Archive for the ‘Patents’ category

Microsoft Azure IP Advantage: cloud computing without patent risk?

February 17th, 2017

Microsoft’s President and Chief Legal Officer, Brad Smith recently announced a new program called the Microsoft Azure IP Advantage program. It is touted as  “the industry’s most comprehensive protection against intellectual property (IP) risks”. It will be available for users of Azure cloud offerings. The  protection is intended to “help foster a community that values and protects innovation and investments in the cloud” “without worrying about lawsuits”, especially from non-practicing entities (NPEs, aka patent trolls) and the frivolous patent lawsuits they are infamous for.

Law and Innovation: Is Intellectual Property a Path to Progress

April 13th, 2014

I had the pleasure of speaking at the Institute for New Economic Thinking and the Centre for International Governance Innovation (CIGI)  Toronto 2014 Conference called Human After All. The topic of my talk was “Law and Innovation: Is Intellectual Property a Path to Progress”. The speakers with me on the session were Giovanni Dosi, Director, Institute of Economics, Scuola Superiore Sant’Anna in Pisa and Mariana Mazzucato, Professor, University of Sussex. The paper I prepared for the talk is below. (A PDF version of the paper can be accessed here.) My slides can be accessed here.* .

Merck awarded blockbuster damages for Apotex’s patent infringement

July 17th, 2013

In December 2010, the pharmaceutical giant Merck won a major patent case against the generic pharmaceutical maker Apotox. In  Merck & Co v Apotex Inc, 2010 FC 1265, 91 CPR (4th) aff’d 2011 FCA 363, 102 CPR (4th) 321, Justice Snider found Merck’s ‘380 patent for the drug  lovastatin, a statin sold in Canada under the trade name MEVACOR, was valid and had been infringed. In a decision made public yesterday after a trial to determine damages, Merck & Co v Apotex Inc 2013 FC 751, Justice Snider ordered Apotex to pay Merck more than $180 million dollars in damages and interest.

Intellectual Property Law in Canada: Cases and Commentary

January 12th, 2013

I am pleased to announce the publication of the second edition of my IP casebook Intellectual Property Law in Canada: Cases and Commentary.

Written in collaboration with my partners Steven Mason and Dan Glover, this book  will be of particular interest to private practitioners, in-house lawyers, law students, law professors and librarians. It includes selections from important cases in intellectual property law including very recent cases from the Supreme Court of Canada and other appellant courts to provide the most up to date and instructive set of materials on IP law in Canada. We use it in the IP course we jointly teach at Osgoode Hall Law School in Toronto.

Viagra patent declared invalid by Supreme Court of Canada

November 8th, 2012

In an important case released today, Teva Canada Ltd. v. Pfizer Canada Inc. 2012 SCC 60, the Supreme Court of Canada ruled that Pfizer’s patent for its popular drug Viagra used for treating erectile dysfunction  was void for not meeting the disclosure requirements in s. 27(3) of the Patent Act.

To satisfy the disclosure requirements, the inventor must disclose his/her invention and describe how it works in the specification. In addition, the inventor must disclose in the specification  how “to make the same successful use of the invention as the inventor could at the time of his application”. These disclosure obligations are the quid pro quo for obtaining the monopoly right to make, use and sell the invention for the term of the patent.

Social media, intellectual property and the workplace, is there a gap in the law?

April 25th, 2012

I gave a speech earlier today at the Law Society Special Lectures on Employment Law and the New Workplace in the Social Media Age. My talk was entitled,  “Is There a Gap in Intellectual Property Law?”  My slides are shown below.

Canadian Patent Office allows’s “one-click” patent

December 31st, 2011

Last month the Federal Court of Appeal issued its reasons in the “one-click” patent case. Since the Court of Appeal directed the Commissioner to revisit’s application, it was not clear whether or not the patent was eligible subject matter.[1] The decision of the Court of Appeal left many questions unanswered.

It appears that the Patent Office has now determined that’s patent application,  “Method and System For Placing A Purchase Order Via A Communication Network” (Canadian Patent Application No. 2,246,933), is eligible subject matter. Patent Office records show that following an amendment made on December 22, 2011 a Notice of Allowance was issued on December 23, 2011. The records also show that the Final Fee was paid on December 28, 2011.

Developments in Computer, Internet and E-Commerce Law (2010-2011)

June 15th, 2011

Here are the slides used in my presentation to the Toronto Computer Lawyers Group earlier today, The Year in Review: Developments in Computer, Internet and E-Commerce Law (2010-2011). It covers significant developements since my talk last spring.

The slides include a summary of the following cases and statutory materials:


Cite Cards Canada Inc. v. Pleasance, 2011 ONCA 3

Leon’s Furniture Limited v. Alberta (Information and Privacy Commissioner), 2011 ABCA 94

State Farm Mutual Automobile Insurance Company v. Privacy Commissioner of Canada, 2010 FC 736

Nammo v. TransUnion of Canada Inc., 2010 FC 1284

Amazon files brief to Federal Court of Appeal in the one-click patent case

April 6th, 2011

Amazon filed its responding brief in the “one click” patent appeal. As Amazon notes, “The Appeal  raises  issues  fundamental  to  the  Canadian  patent  system:  (i)  the  proper approach to patent claims construction, and (ii) the scope of  patentable subject matter in Canada.”

The appeal arises out of Amazon’s application for a patent for an invention entitled “Method and System  for  Placing  a  Purchase  Order  Via  a  Communications  Network”. The  application  relates  to  a  communications network based method and  system for  placing an  order and, more particularly, to  a method and system for purchasing and ordering items over the Internet. going to the Federal Court of Appeal

November 15th, 2010

The AG of Canada and the Commissioner of Patents have filed a  Notice of Appeal to the Federal Court of Appeal in the case. In the notice, the government argues that the decision of the Federal Court of Canada released on October 14, 2010,, Inc. v. Attorney General of Canada was wrong and that Amazon’s one click patent is not patentable subject matter in Canada.

The Patent Appeal Board rejected Amazon’s “One-Click” patent application. Re Patent Application No. 2,246,933 (March 5, 2009) for three principal reasons: