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.* .
Archive for the ‘Patents’ category
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.
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.
One of the best ways to stay on top of IP/Tech legal developments is by subscribing to blogs. In the IP/Tech field, there are many very good ones to choose from. Justia’s BlawgSearch lists and ranks many of them. I subscribe to over 90. Over the holidays, and with the help of McCarthy Tetrault articling student Addison Cameron-Huff, I ranked them by popularity.
There is no perfect tool for conducting this type of evaluation. I relied on RSS subscriber counts using the RSS subscriber base of Google Reader, iGoogle and Google Desktop as a proxy.[i] I also reviewed each site’s Google PaegRank and Alexa rank which were somewhat helpful in confirming or determining popularity.[ii]
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.
Last month the Federal Court of Appeal issued its reasons in the Amazon.com “one-click” patent case. Since the Court of Appeal directed the Commissioner to revisit Amazon.com’s application, it was not clear whether or not the patent was eligible subject matter. The decision of the Court of Appeal left many questions unanswered.
It appears that the Patent Office has now determined that Amazon.com’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.
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.
The AG of Canada and the Commissioner of Patents have filed a Notice of Appeal to the Federal Court of Appeal in the Amazon.com case. In the notice, the government argues that the decision of the Federal Court of Canada released on October 14, 2010, Amazon.com, 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: