The Supreme Court of Canada issued its decision today in York University v Access Copyright. The Court agreed with the Federal Court of Appeal that the tariff is not enforceable against York University, saying that a user is entitled to obtain its rights through other means than a tariff, so if the user makes an unauthorized use, the appropriate remedy is an action for infringement. The Court did not endorse the fair dealing analysis conducted by the lower courts and declined to make a decision on fair dealing but did discuss that in the educational context it is not only the institutional perspective that matters.
All posts by Alan Macek
Designated Establishments
CIPO has announced that it is discontinuing the acceptance of correspondence at designated establishments at Innovation, Science and Economic Development Canada (ISED) regional mailrooms as of August 16th. These are currently available in Ottawa, Montréal, Toronto, Edmonton, and Vancouver. CIPO recommends electronic, in person or Canada Post as alternatives.
Consultations
Two consultations were announced today:
- the Patented Medicine Prices Review Board announced a consultation on updated guidance relating to Gap medicines, the references to the comparator countries and the international price tests for Grandfathered medicines and their line extensions, all arising from the six month extension to the coming-into-force of the new Regulations.
- The government announced a consultation on the copyright framework relating to artificial intelligence and the Internet of Things, including data mining, authorship and ownership of works created by AI, infringement and liability regarding AI, and repair and interoperability issues related to technological protection measures.
Gazette Amendments
Several IP related amendments have been published in the Canada Gazette:
- College-related for the coming into force of the College on June 28th (see earlier post):
- By-laws of the College of Patent Agents and Trademark Agents (Board),
- By-laws of the College of Patent Agents and Trademark Agents (College),
- Code of Professional Conduct for Patent Agents and Trademark Agents Regulations,
- Order Fixing the Number of Directors Under the College of Patent Agents and Trademark Agents Act
- Amendments to the Federal Courts Rules that came into force on June 17th (see earlier post):
- Rules Amending the Federal Courts Rules – relating to jurisdiction of Prothonotaries, books of authorities, timelines for defences among other things
- Rules Amending the Federal Courts Rules – relating to various miscellaneous updates
- PMPRB-related (see earlier post on delaying Patented Medicines Reporting Requirements that were to come into force on July 1st): Regulations amending the Regulations Amending the Patented Medicines Regulations (Additional Factors and Information Reporting Requirements)
Patent Rules
Proposed amendments to the Patent Rules are published for consultation in the Canada Gazette to address patent term adjustment and other changes to streamline prosecution. The proposed amendments include excess claim fees, limits on office actions and requests for continued examination, updating rules on sequence listings and some miscellaneous amendments.
Assignor Estoppel
Yesterday, the US Supreme Court upheld but limited the doctrine of assignor estoppel for patents in Minerva Surgical Inc. v. Hologic Inc.: “When an assignor warrants that a patent claim is valid, his later denial of validity breaches norms of equitable dealing. … [But an] example of non-contradiction is when an assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims.”
College
The new College of Patent Agents and Trademark Agents came into force today. The College’s website is now live with more information on the college including its bylaws and code of conduct for agents. The changes to the Patent Rules, Trademarks Regulations and implementing Regulations for the College were published last week.
PMPRB
There are reports that the government has again delayed the coming-into-force of the substantive changes to the Patented Medicines Prices Review Board guildelines by six-months. The updates had been scheduled to come into force on July 1st. Continue reading PMPRB
Federal Courts Rules
Amendments to the Federal Courts Rules have been registered based on proposed amendments published back in 2016. These amendments include (1) increases to the monetary limit for prothonotaries and for simplified actions; (2) provide for excerpts in books of authorities; (3) a timeline for filing of books of authorities in appeals; (4) condensed appeal books; (5) establishing a “Notice of Intention to Respond” and standardize the timeline for filing a defence for defendants who are served in either Canada or the United States; and (6) clarifying the material to be contained in an applicant’s record.
College
As reported in my post from last week, the College of Patent Agent and Trademark Agents will come into force on June 28. The supporting regulations were published in Canada Gazette today.