Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.

, Xiaorong You, a former employee of the Coca-Cola Company and Eastman Chemical Company was sentenced to 14 years in prison and made to pay a $200,000 fine for a scheme to steal trade secrets, engaging in economic espionage and committing fraud. Matthew G. Olsen emphasized that the sentence not only reflects the gravity of the offence but also a“commitment to protect [the] nation’s security by investigating and prosecuting those who steal US companies’ intellectual property.”

Between 2012 to 2018, You worked as the Principal Engineer for Global Research at Coca-Cola in Atlanta and the packaging application development manager at Eastman Chemical Company in Kingsport, Tennessee, which granted her explicit access to valuable trade secrets related to the “formulations for bisphenol-A-free (BPA-free) coatings for the inside of beverage cans.” Several other chemical and coating companies also owned the trade secret and its development cost nearly $120 million.

You the trade secrets to set up a new BPA-free coating company in China with Weihai Jinhong Group, her Chinese corporate partner, where both parties received millions in grants from the Chinese government to support the new business. In addition to the grant money, You also received the “”, a Chinese government program aimed at attracting scientists and engineers abroad. At , You’s application for the program revealed her intentions to not only benefit her corporate partner, but also the governments of China.

, BPA is still used in the linings of the company’s beverage cans, as well as other packaging, to preserve the quality and taste of the drink. The company further maintains that for potential health risks resulting from BPA in the company’s products is based on “sound science” as there is a clear scientific consensus that the miniscule amounts of BPA in beverage cans poses no risk to the public. Nonetheless, the company has publicly stated that it is undergoing research for BPA-free alternatives in preparation to protect its consumers’ and .

Economic espionage has profoundly affected the US economy. In fact, the estimates that trade secret theft costs the US economy at least $180 billion annually. Despite �䲹�Բ��岹’s sizeable economic difference from the US, the maintains that its advanced and competitive economy and close economic partnership with the US makes Canada a continuing target of hostile foreign state activities. Moreover, according to the , CSIS observed an increase in the scale and scope of espionage and foreign interference threats. Often, such threats become exponentially more complex and pressing in light of , as it can be difficult to establish the nexus between an accused and a foreign government. In addition, foreign states can target members of vulnerable groups, posing a risk not only to the Canadian economy but also the overall safety of Canadians.

Both Canada and the US must continue to diligently investigate and identify the threats of espionage targeting innovation and intellectual property in its various sectors. Moreover, Canada should continue to work with and refer to its domestic and international partners to determine reasonable punishments for similar criminal acts threatening valuable IP in the country.

The post Former Cola-Cola Employee Sentenced to 14 Years in Prison for Trade Secret Theft appeared first on IPOsgoode.

Emily Chow is an��IPilogue��Writer and a 2L JD Candidate at Osgoode Hall Law School.��

To read part 1 of this article, click .

In September 2020, against former UBC employee and Open Education Librarian Ian Linkletter for tweeting�� links to Proctorio's Help Centre YouTube videos for instructors and taking a screenshot of the website. In its lawsuit, Proctorio sought a declaration that Linkletter infringed its copyright, circumvented technological protection measures, and breached confidence. The company was also granted an interim injunction preventing Linkletter from sharing further links and videos from their websites.

Linkletter defended his actions, admitting to the tweets but denied copyright infringement or breached confidence. In his defence, he also identified the Proctorio lawsuit as part of a growing trend of "SLAPP" litigation — Strategic Lawsuits against Public Participation — intended to deter and ultimately silence outspoken critics and inhibit participation in public affairs.

On March 11, 2022, the decision was released, written by Justice Milman of the BC Supreme Court. The issues at stake were whether the action should be dismissed under s. 4 of the BC and if the injunction should remain in its present form.

Breach of Confidence

Section 4 of the PPPA states that the applicant may apply for a dismissal order on the basis that the proceeding arises from an expression made by the applicant, and that the expression relates to a matter of public interest. The leading case for interpreting this section is , where the first branch of the test requires an applicant to demonstrate on a balance of probabilities that the action arises from one's expression that "relates to a matter of public interest" (Pointes at para 23). If successful, the action must be dismissed unless the other party can demonstrate that (1) there are grounds to believe that the action has substantial merit; (2) the applicant has no valid defence; and (3) the harm suffered as a result of the expression is serious enough to outweigh the public interest protecting the expression.

Proctorio did not dispute the fact that the ongoing debate of the impact of its software was of public interest; rather, it focused on Linkletter's supposed malicious intent and sharing of confidential links. Milman J. was not persuaded on this point, stating that "[Linkletter] was using the content of the videos in an effort to illustrate his point about the harm that Proctorio's software was capable of causing to some students" (para 50).

Milman J. then proceeded to discuss the merits of Proctorio's case against Linkletter, assessing whether the tweets constituted a breach of confidence. On the one hand, he found that Proctorio's choice to host the help videos on a website such as YouTube over other secured options weakened the case that the information Linkletter tweeted out was confidential. However, he also considered that the unlisted videos were accessed through Proctorio's Help Centre, which Linkletter entered through the instructor sign-in portal and was thus subject to Proctorio's Terms of Service that restricts sharing. Milman J. found that Proctorio met its burden under s. 4(2)(a) of the PPPA to show there were grounds to believe that its claim for breach of confidence has substantial merit and that there are no valid defences to it (para 83).

Copyright Infringement and Fair Dealing

Proctorio, as a copyright owner under , argued that hyperlinking to the unlisted videos constituted an infringement of their copyright. Milman J. agreed, noting that the links were only accessible via the Help Centre for users logged in as accredited instructors or administrators. With regards to the tweeted screenshot, Linkletter successfully argued that the image was not "a substantial part" of the copyrighted work in which the Copyright Act's s. 3 protects.

Lastly, Milman J. discussed Linkletter's defence on the basis of fair dealing (s. 29 of the Copyright Act) and non-commercial user generated content (s. 29.21). Whether or not a dealing is "fair" depends on the purpose, character, and amount of the dealing, as well as possible alternatives, the nature of the work, and the effect of the dealing.

Milman J. accepted that Linkletter's real purpose in copying the links to his Twitter feed was to demonstrate his point about the harm he believed Proctorio's software was causing students, arising out of a genuine sense of public duty rather than malice (para 107). However, he was unable to conclude that it was necessary for Linkletter to share all the videos he did in order to make his point. He also found that Proctorio had a legitimate interest in keeping the instructional materials private only to instructors and administrators. In sharing the links, Milman J. found that Linkletter created a risk that Proctorio's product would be rendered less effective for its intended purpose (because students would be able to anticipate how instructors configured Proctorio's invigilation settings) and that its proprietary information would be made more readily available to competitors (para 112). These risks were found to be unlikely to materialize and mainly speculative.

The Status of the Injunction

Milman J. found that the injunction granted to Proctorio was granted in overly broad terms, and the injunction ought to have been framed more narrowly so that it prohibited "no more than the conduct [Milman J.] found to be properly actionable, namely, Mr. Linkletter's public sharing of materials posted on the Help Centre and Academy webpages, and encouraging others to do so" (para 145).

Conclusion

In summary, success for each party was divided. As of April 13, 2022, Although the resolution is still unclear, it is certain that this case — — has about the ethics of AI-powered invigilation methods worldwide.

Further Reading

Linkletter's defence and GoFundMe (donations closed):

The New 91��ɫer's deep-dive on online test-monitoring:

The Coronavirus pandemic and surge in demand for exam proctoring:

The post Proctorio v Linkletter - Part 2 appeared first on IPOsgoode.

Photo by Kaitlyn Baker ()

Emily Chow is an��IPilogue��Writer and a 1L JD Candidate at Osgoode Hall Law School.��

With the emergence of the pandemic, schools across the globe had to rapidly shift to new testing mechanisms in line with stay-at-home lockdown orders. Remote invigilation and AI software seemed like the tools to support instructors and prevent cheating on exams that were suddenly shifted online. However, the rise of companies like were coupled with criticisms of fully-AI invigilation systems: and , , and and algorithms quickly came to the forefront. Various penned open letters and petitions hoping to curtail the use of invasive remote proctoring software that tracks eye movements, facial expressions, spatial information, and more. Part 1 of this article series will discuss the background information pertaining to , including how the lawsuit began.

