands. In contrast, Sonos interpreted “noise” more narrowly to include only background sound, not user commands. Justice Zinn sided with Sonos to interpret noise in the narrow sense, thus concluding that echo cancellation and noise suppression are mutually exclusive processes.

INFRINGEMENT

Direct Infringement: Justice Zinn succinctly shut down Google’s claim that the Sonos devices directly infringe the 150 Patent. Out of the box, the Sonos devices are simply speakers and do not have voice assistants set up and configured. The essential elements of Claim 7, echo cancellation or noise suppression, require user activation of the compatible voice assistants. Thus, the court held that Sonos does not directly infringe Claim 7 of the 150 Patent.

Indirect Infringement: The Court focussed on considering whether Sonos indirectly infringed Claim 7 of the 150 Patent by inducing their users to enable Amazon Alexa or Google Assistant. ��Justice Zinn sided with Sonos in finding that their technologies are not configured to adaptively adjust these elements based on input noise as described in Claim 7 of the 150 Patent. Instead, these processes are user controlled or done in a pre-determined manner. Consequently, the court held that Sonos did not indirectly infringe Claim 7 of the 150 Patent.

INVALIDITY

Justice Zinn used the approach outlined in Apotex Inc v Sanofi-Synthelabo Canada Inc, to assess the obviousness of the patent. Google and Sonos generally agreed on the person skilled in the art, common general knowledge, and the inventive concept of the claim. Sonos relied heavily on US Patent No. ("871 Patent”) as prior art to assert that it would have been obvious for a skilled person to make the claimed invention in the 150 Patent. The Court rejected this argument, accepting Google’s submission that the skilled person would not easily come up with the 871 Patent and, therefore, the 150 Patent is not invalid for obviousness.

NEXT STEPS

Google has yet to appeal this decision. A few days prior to the decision, Google announced against Sonos regarding voice control technologies.

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