Earlier today, President Obama signed the America Invents Act into law. The USPTO has published documents describing the changes, including those changes that take effect immediately (PDF).
All posts by Alan Macek
Leave granted by Supreme Court of Canada in Re:Sound
Yesterday, the Supreme Court of Canada granted leave to appeal in the case of Re:Sound v. Motion Picture Theatre Associations of Canada, et al. (SCC case #34210) which is an appeal from Federal Court of Appeal decision 2011 FCA 70.
Continue reading Leave granted by Supreme Court of Canada in Re:Sound
U.S. congress passes patent reform
The U.S. Senate passed patent reform legislation this afternoon which the president is expected to sign soon. The changes to the U.S. patent system include making it a first-to-file system. Continue reading U.S. congress passes patent reform
Federal Court grants copyright Norwich order against P2P users
In Voltage Pictures LLC c. Mr. or Ms. DOE, 2011 CF 1024 and 2011 FC 1024 (Translation), Justice Shore of the Federal Court granted an order allowing Voltage Pictures LLC, the production company behind the movie “Hurt Locker”, to obtain the identities of alleged P2P downloaders of the movie from various internet service providers (ISPs).
In the unopposed motion, the Court considered the requirements under PIPEDA, the requirements under Rule 238 of the Federal Courts Rules, and the 2005 Federal Court of Appeal decision in BMG Canada v. John Doe, 2005 FCA 193.
A Norwich order is used to obtain information from a third party necessary to identify defendants. The Ontario Superior Court in Tetefsky v. General Motors Corp., 2010 ONSC 1675 has described the order as follows:
[34] A Norwich Order takes its name from the Norwich Pharmacal & Others v. Customs and Excise Commissioners, [1974] A.C. 133 (H.L.). Norwich Pharmacal knew that a patent that it owned was being infringed, but it did not know the names of the infringers. It asked the Customs and Excise Commissioners in England, who did know, for the names. After the Commissioners refused to provide the information, exercising an equitable jurisdiction associated with the ancient equitable bill of discovery, the House of Lords held that the court had the discretion to order discovery from a non-party and the Law Lords ordered the Commissioners to provide the information.
In this case the plaintiff started the action (T-1311-11) on August 24, 2011 with a statement of claim and simultaneously filed the motion under Rule 238. It is not clear from the docket if the ISPs were served with the motion, had knowledge of the motion or had agreed not to oppose the motion – none appeared at the hearing on August 29, 2011.
Voltage Pictures LLC has been involved in similar litigation against P2P downloaders in the United States over the “Hurt Locker” movie, including pursuing 5000 alleged downloaders in the United States according to media reports.
BCSC on copyright, website terms of use and scraping
The B.C. Supreme Court released a decision last week in Century 21 Canada Limited Partnership v. Rogers Communications Inc., 2011 BCSC 1196 involving allegations that Zoocasa improperly scraped content from Century 21’s online real estate listings. In a lengthy decision, the court dismissed the claim for trespass to chattels, granted nominal damages for breach of the website’s terms of use and awarded statutory damages in favour of the individual plaintiffs for copyright infringement.
Continue reading BCSC on copyright, website terms of use and scraping
More PAB decisions released
The Patent Appeal Board at the Canadian Intellectual Property Office has released four more decisions. This is in addition to the 6 decisions that were posted late last month and follows a long period where no decisions had been posted for some time.
The decisions released yesterday are:
- 1313 (PDF) (2011-04-14) – Patent Application No. 2121906 – E.I. Du Pont de Nemours and Company – In a short decision the PAB considered novelty and the patentability of soybean products and concluded that amended claims submitted by the applicant were allowable.
- 1314 (PDF) (2011-04-18) – Patent Application No. 2407304 – Genentech, Inc. – The PAB reconvened to further consider the Applicant’s comments after issuing its decision in #1307 in November 2010. The Applicant alleged that it had not been able to fully address two issues. The PAB upheld its earlier decision but allowed amendments to address the rejection. The claims were directed to antibodies defined in terms of the target polypeptides.
- 1315 (PDF) (2011-07-11) – Patent Application No. 2161785 – Massachusetts Institute of Technology and Children’s Medical Center Corporation – The claims, primarily directed to bio-compatible, biodegradable cross-linkable hydrogel to deliver cells into a patient such that an organ equivalent is eventually created, had been rejected as being broader than the description and the PAB reversed the examiner allowing the claims.
- 1316 (PDF) (2011-07-14) – Patent Application No. 2383007 – Novartis Vaccines and Diagnostics S.R.L. – After a final rejection, the applicant had voluntarily amended the claims to address most of the objections and at the time the PAB hearing was scheduled, further agreed to cancel the remaining problematic claims. The PAB allowed the amendments under Patent Rules, 31(c).
SCC denies leave on selection patent proceedings
Update: The Supreme Court has denied the leave applications.
On Thursday, the Supreme Court of Canada denied leave will be announcing whether it will grant leave in three related proceedings primarily relating to the validity of a selection patent. Apotex (SCC #34067), Genpharm (#34068) and Cobalt (#34066) are seeking leave to appeal the decision of the Federal Court of Appeal in 2010 FCA 320. That decision held that Lundbeck’s patent CA1,339,452 was a valid patent for the purposes of a PM(NOC) prohibition order. Continue reading SCC denies leave on selection patent proceedings
CIPO posts disclaimer about Practice Notices
CIPO posted a disclaimer this week about its Practice Notices suggesting that the notices “should not be quoted as, or considered to be, a legal authority.”
Continue reading CIPO posts disclaimer about Practice Notices
FCA allows appeal on lack of sound prediction (Latanoprost)
In a decision released yesterday, the Federal Court of Appeal has allowed Apotex’s appeal and held that Pfizer’s 132 Patent relating to latanoprost “fails to meet the requirements for sound prediction.”
Continue reading FCA allows appeal on lack of sound prediction (Latanoprost)
Proposed revisions to PM(NOC) Guidance Document
The Office of Patented Medicines and Liaison (OPML) within Health Canada released proposed revisions to its PM(NOC) Guidance Document relating to administrative new drug submissions and administrative abbreviated new drug submissions.
Continue reading Proposed revisions to PM(NOC) Guidance Document