On June 25, 2020 on the University of British Columbia (“UBC”) reddit forum, instead spiraled into a confrontation with the CEO of Proctorio, Mike Olsen. Under the username artfulhacker, Olsen responded to the criticisms of Proctorio by While the responses to Olsen are intact, Olsen’s reddit account has since been deleted, along with all his inflammatory comments.

. At the time, he was employed by UBC as a Learning Technology Specialist and Open Education Librarian. He had already been looking into Proctorio’s services when the incident occurred. He called Olsen out on Twitter and Reddit, . These were taken from Proctorio’s help website for instructors.

In September 2020, Proctorio for eight tweets of links to the unlisted videos and for posting a screenshot of the help website. Aligned with Linkletter’s belief in free speech and privacy concerns in the public interest, his entire defence can be found here.

Part 2 will look at the actual decision by Milman J. from March 25, 2022 and examine the comments on free speech and fair dealing for the purpose of criticism.

The post Proctorio v Linkletter: Exam Invigilation or Invasive Surveillance? - Part 1 appeared first on IPOsgoode.

Photo by minxlj ()

Jasmine Yu is an IPilogue Writer and a 1L JD Candidate at the University of Toronto Faculty of Law.

All that glitters is not gold, but trade secrets in the sparkling world of luxury jewellery might just be worth the gold and diamonds they sell. On February 28, French luxury jeweller Cartier its competitor, Tiffany & Co. (“Tiffany”), for stealing trade secrets related to its from a former Cartier employee, Megan Marino.

Cartier’s Claims

Tiffany’s high jewelry unit was in the midst of a restructuring following several resignations. Cartier claims that their competitor’s management used “quick money and title advancement” to lure Marino away in December 2021. Further, Cartier also asserts that immediately upon hiring her, Tiffany’s President for the Americas met with Marino for the express purpose of obtaining information about Cartier. This act disregarded Marino’s confidentiality and non-solicitation contractual obligations to Cartier.

Marino, ��a named co-defendant, started working at Cartier in August 2013, and most recently served as Assistant Manager for Merchandising, Jewelry. Cartier claims that upon her hiring at Tiffany in December 2021, Marino forwarded files containing “sensitive and valuable information” related to Cartier’s high jewelry business to her personal email. These files could purportedly “allow a sophisticated competitor to replicate key strategies” and to “reverse engineer how Cartier allocates, merchandises, and prices its High Jewelry stock.” Cartier claims that this was a breach of her employment agreement, as she was to return “any and all documents” containing “Confidential Information and Trade Secrets” that she obtained in connection with her employment.

The Lawsuit

In the wake of Cartier’s repeated written notices, Tiffany fired Marino for “failing to disclose her misconduct” in February 2022. The corporation did not take any action against upper-level management, who, according to Cartier, “repeatedly and knowingly solicited and received trade secrets” from Marino and tacitly approved of Marino’s breaches of her legal obligations to Cartier.

As Tiffany continues its use of Cartier’s confidential information, such as through using such information in its internal business presentations, Cartier brings this suit. Cartier is seeking injunctive relief and damages for Tiffany’s “deliberate scheming to misappropriate and convert Cartier’s highly confidential business information to unfairly compete with Cartier.”

The Trade Secret Claim

To succeed in its trade secret claim, Cartier will need to :

• The information is in fact, secret — that it is not generally known or readily ascertainable to competitors, and confers to Cartier a competitive advantage,
• Cartier has undertaken reasonable efforts to maintain its secrecy, and
• Tiffany & Co “misappropriated” the information

Cartier gains a strong position in this case from the evidence of emails and text messages between Tiffany’s management and Marino, as well as their outreach to current Cartier employees for information. Nevertheless, Tiffany may have some strong arguments as well. For instance, to the third requirement, Tiffany may argue that Cartier did not make reasonable efforts to maintain its secrecy. What is “reasonable” is typically a cost-benefit analysis. Marino, a lower-level employee who was not directly involved in Cartier High Jewelry, could access allegedly valuable, sensitive, and restricted information.

If they acquired the trade secret by improper means or a breach of confidence, Tiffany can be considered to have committed “misappropriation”. Tiffany may be in an even stronger position if they can establish that they somehow obtained the trade secrets lawfully — through means such as independent discovery or reverse engineering.

We should look forward to seeing the Court’s take on what constitutes “reasonable efforts” to maintain the secrecy of electronic documents in the age of Zoom.

The post Shhh… Tiffany knows your (trade) secrets! appeared first on IPOsgoode.

Photo by: (Unsplash)

Junghi��Woo is an��IPilogue��Writer and a 3L��JD��Candidate at��Osgoode��Hall Law School

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We’ve come a long way from the days of legally for their driver’s licenses to store in the provincial facial recognition data bank. Facial recognition technology, despite various controversies, has continued its presence in society. Its biggest client? Law enforcement.

Despite facial recognition technology’s , , and multiple class-action lawsuits in Britain and Australia, the U.S. start-up Clearview AI raised , showing that it is here to stay. Facial recognition technology is only going to get more precise- but at what cost?

How does it work?

While Facial Recognition may have various uses, the is that the software first accesses an internet database of photos and videos, then uses biometrics and algorithms to identify the same people in other photos and videos. Namely, law enforcement can use it to “identify” faces in surveillance software.

Privacy Concerns- Did I consent to this?

Most likely not. ��For example, Clearview AI collected billions of images from people on the internet without any clarification as to whether this was done lawfully or not. This led to �䲹�Բ��岹’s investigation on the RCMP’s use of Clearview AI, which resulted in the company halting its services in Canada. Four Privacy Commissioners have stated that Clearview AI has violated privacy laws in its methods of collecting data and using personal information for Clearview AI and was the privacy authorities’ recommendations. You are probably thinking back to all those Snapchats of your face, your selfie uploads, and your phone’s facial recognition unlock setting. I am too.

Biases in Facial Recognition Technology

Technology can’t be perfect. One of the main issues to consider is whom technology sets out to serve . Studies have demonstrated The found the algorithm’s performance was at its worst when encountering individuals with darker skin tones

Where does this become a serious problem? Ultimately, law enforcement claims to use this technology to “identify criminals”. What happens when law enforcement relies on this technology, despite its proven inaccuracies, when encountering members of racialized groups? Facial recognition technology is more likely to inaccurately match people’s faces if they were of a certain race. A is the NYPD’s use of facial recognition technology during the Black Lives Matter protests earlier this year.

Robert Julian-Borchak Williams from Michigan was the first person to be wrongfully convicted . Police, relying on surveillance video footage of a shoplifter, handcuffed Mr. Williams on his front lawn in front of his whole family. Mr. Williams was then driven to a detention center, got his mugshot, fingerprints, and DNA taken, and was held overnight, then interrogated the next day. All because of a faulty system that could not differentiate between two Black men.

Trade Secrets Implications

Taking this a step further, we look to another concern with facial recognition technology: the . In the U.S., forensic algorithm vendors (including those who sell facial recognition technology) have relied on to protect their intellectual property, hence, withholding relevant evidence at trial. To properly challenge the reliability of this technology, it is essential to understand how it works. Therefore, relying on intellectual property protections to prevent this does not achieve the true purpose of trade secret law – to incentivize businesses to

What does the Future Hold?

Governments in both the U.S. and Canada have started to realize the risks of using facial recognition technology and consider whether they are truly outweighed by its supposed “benefits”. Representative Mark Takano from California has recently introduced the Justice in Forensic Algorithms Act of 2021, which includes a prohibition on the use of trade secret privileges to withhold relevant evidence in criminal cases.

One may ask, what is facial recognition technology truly useful for? Are any of its uses significant enough to outweigh the serious dangers it poses? Without proper transparency, we cannot assure reliability. If essential information is only in the hands of vendors and law enforcement, what type of harmful power dynamic could this create in society?

The post Recognizing What’s Going On Beyond Your Face appeared first on IPOsgoode.

Tiffany Wang is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.

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In 2008, three former Motorola Solutions employees, Communications Corporation Limited (“Hytera Corp.”). The three engineers, upon leaving Motorola Solutions, shared digital mobile radio .

In February 2020, a jury in the demanded that Hytera Corp. pay more than . The Chicago federal jury’s includes $345.8 million in compensatory damages and $418.8 million in punitive damages.

The case started on its exposed trade secrets in creating Hytera’s DMR products. Hytera Corp. assembled a .

Not only did Motorola Solutions allege that Hytera violated U.S. copyright laws by copying their source code, it also complained that Hytera . Hytera .

Motorola Solutions chairman and CEO Greg Brown expressed that Hytera .

Discovery from a prior court filing revealed similarities between Motorola Solutions’ and Hytera’s products. Hytera’s source code “”. The source codes were similar to the extent that identical appeared in both.

This case represents a significant infringement of innovation and technology. Profiting from a ��market competitor’s innovations via trade secrets and source code theft misappropriates the intellectual creation and property of other firms’ investments. The significant cost awards signal the courts’ commitment to protecting the value of intellectual property and ensuring that does not lessen the integrity of intellectual creation.

The post Den of Thieves appeared first on IPOsgoode.

Shannon Flynn is a Guest Writer and the Managing Editor of Rehack Magazine.

You may subscribe to the idea that after you craft something, creatively or professionally, it is automatically yours by right. That is not always the case; at the heart of legal ownership is intellectual property rights. IP is thrown around a lot in business, especially as it relates to software development and creative projects. But how do IP rights apply to software? In this article, I will explore what software engineers and developers need to know to protect their work in both the U.S. and Canada.

Deconstructing Intellectual Property Rights

Intellectual property rights can be broken down into four different types. Copyright protection covers many creative works, including computer programs, databases, technical drawings, and mobile applications. Developers should also consider acquiring software patents and trade secrets. Trademarks may also apply to protect the company’s names, symbols, and brand assets.

Ultimately, intellectual property rights refer to an intangible form of ownership over a creation or finished product (in this case, a software application). Patents, copyrights, trade secrets, and trademarks each offer a specific kind of protection for software.

Software Patents

In the United States, patents offer creators exclusive monopoly to manage an invention. Patent holders are free to produce, use and sell the item as they see fit. The trade-off is that they must describe their product in full detail to the U.S. Patent Office, which publishes this information publicly.

Unfortunately, “there is no legal or conclusive definition for a software patent.” This is because does not allow for the patenting of abstract ideas.

However, software patents can be obtained for systems, methods, algorithms, techniques, display presentations, UI features, and similar mechanics. They must be presented as new ideas with practical use and they must be “non-obvious.”

Copyright Protection

Copyright is probably the most important intellectual property protection for software.

Copyright protection complements patent protection. While patents protect the inner workings of a software application, as well as novel ideas and concepts, copyright protection extends to the manifestation of those ideas. It for literary, artistic, dramatic, or musical works. In other words, it covers the source code, creative elements, and UI and visual elements.

For example, consider if someone creates an application that allows users to rent out items they own to members of their local community. The underlying code and deployment of that application are protected under copyright law, along with the unique UI elements, visuals, and content. However, the idea itself, a rental app, can be copied by others without repercussions, so long as they do not use the same source code and content.

Trade Secrets

A trade secret refers to any medium discovered and maintained by the original owner that remains private and usually provides a competitive advantage. It can include but is not limited to formulas, recipes, patterns, devices, compounds, tools, processes, and mechanisms. There is no federal trade secrets law or statute in Canada. Instead, Canadian trade secret laws are or civil law.

There is no time limit on trade secrets, as they can be kept private forever. The only exception is if another party discovers them on their own, which is possible. Because they are hidden, trade secrets may only be stolen as opposed to being infringed upon.

Cybersecurity events pose a major risk as trade secrets may be stolen or required as collateral by the attackers. Not protecting trade secrets and intellectual property when working with other parties can have serious consequences, like the case with Aerojet Rocketdyne Holdings Inc. and its efense.

With software, trade secrets are kind of tricky. They might include proprietary code and the inner workings or ideas behind it. But if those ideas can be gleaned through reverse engineering, or someone independently discovers them, there is no legal redress.

Trademarks

Trademarks are designed to related to a business or venture. They are “concerned with a company’s need to identify its goods or services among its customers and potential customers.”

Trademarks protect a company’s name, domain, images, and product design elements. They must be registered to activate the legal protections. Some popular trademarks include Nike’s iconic check, Coca-Cola’s logo, and Disney’s Mickey ears.

In the software world, Microsoft’s Windows logo is an excellent example.

Open Source and IP

In the software development world, things can get confusing because of a few different practices. For example, open-source software and agreements can be difficult to navigate. Many open-source projects on depositories, , allow a community of creators to participate.

