Peter Waldkirch is a second year LL.B. student at the University of Ottawa.

The rapid rise of online social networks (can you believe that Facebook only opened itself to the general public in 2006?) has already raised many privacy-related issues. For example, I would suspect that many readers of IPilogue have already heard about stories of people losing their jobs over careless online behaviour (my personal favourite remains that of a BC NDP candidate who was forced to withdraw from the provincial elections over racy Facebook photos; that’s a hard one to live down).

The Canadian Privacy Commissioner’s last annual report to Parliament focused largely on the privacy issues related to the pervasive use of social networking sites amongst Canadian youths (I summarized the report here on IPilogue). At the heart of many of these discussions lies the tension between traditional concepts of privacy on the one hand and the desire to share personal information (which is what leads people to social networking sites in the first place) on the other. Clearly, new conceptual approaches are needed. One interesting such foray is Professor James Grimmelmann’s paper “Privacy As Product Safety” (available on SSRN).

After a brief introduction to some of the pitfalls to thinking about privacy in the online world, Grimmelmann poses his fundamental question: “is the loss of privacy in social media something the law ought to worry about, and if so, how?” Addressing the first part of that question, he identifies four “Myths of Privacy on Facebook”: that users don’t care about privacy; that they make rational privacy choices; that their desire for privacy is unrealistic; and that regulating Facebook as if it were a database would be sufficient (the last, according to Grimmelmann, is really a half-myth – a distraction, rather than actually false).

The first myth, he points out, seems to have a fair amount of traction. This goes back to what I mentioned above as one of the central tensions of current privacy debates: people want to share personal information. That’s the whole point of signing up on something like Facebook in the first place. But for Grimmelmann, this is far from the end of the story, and shouldn’t be taken to mean that people have given up on any sense of privacy; that’s “an elegant theory, except for the inconvenient fact that it doesn’t fit the available data.” He points out that there have already been several user revolts on Facebook over privacy changes – from the roll out of the News Feed to the ill-fated Beacon. Although this doesn’t really settle the issue of what privacy means in today’s world, it’s enough to show that, at least, many users do care.

The myth of rational privacy choices is deeply undermined by the simple fact that privacy policies can be very complicated and confusing beasts, and even a user who takes care can easily fail to successfully navigate a complicated array of privacy options. The previous Facebook policy of automatically sharing a user’s photos with their entire geographic network serves as an example.

Grimmelmann’s discussion of the myth that the desire for privacy is unrealistic is very interesting. Here, he points out that the idea of “privacy” only has real meaning when embedded in actual social contexts. He uses the recent example of women posting the colour of their bra in their status updates as an example (purportedly to raise awareness of breast cancer – though I, for one, only learned of that long after the fad had ended). If a co-worker were to ask a colleague the next day what colour her bra was, that would likely be a form of workplace harassment. In other words, the same datum has different privacy values depending on the context in which it is embedded. The issue is not that privacy is dead, but that we need to consider the ways in which various practices are redefining the idea of privacy itself.

The final myth that Grimmelmann addresses is the idea that thinking about Facebook as a database will be sufficient to protect user privacy. He identifies “limited data collection”, “full disclosure”, and “no secondary use” as the key concepts in a database-centred model of privacy protection, and argues that while they are important, they don’t really get to the heart of the “user-user relationships on Facebook.” It’s hard, for example, to define what the “purpose” of sharing personal information on such a site really means – people use Facebook to “connect and share data”, but actually identifying the scope of that can be problematic. Grimmelmann argues that if “secondary use” just means “’any use not originally contemplated by the user,’ then all we’ve managed to do is restate the problem. We got into this mess precisely because users have shown themselves unable to predict all the ways in which their information might be seen.” Still, I would suggest that, despite their drawbacks, these sorts of database-centric protections can be powerful in addressing contemporary privacy issues. The work done by Canada’s Office of the Privacy Commissioner (responding to a complaint launched by the Canadian Internet Policy and Public Interest Clinic), which has led to Facebook revising its privacy practices globally, shows that there is still potential here.

Still, in the above Grimmelmann is simply arguing that privacy on sites such as Facebook should be legally protected and that we need new ways of thinking about online privacy. To aid us in this rethinking, he proposes using concepts drawn from product-safety laws. Just as the manufacturers of physical goods can be liable for design or other flaws in their products, so should the providers of online services. For example, by focusing on the consumers’ expectations of the product, we can gain insight into what privacy practices result in user backlash. He uses the recent example of Google Buzz (and the privacy backlash it generated) to show how product-safety concepts can be usefully applied to contemporary privacy issues.

This is certainly an interesting idea, and should definitely be pursued. Hopefully, thinking about privacy in terms of product-safety can help contribute to (what I would suggest is) a badly-needed rethinking of privacy in today’s world. Some issues remain, however. For example, I’m not certain that a “consumer expectations” analysis will be easier to apply than the “secondary use” analysis he critiques earlier – both ultimately lead to the question: “what exactly did the user consent to?” It seems to me that this remains the real heart of the issue. Take, for example, the heated response generated when Facebook first introduced its News Feed. By today’s standards, this seems almost quaint. Ben Parr, one of the leaders of the anti-News Feed revolt, certainly feels differently about the matter now, and writes that “I’m not afraid of losing my privacy anymore.”

Grimmelmann doesn’t argue that product-safety style thinking is sufficient on its own, but rather that some form of tort liability inspired by product-safety law could be a useful part of a larger strategy that includes regulation and user education. It’s a fascinating idea, and one that those interested in conceptualizing privacy should certainly check out.

Posted in Electronic Databases, Privacy
Comments: 0

Nirav Bhatt is an LLM candidate at Osgoode Hall Law School.

WTO members on 2 March 2010, debated the question of whether a 2003 decision designed to improve access to medicines is working. Although opinions expressed in the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Council varied, members agreed that they should look at real-life experiences in order to assess the system.

IP watch reported that at an earlier 12th February informal meeting, several members – including Brazil, China, Cuba, Ecuador, Egypt, India, Indonesia and Venezuela - said that the so-called “paragraph 6” amendment is not working effectively. Paragraph 6 refers to the 2001 WTO Doha Declaration on TRIPS and Public Health, which mandated that WTO members solve the problem of medicines access for countries lacking domestic drug production capabilities. Therefore to address the problems faced by countries with insufficient or no manufacturing capacity in the pharmaceutical sector – the 30 August 2003 decision of the general council was adopted which later converted into an amendment of the TRIPS agreement on 6 December 2005.

This amendment has been used only one time, when Canadian drug firm Apotex sent two shipments of AIDS medicines to Rwanda under Canada’s Access to Medicines Regime (CAMR). The effort was led by the Canadian company, which has said it does not plan to repeat the complicated process. Key dates given by Canada, as reported by IP watch, included: May 2005, when domestic regulation to allow for export-oriented compulsory licences (passed by the Canadian Parliament a year before) went into effect; December 2005, when Apotex applied to use the system; June 2006 when Apotex’s application was approved; and July 2007 when Rwanda was identified as Apotex’s customer.  There is a procedural step required by TRIPS in which the patent holders must be contacted to see if they will provide a voluntary licence. After this failed to produce a licence, Apotex applied for a compulsory licence in September 2007, which was then granted in October 2007. The company then had to undergo a review from Rwanda to obtain public tender. After this was granted in May 2008, the drugs were manufactured for a first delivery date in September 2008, nearly 3 years after Apotex applied to use system.

However, compulsory licensing as a policy mechanism can be used to address a number of situations in the context of public health including high prices of medicines, anti competitive practices by pharmaceutical companies, failure by pharmaceutical patent holders to sufficiently supply the market with needed medicines, emergency health situations and the needs for establishing a pharmaceutical base. Compulsory licensing is important for improving access to essential medicines as well as facilitating the development of innovative capacities and Research and Development especially in developing countries. For example, a local working requirement, which is a ground for the issue of such licences, can be important both for improving access to essential medicines as well as facilitating the technology transfer obligations envisioned in Article 66 of the TRIPS agreement. Further, the countries in need of cheaper versions of patented pharmaceuticals may increasingly face a situation in which they lack the industrial capacity to produce them, while the foreign supplies are unavailable. Due to lack of technical capacity, adequate equipment, human resources, high costs of production, or other obstacles, many developing countries and the LDCs cannot produce the active ingredients needed to manufacture pharmaceutical products. In these circumstances, compulsory licensing is an alternate solution.

The costly prices of medicines should not curtail every human being’s right to good health and for this reason this right is recognized in certain forms as a fundamental right, both under public international law and the domestic law of many civilized nations.  It is critical that developed countries realize this and therefore create further room for broader interpretation of compulsory licensing. When considering the question of enabling countries lacking manufacturing capacity in pharmaceuticals to make effective use of compulsory licensing, one consideration is enabling the production of generic medicines on larger scale in a simpler fashion.

Posted in IP, Patents, Pharmaceutical Drugs
Comments: 0

Nathan Fan is a JD candidate at Osgoode Hall Law School.

In yet another Prince related copyright infringement suit, the Ninth Circuit in the U.S. has taken the opportunity to address the scope of the damage recovery provision in the DMCA for bogus takedown notices. In the recently released order granting partial summary judgement, federal district judge Jeremy Fogel issued an important decision in the pending Lenz v. Universal Music case, allowing plaintiffs to recover damages for meritless takedown requests, but also narrowing recoverable damages to only those proximately caused by the misrepresentation.

In February 2007, Stephanie Lenz posted a home video on YouTube of her toddler son getting a little crazy to Prince’s “Let’s Go Crazy” playing noisily in the background.  In June 2007, Universal Music, on behalf of Prince, sent YouTube a DMCA takedown notice pursuant to 17 USC § 512(c). Universal claimed that Lenz’s video infringed the copyright in Prince’s song and requested that YouTube remove it from their website. YouTube complied with the takedown and provided Lenz with notification. However, Lenz then responded with a DMCA counter-notification claiming fair use (i.e. the video was “for her family and friends to enjoy”), and YouTube put the video back up on the website a few weeks later. Lenz (and the Electronic Frontier Foundation) then launched a lawsuit against Universal Music under the DMCA’s 17 USC § 512(f), which allows a plaintiff to recover damages for bad faith use of the DMCA notice and takedown provisions.

In the motion by Lenz for summary judgement on the issue of recoverable damages, the federal district court went through a discussion on what types of damages were compensable under 17 USC § 512(f). The court found that the use of the plain language of “any damages” in the provision strongly suggested Congressional intent to have recovery be available for damages even if the damages did not amount to substantial economic damages. Further, a narrow interpretation of “any damages” would be inconsistent with the statutory language, overall statutory scheme and legislative history. However, the court did not go so far as to endorse a broad interpretation of “any damages”, stating that a § 512(f) plaintiff’s damages must be “proximately caused by the misrepresentation to the service provider and the service provider’s reliance on the misrepresentation”.  To conclude otherwise would allow plaintiffs to satisfy “any damages” by simply hiring an attorney and filing suit and thereby incurring their costs and fees.

As a result, the court held that any fees incurred for work in responding to the takedown notice and any work prior to the suit under § 512(f) would be recoverable under the provision. However, any further costs and fees would remain governed by 17 USC § 505 (Remedies for infringement re costs and attorney’s fees are at the court’s discretion), meaning any litigation costs incurred after the filing of the lawsuit would not be recoverable under § 512(f) as these costs are not causally connected to the takedown notice.

As Lenz was aided by counsel from EFF, Universal had argued that Lenz had not “incurred” any costs as the work was pro bono and by definition could not recover any costs or fees.  The court responded by saying that pro bono attorneys’ fees and costs may be recovered, provided the § 512(f) plaintiff assumed either “(1) a non-contingent obligation to repay the fees advanced on his behalf at some later time; or (2) a contingent obligation to repay the fees in the event of their eventual recovery”.

Despite this “win” for Lenz, it should be noted that Lenz will not recover any of these damages unless she is successful in her § 512(f) claim. In Rossi v. MPAA, the Ninth Circuit had set a standard for the § 512(f) claim, requiring that the plaintiff show that the copyright owner had sent the bogus takedown claim in subjective bad faith (i.e. knowingly sent a bogus notice).  This creates a rather high threshold for Lenz to pass and as noted by Eric Goldman: “Not only must the 512(f) plaintiff overcome the Rossi case, which effectively mooted claims for erroneous takedown notices, but this ruling illustrates how hard 512(f) plaintiffs have to work to find compensable damages. We don’t see many 512(f) cases being brought. Watching this case, it’s easy to see why.”

Posted in Copyright, Fair Dealing, IP, Infringement, Internet, Internet Sharing
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Amanda Letourneau is a J.D. candidate at Osgoode Hall and is taking the Patent Law course.

News of Apple’s patent infringement lawsuit broke earlier this month and did not come as much of a surprise, given the relative frequency of IP lawsuits being launched in the mobile phone industry. A fellow classmate blogged about the lawsuit and the nature of computer programmes. It is no secret that Apple’s iPhone has revolutionized cellular phone devices. Since its release in 2007, the iPhone has dominated the smart phone market; which prior to the iPhone was a small niche market for tech enthusiasts. 

As a result of the iPhone’s success, the already booming cell phone market was forced to adapt at a rate that was unprecedented.  But how can companies adapt fast enough to even compete? Many cell phone makers are forced to make a choice between being left behind with dated technology, or “copying” the race leader’s success. Given that nearly every aspect of the iPhone is protected by patents (Apple holds nearly 200 patents relating to the device) it is no wonder that a lawsuit has arisen. One such company is HTC, and they are paying for it in a recent lawsuit claiming that they have infringed on 20 patents relating to the iPhone’s user interface, hardware and underlying architecture.

The burning question is why companies are so willing to borrow patented features from other companies and use them in their own devices. One probable answer is that the company believes that they could persuade a court that the patents they’ve infringed are invalid, likely on the basis that the claimed invention was obvious in light of existing prior art. This means that Apple is risking invalidation of their patents should the case continue to trial, and a judge find in favour of HTC. It may also be that defending infringement allegations (the vast majority of which settle out of court) would be cheaper than developing new features, especially when the patented features work well and have been received well by the public, as is the case with the iPhone.

A possible reason that Apple chose to go after HTC first is that they are the makers of the “Nexus One” Google Android phone, arguably the iPhone’s greatest potential market competitor. Given that Apple has specifically called out phones that use Android  (Google’s open source operating system) there is a good chance that targeting HTC is a strategic move by  Apple to get at Google by proxy. The Android operating system represents a significant threat, as Android is accessible to all handset makers, allowing them to adapt the software to suit their needs. The result of this, and likely Apple’s primary concern, is that use of the software will become ubiquitous. Further, as it is open source, the software allows for third-parties to have access to the source and modify the architecture of the operating system.

At first glance, the issue is straight forward, as Steve Jobs stated: “We can sit by and watch competitors steal our patented inventions, or we can do something about it. We’ve decided to do something about it. We think competition is healthy, but competitors should create their own original technology, not steal ours”. Apple holds the patent rights to aspects of their invention, and now they are enforcing those rights (although opinions vary as to the validity of Apple’s claims, especially considering that some of the patents date as far back as 1995, and were not filed in contemplation of use in touch-screen phones) . However, the lawsuit is demonstrative of broader points of contention in patent law.

The theory of patent law is based on the principle of an exchange of information between society in general and an inventor who is averse to disclosing the information underpinning their invention. The resulting protection is premised on the assumption that absent a patent regime, competitors will inevitably imitate, in lieu of innovating, because imitation results in greater gain without having to invest in research and development. However, there comes a point where putting too much emphasis on the rights of the patent holder and allowing the enforcement of frivolous patents goes against the public interest by stifling creativity and competition.

If the claims made by Apple are construed too broadly, the public interest in promoting innovation, in this case through incremental improvements on existing technology, would be impeded. When the boundaries of what is under patent protection are not made clear, competitors risk infringing patents whose boundaries were not properly or plainly set out by the claims. A fair determination of claim boundaries would strike a balance between avoiding granting of over-broad monopolies, while ensuring sufficient economic return on the innovation protected by the patent in question.

Although intuitively patents do encourage innovation, especially groundbreaking innovation, it has been argued that they cause a chilling effect on further innovation.  This is especially true when patents are overly broad, and the patent holder refuses reasonable access.  While Apple’s iPhone was a ground breaking product, at what point should protecting patent rights give way to encouraging innovation, improvement and competition in a given industry?  Eric Von Hippel, a professor of technological innovation at M.I.T.’s Sloan School of Management, stated : “It’s a bad scene right now. The social value of patents was supposed to be to encourage innovation — that’s what society gets out of it, the net effect is that they decrease innovation, and in the end, the public loses out.”

Too much ownership in a particular area results in the tragedy of the “anticommons” in which resources are underused, for fear of enforcement of ownership rights. As such, the public is deprived of further innovation in the field and market competition which would drive down costs of acquiring the patented invention. What is needed is a way to strike a balance between protecting against profiting from the innovation of others, while still allowing for the development of similar products to promote competition. As it stands, the use of patents as a strategy to protect against competition means that it is the public who loses out, as companies shy away from innovation in order to avoid having to defend costly lawsuits.

Unfortunately, it is inevitably the consumer who loses out when technology giants pursue IP rights through lawsuits. Patent law has become less about promoting the creation of new and useful products to benefit society as a whole, and more about stifling competition. When making improvements on existing software patents, or producing products that use similar concepts, companies and individuals risk costly and lengthy legal battles. If Apple wins this case, it will secure itself as the only producer of phones with features such as pinch to zoom and slide to unlock, which essentially are concepts, not inventions in the technical sense. Allowing protection of these ideas would mean that Apple could continue charging higher prices without actually providing greater innovation. Surely Apple should benefit from its state of the art device, but should it  benefit by preventing the ideas the device embodies from being used by others? It leads one to wonder whether the technology industry, and society in general, would be better served if less time and energy was spent pursuing frivolous legal battles, and more emphasis was put on disseminating technological innovation to the public?

Posted in IP, Patents
Comments: 0

Fiona Li is a J.D. candidate at Osgoode Hall and is taking the Patent Law course.

A non-practicing entity (NPE) is a patent owner that does not manufacture or use the patented invention. NPEs are commonly referred to as patent trolls. More specifically, patent trolls buy patents cheaply from entities not actively seeking to enforce them. The trolls, in turn, make money by aggressively enforcing claims against other companies who may be infringing on the patent despite having no intention of using it themselves.

One of the more prominent patent trolls that has been making a name for itself in recent years is Intellectual Ventures (IV). Intellectual Ventures is a patent holding investment fund that buys patents in order to develop a large patent portfolio. It licences the patents to large companies, many of whom also invest in the fund such as: Sony, Nokia, Microsoft, Intel, Google and eBay. Although IV claims to have never asserted its rights to its patents through litigation, there have been claims that it has done so through its many secret shell companies.

 To fight patent trolls, companies resort to a strategy known as defensive patent aggregation. ·Defensive patent aggregation companies are in the business of purchasing patents to keep them out of the hands of entities that would assert them against operating companies (trolls). They typically do not assert rights to its patents and only license them out to members. Prominent organizations that do this type of work include:

• RPX Corporation is patent holding company that protects its members against patent trolls but buying up patents on the market. Members pay an annual membership fee, based on their operating income. RPX then licenses its patents to its members.
• Allied Security Trust(AST) is another member based patent-holding company that protects its members against patent trolls. Members contribute funds to the trust, which are then used to purchase patents that members are interested in. The trust then licenses the purchased patents to members. AST has fifteen members, including: ·Ericsson, Philips, RIM, Motorola, Verizon, Cisco, HP and others.

 Patent trolls and defensive patent aggregation companies, though operating on opposing sides, are both NPEs in that they collect patents, but do not use or produce the inventions they own the rights to. Taken too far, both trolls and defensive patent aggregation companies both have the effect of creating a patent ‘cartel ‘, as described in ‘The Eureka Defence’. In the blog, the author describes the effective cartel that could potentially be formed as a result of Intellectual Ventures’ operations:

With “thousands of members” [Intellectual Ventures] would have an agreement among competing firms to coordinate prices on a vast holding of intellectual property to the disadvantage of non-members. Patents are monopolies, so non-members will have no substitutes. Its alarming size would give it substantial reach in the intellectual property market and engender a network effect, which would cultivate market power and make membership more valuable on a per-patent-basis as it grows. The problem with this isn’t the idea of patents. The problem is the power that an intellectual property cartel would have.

According to the author, the effect of a cartel would be that the threat of legal action may force concessions and settlements in situations where they are not merited. While the lack of substitutes would make membership more desirable, and the network effect would make membership more costly. As a result, the price of innovation goes up and smaller firms are put at a disadvantage.

I believe that this line of reasoning can be applied to defensive patent aggregation companies as well. Such companies, if they grow to acquire enough patents, can wield the same type of power that cartel-like power that a large patent troll could have. This is because patent trolls and defensive patent aggregation companies are more similar than they are different in that their main purpose above all else is to acquire patents. The only difference is that latter do not assert their patent rights through litigation. However, that is likely to change if the interests of members are being adversely affected by non members.

Posted in Patent Trolls, Patents
Comment: 1

Keldeagh Lindsay is a J.D. candidate at Osgoode Hall and is taking the Patent Law course.

“In our system of patent law, the identity of the inventor is, for the most part, overshadowed by the issue of invention.” (Apotex v. Wellcome [2001] 1 F.C. 495, at para. 27)

The Patent Act does not define “inventorship”, but, as per s. 53(1) of the Act, the willful omission of the name of a co-inventor on a patent application is ground for voiding the patent. Whether two National Institutes of Health (NIH) researchers should have been named as co-inventors on the anti-HIV azidothymidine (AZT) patent was litigated in Apotex v. Wellcome [2002] 4 S.C.R. 153. To resolve the issue, the Supreme Court had to divine a definition from the rest of the Act and the common law.

HIV/AIDS was first reported in 1981. Two years later, the pharmaceutical company Glaxo Inc. (now GlaxoSmithKline) assembled a team of researchers to develop a drug to combat the retrovirus. The Glaxo team tested a number of compounds on mouse retroviruses. By 1984, one of the tested compounds, AZT, showed promise at wiping out mouse retroviruses in mouse cells. However, as it was only three years since the discovery of HIV, and due to the lethality of the virus, there were very few facilities in 1984 that could test AZT on HIV in human cells. Glaxo turned to outside expertise, including researchers at the NIH, to perform this screening, and it was two NIH researchers, Drs. Broder and Mitsuya, who established the utility of AZT on human cell lines. A patent was filed in the UK shortly thereafter, and a Canadian patent based on the UK filing soon followed. Neither NIH scientist was named as a co-inventor on the patent.

As part of an action to have the AZT patent declared invalid, Apotex Inc. and Novopharm Ltd. (now Teva Canada Limited) argued that the two NIH scientists were co-inventors. The trial judge concluded that the NIH scientists were co-inventors, and used a number of facts to support his conclusion, including that: 1) the NIH scientists, not the Glaxo team, established the utility of the drug; 2) correspondence from Glaxo supported the proposition that the role of the two NIH scientists was collaborative and not simply just to confirm test results; and 3) Glaxo had also sent AZT to Duke University for testing, and although ultimately unable to successfully perform the tests, the university had signed an agreement to assign Glaxo any patents derived from its work—no such agreement was ever signed by the NIH.

The Supreme Court agreed with the trial judge in that the NIH scientists established utility, but decided that establishing utility was not the test of inventorship, and that importance should be attributed instead to the development of the “inventive concept”. A party “whose ingenuity is directed to verification rather than the original inventive concept” (at para. 99) is, by the Court’s definition, not an inventor.

On the subject of inventorship, I respectfully disagree. Glaxo did not invent AZT; it was synthesized in 1964 at the Detroit Institute of Cancer Research (now the Barbara Ann Karmanos Cancer Institute). Few laboratories in 1984 had the requisite facilities and expertise to examine the effects of AZT on HIV-infected human cells. And without evidence of utility with respect to combating HIV, Glaxo would not have been able to patent the drug.

The Patent Act defines invention as any new and useful art, process, machine, etc. Gerard Wire Tying Machines Co. of Canada v. Cary Manufacturing Co., [1926] Ex. C.R. 170, which is cited by the Supreme Court and quotes the U.S. text Walker on Patents, iterates that a party who “contributes an independent part of the entire invention which helps to create the whole…is a joint inventor even though his contribution be of minor importance”. The two NIH scientists contributed an independent part of the invention, and that part helped to create the whole: it was they who established the utility (i.e. usefulness) of the drug. The NIH scientists proved the concept. And their contribution was hardly minor; both Glaxo and Duke University were unable to establish AZT’s usefulness. The human cell line used by the two scientists was, in the words of the Supreme Court “original and offered a testing environment that Glaxo/Wellcome could not duplicate in-house” (at para.102), and was material to establishing AZT’s effectiveness against HIV in human cells.

A better definition of inventorship would include the presumption that any party that has made a material contribution to the development of an invention is a co-inventor. If a party’s contribution to the invention was crucial, such that without the contribution by that party the patent would not have been granted, as was the case here, then that party is a co-inventor.

This presumption would afford researchers greater protection for their scientific efforts and ingenuity, and is a more equitable measure of inventorship that better accounts for the modern reality of collaboration and the cross-pollination of ideas. Armed with these rights from the beginning, scientists would be free to negotiate and bargain them away if they so choose, as was the case with Duke University and Glaxo, but was not the case with Glaxo and the NIH.

Posted in IP, Infringement, Patents, Pharmaceutical Drugs
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George Nathanael is a JD candidate at Osgoode Hall Law School.

Last week, Advocate General Paolo Mengozzi of the European Court of Justice released his opinion on the questions referred by a Dutch court concerning the case of Monsanto Technology LLC v. Cefetra BV and Others. The case involves Monsanto’s attempt to prevent imports of Argentinean soy meal, which has been found to contain the DNA sequence protected by the company’s Roundup Ready soybeans patent.

However, this protection does not exist in Argentina, where Monsanto does not hold such a patent. Nonetheless, Monsanto brought a suit against the companies that imported the soy meal for infringing its patent in Europe, based on the protections granted under the European Parliament’s Directive 98/44/EC. Article 9 of the directive is particularly important, and reads, “[t]he protection conferred by a patent on a product containing or consisting of genetic information shall extend to all material, save as provided in Article 5(1), in which the product [is] incorporated and in which the genetic information is contained and performs its function.”

The first question referred by the Dutch Court asked whether Article 9 of Directive 98/44 must be interpreted such that patent protection ought to be applied in cases such as the current one where the DNA sequence forms part of the material being imported into the EU but is not performing its function at that time. Monsanto’s patented DNA in question allows soybeans to be resistant to its Roundup herbicide, but this function obviously does not apply to the soy meal. However, it is likely that the soy meal was derived from plants that were resistant to Roundup due to their DNA sequence, and the meal can also potentially be used to create such plants in the future; both are situations in which the patented sequence would be performing its function.

In interpreting this first question, Advocate General Mengozzi said that he would not take a narrow approach such that the genetic information had to be performing its function at the exact same time as the alleged infringement (e.g. in this case, be actively blocking the normal effects of Roundup herbicide as it was being imported). However, he still stated that the additional patent protection of Article 9 must be purpose-bound and only cover the purpose found within the patent, which in this case would not be applicable to the residual DNA found within the soy meal after the plants had been processed. He made the argument that to do so otherwise would allow for “protection for all other possible functions of the same sequence… [which] in practice, make a mere discovery patentable, in breach of the basic principles on patents”.

The second question referred asked whether the protections afforded in Directive 98/44, especially Article 9, could be extended by parallel legislation that is enacted nationally. Advocate General Mengozzi stated that “[t]he body of rules laid down in Directive 98/44 is not complete, but must be deemed to be exhaustive in the areas with which it deals: the corollary being that, in those areas, national legislation cannot provide for a level of patent protection which is wider than that provided for under the directive”. In coming to this conclusion he stated that the main goal of this legislation was not to extend protection for genetic patents, but rather to have consistent laws among EU member states. He also said that granting patent-holders more generous rights would run counter to the objective of promoting the market and competition.

The third question asked whether it mattered that Monsanto’s patent was granted under national patent legislation and before Directive 98/44 was adopted, to which the Advocate General answered that it did not. He came to this conclusion based on a lack of transitional provisions in the directive, the Court of Justice’s past interpretations of similar questions dealing with EU legislation, and the fact that having a multiplicity of laws apply would create difficulties in trade that the legislation was trying to avoid in the first place.

The fourth question had to do with the possibility of the above interpretations conflicting with Articles 27 and 30 of the TRIPS Agreement. The opinion was that no possible conflict could exist. Article 27 has to do with patentable subject matter and not protection, and Article 30 deals with exceptions to patent protection, where the purpose-bound interpretation of Directive 98/44 has to do with the extent of the protection.

Advocate General Mengozzi’s answers to the questions referred, especially the first and second, could potentially have far-reaching consequences for EU members and companies with patents there. If the protections of Directive 98/44 are exhaustive, and must be interpreted as falling under a purpose-bound scheme, this can potentially open the door to what should otherwise be protected substances being openly traded in forms that are not caught by legislation, thereby increasing access to them so that a patent-holder’s rights are more easily infringed in the future. It can also be argued that preventing a member country from enacting legislation that gives more rights to patent-holders could result in a disability in negotiating deals with outside states and companies. Of course, this limitation on sovereignty can be said to simply be the consequences of being a member of the EU. Though the Advocate General’s opinion is non-binding, it carries much weight and has a high chance of being followed.

Posted in Cross Border Issues, Infringement, Patents
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IP Osgoode is proud to announce the forthcoming publication of a new book edited by Lionel Bently (Herchel Smith Professor of Intellectual Property Law at the University of Cambridge), Catherine W Ng (Lecturer of Law at the University of Aberdeen), and Giuseppina D’Agostino (Assistant Professor at Osgoode Hall Law School in Canada).

Below is a description of the book, as set out by Hart Publishing:

“This collection of essays was written in honour of David Vaver, who recently retired as Professor of Intellectual Property and Information Technology Law and Director of the Oxford Intellectual Property Research Centre at the University of Oxford. The essays, written by some of the world’s leading academics, practitioners and judges in the field of intellectual property law, take as their starting point the common assumption that the patent, copyright and trade mark laws within members of the ‘common law family’ (Australia, Canada, Israel, Singapore, South Africa, the United Kingdom, the United States, and so on) share some sort of common tradition. The contributors examine, in relation to particular topics, the extent to which such a shared view of the field exists in the face of other forces that are producing divergence. The essays discuss, inter alia, issues concerning court practices, the medical treatment exception, non-obviousness and sufficiency in patent law, originality and exceptions in copyright law, unfair competition law, and cross-border goodwill and dilution in trade mark law.”

Futher details on the book may be found on the Hart Publishing website here.

Please stay tuned to 10 September 2010 as there will be a celebratory event to mark the publication of this new book in honour of Professor David Vaver.  More details to follow.

Posted in General, IP
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Dr. Stan Shapson is Vice-President Research and Innovation at York University. 

I recently gave a talk at a conference hosted by IP Osgoode and the Hennick Centre for Business and Law, which centred on the development of strong public/private sector collaborations in an emerging new paradigm for innovation.  With the challenge of a changing external context for research in Canada —both a shifting economic and social cultural environment— a new view of innovation is taking hold and a recognition of the value of collaborations across the spectrum of research is emerging. 

I shared a number of examples of recent economic reports, finding that effective collaboration as a part of R&D strategies will provide for significant gains in competitive advantage in innovation and productivity growth for Canadian businesses.  But while more and more business leaders are recognizing the potential benefits of research collaboration– universities must take up this challenge as well.  It will be critical for universities to build a more comprehensive and sustainable approach to strengthening research opportunities with external partners.  While it is important that universities develop the skills, talent, and creative and innovative capacity to enhance productivity in the new global economy, building new models to meet these challenges will require collaboration and teamwork at all levels and across all value chains. 

