In a unanimous decision, the Supreme Court held today that the promise doctrine is not the correct approach to determine whether a patent has sufficient utility. As a result, the lower court decisions finding the patent at issue directed to Esomeprazole/Nexium invalid for want of utility, were set aside.
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Forum Selection Clauses
The Supreme Court of Canada issued its decision today in Douez v. Facebook, Inc., in which the majority, in a split decision, allowed the appeal and held that the forum selection clause should not be enforced. The plaintiff sought certification for a class action against Facebook alleging the company used her name and likeness without consent for the purposes of advertising, contrary to BC’s Privacy Act. A forum selection clause in the terms of use required disputes to be resolved in California under California law.
Also today, the Supreme Court announced it would release its decision next week in Google Inc. v. Equustek Solutions Inc. et al. on extraterritorial injunctions. Continue reading Forum Selection Clauses
Consultation
Proposed regulatory amendments to the Trade-marks Regulations and the Industrial Design Regulations have been published. Consultations are being considered through to mid-July. These changes include substantive changes to implement Madrid Protocol, Singapore Treaty and Nice Agreement for trademarks and Hague Agreement for industrial designs. Continue reading Consultation
Judicial Appointments
Judicial appointments have been made in the Federal Court, Ontario, Quebec, Newfoundland and Labrador, and British Columbia. In the Federal Court, Prothonotary Lafrenière was appointed as a judge.
Updates
Here are several news items that may be of interest:
- An Order in Council has indefinitely suspended implementation of the private right of action under CASL, Canada’s anti-spam legislation. The private right of action was scheduled to come into force on July 1, 2017.
- CIPO has advised that it will beginning a series of consultations over the summer on proposed regulatory amendments for Industrial Design Regulations, Trade-marks Regulations, Patent Rules relating to implementation of the Hague Agreement, Madrid Protocol, Singapore Treaty, the Nice Agreement and the Patent Law Treaty.
- Global Affairs Canada has announced consultation on the renegotiation and modernization of the North American Free Trade Agreement (NAFTA). The government invites submissions on a variety of topics including intellectual property.
Venue
The United States Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC stating that corporate ‘residence’ refers only to the state of incorporation. The patent venue statute, 28 U. S. C. §1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” This decision will likely have a significant effect on the number of cases filed in Texas, which saw 37% of all patent cases in 2016.
Protective Orders
My recent article on the use of protective and confidentiality orders in the Federal Court is available on Slaw. This topic was one of the items discussed last week at the Federal Court town hall and was the subject of an order released last week which stated, “The open court principle is of crucial importance in a democratic society, … Confidentiality orders inherently compromise these fundamental principles and important rights.” Continue reading Protective Orders
CETA
Bill C-30, the CETA implementation legislation received royal assent today. The Bill includes amendments to the Patent Act, regarding supplementary protection for pharmaceutical products and altering patent linkage system, and to the Trade-mark Act regarding geographic indicators with grounds of opposition and certain exceptions for prior use, acquired rights and generic terms. Amendments are also proposed to a number of other acts. Implementation regulations are expected any day.
CBA IP Day
After a kickoff at the Diversity Breakfast, CBA IP Day continued with the Federal Court’s Town Hall focused on the imminent overhaul to pharmaceutical litigation in Canada, including two years to trial, focused discovery, changes to costs regime and efficient trial management. Bill C-30, the CETA implementation legislation cleared the senate this afternoon. Continue reading CBA IP Day
Trial Management
The Federal Court issued a practice notice on trial management conferences and procedures. The guidelines identify issues to be determined at pre-trial conferences and trial management conferences as well as impose new deadlines for pre-trial steps.