“When you tap into GitHub [...], you’re free to access any of the files hosted on the platform, and you can even use the content as you wish. You can download the code and use the resulting software, study it to better your own projects, or build upon and improve it to make the existing project better.”

However, releasing an open-source project does not necessarily forfeit intellectual property rights. There are different licenses to choose from, and the permissions granted to umbrella users must be followed closely. They must abide by licensing rules, or they .

Author versus Owner

When it comes to software, the author of various elements like code or visuals isn’t necessarily the legal owner entitled to intellectual property rights. This is a particular concern for employer-employee relationships, where developers work at a large company with dozens or even hundreds of others.

Unless it is otherwise stated, the employer owns what is . Even independent contractors must abide by a legally-binding contract unless they’ve negotiated rights ownership.

Section 13(1) of the "author of a work” is the first owner of the “copyright therein.” In addition, Section 13(3) of the Act stipulates that any works created under a "contract of service" by employees are owned by the employer.

Protecting Your Work

The best way to protect your work, secure intellectual property rights, and lockdown trade secrets, where applicable, is to make sure you understand these concepts and how they apply to your project. If you’re working on a software application by yourself or with a small team, it will be your responsibility to protect your content and systems.

If you’re working for an employer, they likely already have protections in place, and you need to understand where you fit in. For instance, you probably do not own the rights to the content or code you are creating.

The post Intellectual Property of Software: Laws and Protections for Developers appeared first on IPOsgoode.

Ryan Erdman is an��IPilogue��Writer and a 2L JD Candidate at Osgoode Hall Law School.��

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At the onset of the COVID-19 pandemic, the lack of any existing treatment to mitigate the impacts of the novel virus was perceived as an alarming reality. What became clear was that any hope of an effective and timely solution relied on immediate and considerable investment in biomedical research and innovation. The common narrative at the time was that an effective vaccine likely would not be safely distributed for years. Before COVID-19, the fastest vaccine development, targeting mumps in 1967, took 4 years. Fast-forward to just over a year since the beginning of the pandemic, vaccines manufactured by multiple companies have been authorized globally and numerous other candidates are in late stages of clinical trials.

While the race to produce an effective vaccine was won by those who rushed to the market in record time, the most significant implications of this innovation will almost certainly transcend the current pandemic. Two of the most widely distributed vaccines thus far were produced by Moderna and Pfizer-BioNtech. Moderna and Pfizer successfully implemented mRNA technology into a widespread therapeutic vaccine. Having completed the fastest successful vaccine trial in history, the two companies led the efforts to obtain the ever authorization for an mRNA-based vaccine.

The traditional approach to vaccine technology, implemented by Oxford in collaboration with AstraZeneca, relies on an adenovirus vector. Essentially, the individual receives a harmless modified version of a chimpanzee virus containing the genes for the SARS-CoV-2 spike protein. play a critical role in the way the virus is able to penetrate host cells and initiate infection. Mimicking this process, the vaccine prompts the body to create an immune response, preparing the body to face the actual virus. In contrast, the vaccines produced by Moderna and Pfizer-BioNTech work by delivering messenger ribonucleic acid (“mRNA”), the genetic substance responsible for communicating protein-making instructions within a cell, into the body and instruct the body cells to produce the coronavirus spike protein. The body’s immune system would then respond to the protein and learn to attack the virus if it ever came in contact with it

While the pandemic may appear to be a catalyst for this innovation, the groundwork has been in place for years. mRNA technology was actually adapted from decades of previous research into the topic in order to address SARS-CoV-2. Attributed to work done by researchers Katalin Kariko and Drew Weissman at the University of Pennsylvania, their well-documented over several decades culminated in the discovery effective insertion of synthetic mRNA into human cells without being attacked by an immune response. Moderna utilized this mRNA technology to their vaccine candidate just 48 hours after researchers in China revealed the virus’ genetic sequence.

The pandemic was significant not only for discovery, but for establishing the efficacy of the technology. Establishing the efficacy of mRNA-based vaccines opens the floodgates for significant investments in the field. Excitement about mRNA technology has led to of dollars being poured into the sector to produce mRNA-based medicines targeting diseases that are difficult to treat. The pandemic and vaccine rollout also served to help build the by establishing a vast regulatory and manufacturing network for the brand-new technology in under a year. Moderna is to have indicated it has “over����issued or allowed U.S. and foreign patents protecting mRNA-based technology, with over 600 worldwide pending patent applications.” This is tied to an mRNA product pipeline including 26 drug candidates targeting infectious, rare, autoimmune, and cardiovascular diseases. Similarly, two other leading pharmaceutical companies, BioNTech and Curevac, who have an mRNA-based vaccine candidate in with Bayer, also have significant numbers of related to mRNA therapeutics. mRNA technology is believed to be versatile enough to potentially “on-demand proteins associated with specific tumors to teach the body to fight off advanced cancers”, or even missing proteins in cystic fibrosis patients.

The innovation surrounding this technology is intimately tied to their intellectual property rights. Looking more closely at COVID-19 vaccines, have shown the incredibly complex matrix of patents, licenses, sub-licenses, and agreements between various entities in the research and production stages. Part of the reason companies such as Moderna and BioNTech are emerging as major players in the market for mRNA-based medicines is due to their ownership of and strategic partnerships with other pharmaceutical companies. For example, SEC filings a series of sublicenses for mRNA-based technology patents coming from the University of Pennsylvania to Moderna and BioNTech. What is yet to be seen is how intellectual property rights, namely patents and trade secrets, will impact the long-term prospects of mRNA technology. Certainly, the intricacies of research and development in this area could lead to novel and complex IP issues. As waivers of IP rights associated with COVID-19 therapeutics have become a prominent topic over the past year, it is hard to speculate about the future of IP in pandemic-related technologies. The IP landscape surrounding mRNA technology has only begun to unfold.

The post Setting the Stage for IP Developments in mRNA Technology appeared first on IPOsgoode.

Junghi��Woo is an��IPilogue��Writer and a 3L��JD��Candidate at��Osgoode��Hall Law School.��

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While not very prominent in Canada, the international auto racing sport Formula 1 (“F1”) is currently worth over . Despite its enormous market value, F1 is self-regulated by the��International Automobile��Federation (the “FIA”). Aside from the drivers, the cars themselves are quite fascinating; every team spends to secure the best engineers and staff and the highest quality materials and parts to create the fastest cars that score the most points. These points then that is awarded to the teams.

There is a major question of the intellectual property rights in each car. Normally, patent law would regulate the structure and engineering of the cars. However, due to the self-regulated, rapid-paced nature of F1, teams primarily use trade secrets to protect the internal design of their cars. Lengthy patent registration processes simply cannot keep up with annual F1 seasons.

Racing Point: Questioning the Sufficiency of Current Intellectual Property Rights Protection

During the 2020 season, controversy surrounded one F1 team, Racing Point, that put forward a car model that was . The cars were so similar that the FIA declared a breach of the rules, issuing Racing Point . This penalty occurred against the backdrop of a that affected Racing Point’s use of Mercedes brake duct designs which .

As per the F1 rulebook, the teams must design car parts categorized as “” for themselves, rather than buy them from another team or company. Brake ducts were not on this list in 2019 when Mercedes supplied Racing Point with designs which Racing Point used to create their front brake ducts. In 2020, the FIA categorized brake ducts as listed parts. The problem was that Racing Point used Mercedes’ design for rear brake ducts in 2020, rather than implementing them in their 2019 car when FIA still permitted them to do so. Since the rear brake ducts are now categorized as “Listed Parts” , Racing Point violated the rules by using the Mercedes-Benz design.

At the outset, the monetary fine may seem to sufficiently penalize Racing Point. However, the potential points it “stole” through this violation can be worth much more than a simple fine, considering the prize money and publicity these points bring every year. For example, in 2020, Mercedes earned . This excludes the millions of dollars teams would attract from investors and sponsors for the next season based on their previous season’s ranking. Ultimately, despite the immense value of intellectual property rights in F1, there appears to be insufficient protection to deter teams from infringing them.

FIA’s True Priorities?

Trade secrets can be effective in certain circumstances, but they afford less protection than patents because they cannot be enforced if leaked. Given the comparative unenforceability, should patent law be updated to cater to such industries? The commercialization of F1 exemplifies the enormous amount of money at risk, and the Racing Point incident shows the financial risks created by the lack of intellectual property protection for each car.��

However, the flexibility of FIA rules may not be accidental; the market is driven by its entertainment value, through live streams, YouTube, and recently Netflix. Strict patent rules would essentially allow a team to which could potentially eliminate competition between the teams, resulting in a “boring” season. In fact, the FIA ruled that patented car technology is illegal to use in F1 to

FIA’s priorities appear to differ from those of the law. One may even question, for practical purposes, whether the focus should even be on the law. Patent law incentivizes innovators by protecting their creations, and upon a patent’s expiry, the designs of these inventions fall under the public domain to encourage further innovation. However, outside F1, does society truly benefit from receiving patentable knowledge of racecar technology? Would the disclosure of racecar designs encourage innovation and thus justify granting patent protection?

Overall, this relaxation on patent law can be said to contribute to F1’s volatile nature. Truthfully, this same volatility keeps me watching F1 to this day.

The post Formula 1 – Living in a Patent-Free World appeared first on IPOsgoode.

Many aspects of your business involve intellectual property. Your idea, your invention, your products, your brand, your business methods are all key assets for your new business venture. Yet many start-ups don’t consider how to protect it or understand how to leverage its value for financing or growth.

IP is something that every start-up needs to consider as it develops its business strategy.

That’s why you need to understand the basics of intellectual property; including figuring out what IP you have, how you can leverage it and protect it.

IP can be complex, particularly if you need to formally protect it and develop an IP strategy; you will need to seek out expert advice and be aware of the potential costs.

Understand the basics of intellectual property

1. Take the time to understand the basics, and what the����are. They include:

• Patents, which protect inventions;
• Trademarks, which protect your brand;
• Industrial Design registrations, which protect your product’s unique appearance;
• Copyright, which protect original and creative works; and,
• Trade secrets, which protect your valuable business information, including methods, techniques and processes.

2. Learn how to identify and assess your intellectual property and what you need to protect.

Use this handy����to do an inventory of your intellectual property, and start formulating a plan.

3. Take a look around in the marketplace and at your competitors’ IP.

It is important to know what IP already exists and what competitors have, so that you can better focus your own efforts, targeting gaps in the marketplace and/or avoiding infringing on your competitors’ IP.

Leverage your IP to raise funds or add value

1. Learn how to leverage your intangible assets.

Your IP is a valuable business asset, and needs to be treated as such. Figure out what it is worth and how to generate more value from it.

2. Proper valuation of your IP is crucial to attract financing or venture capital.

It can also add value to your business through licensing and commercialization.

3. Protecting your IP, either through formal or informal means.

It will protect your business against competitors’ unauthorized use of your product/invention/brand/design/unique business methods.

4. Become known in the marketplace and expand to other markets.

It protects your investments as you grow. For example, it is essential to protect your IP in other countries where you plan on doing business��BEFORE��you enter these markets.

Develop an IP Strategy

As you develop your business plan, include an��.
It is basically a plan for how you will develop, grow, leverage and monetize your IP assets.

Follow��; or use this handy��, developed by CIPO and the BDC.

Get expert help and understand the costs

• There are professionals and many resources available to help you determine what IP you have, whether it should be protected and how, and what costs it entails.

• ��such as Patent and Trademark agents and IP lawyers can provide you with strategic advice and assist in filing IP applications.

• Registering a trademark can be relatively straightforward, depending on the range of products and the markets you are entering. Most trademark registries, including Canada, don’t require applicants to be represented by a trademark lawyer. That being said, there are considerations, including similarity with existing trademarks, which class of goods and services your trademark will cover, and so on.

• For patents, it is generally recommended to hire an IP professional, such as a��. They provide you with knowledgeable advice on the best course of action to protect your invention, and have the expertise to draft and file your application, which generally requires specialized knowledge in patent law. Not all inventions are patentable, so it is important to assess this with the help of a professional, so that you can consider other strategies such as confidentiality agreements.

• Valuable business information such as trade secrets, need to be protected through non-disclosure and confidentiality agreements.

• There are various estimates of costs, depending on the complexity of your IP portfolio. There is an����on the costs of filing a patent in Canada and the US.

Written by Johanne Belisle, Former CEO of the Canadian Intellectual Property Office and Member of the IP Osgoode Advisory Board

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