I also highlighted the increasing recognition and resulting government investments towards enhanced R&D collaborations. However, these increased investments have had difficulty in producing effective public and private sector linkages, resulting in a significant innovation gap — remaining a fundamental challenge for the government.  The difficulty is that the availability and distribution of research funds are being increasingly tied to science and technology strategic priority areas. However, so much of what drives social change and fuels the modern economy is also derived from social sciences and humanities (SS&H) disciplines.  Companies in these sectors (e.g. communications, design, management, law etc.) have complex challenges and those that derive their primary knowledge inputs from the social science and humanities disciplines account for about $700B (58%) of GDP output, and yet a significant proportion of the research dollars are going to science and technology (S&T) companies that support about $431B (42%) of GDP outputs.  Therefore, if Canada is going to remain competitive in the new knowledge economy we must heighten collaborative research and development across a broader suite of research areas.

I also described York’s innovation and partnership strategy, taking a broader focus, contributing not only our S&T research but also leveraging the work of our SS&H scholars. York has established significant and sustainable community and regional innovation programs with partners in York Region. The Region is the 6^th largest municipality in Canada, with a population of 1.2M and growing.  It also serves as the centre-point of Canada’s leading technology corridor, poised to contribute as a significant innovation and commercialization hub given its strong base of IT/software and medical devices/biotechnology companies.  It is home to nearly 50% of the medical device technology companies in Canada.   In order to capitalize on this, York is currently working actively towards the formation of a unique consortium, establishing a Convergence Centre for the development of next generation medical device technologies in Markham.  York has also been working with a variety of regional partners on the social innovation side, ranging from the United Way of York Region, regional hospitals, and regional school boards.  In order to be able to grow and foster new and varied collaborations, a new unique innovation facility that York is developing as part of the convergence centre “Innovation York”.  It will have the capability of both mobilizing social innovation research as well as S&T innovation and commercialization. This infrastructure will actively promote research opportunities that build on the research strengths across the university, address the needs of our partners and support the incubation of the most promising innovative ideas. 

The key to fostering ultimate research success, whether in the public or private sector, science & technology or the social sciences & humanities is a shared philosophy and belief in the value of true collaboration and its power to open new areas of opportunity and innovation.

Posted in Commercialization, General, Innovation, events
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Michael McClurg is a JD candidate at Osgoode Hall Law School and is taking the Patent Law course.

In late 2009, the United Nations Secretariat of the Permanent Forum on Indigenous Peoples released its report on the State of the World’s Indigenous Peoples (“the UN report”). The report is intriguing in that it focuses a significant amount of attention on the effects of the patents regime. The report is replete with criticisms of the lack of respect given to traditional knowledge of indigenous peoples (“TK”).

As law students it is easy in studying the technicalities and legal nuances of the patents regime to lose sight of the larger picture. In the social bargain between the inventor and society at large that forms a patent (i.e. the granting of a temporal monopoly on a particular invention in exchange for the disclosure of the invention and its underlying technical foundation), TK is often left unacknowledged and unrewarded. As the push for greater international streamlining of the patent process (through instruments such as the PCT) gains momentum, there is a risk that TK and Indigenous peoples will be further marginalized. The threat to Indigenous peoples presented by the patents system stretches beyond the injustice of not receiving reward and acknowledgement for the benefits of TK; The UN report highlights that foreign patents granted over TK can also greatly affect an Indigenous community’s cultural practices involving dubiously patented TK as well as control of resources that are material to practicing that TK. In light of the UN report this blog entry seeks to briefly escape the often strict “black-letter” technical analysis of patent law that law school engages us in and encourage us to consider the broader effects of patent law on Indigenous peoples and TK.

One of the most striking aspects of the UN report is the sheer scale on which TK has been expropriated. The report cites a study indicating that there are over 130 patents issued for clinically useful therapeutic drugs derived from plants of which at least 70% came to the attention of pharmaceutical companies due to their usage by Indigenous peoples. The study cited went on to show that over 7000 patents had been granted for the unauthorized use of TK or the misappropriated use of Indigenous medicines derived from plants (see pg. 69 of the report). A complete analysis of such unattributed exploitation is far beyond the scope of a small entry such as this, but there can be little doubt that part of the explanation lies with the devaluation of TK. As the UN report notes, this devaluation is often due to the fact that many aspects of TK are typically not considered to meet the test of novelty because the inventions or practices are typically old, well-known amongst Indigenous communities, and often unattributable to one particular member of a population. Thus when Indigenous peoples do attempt to patent TK they often fail.

On the flip-side of this, the legal interpretation given to the requirement of novelty can also allow non-Indigenous people to “discover” and patent aspects of Indigenous TK. The Canadian requirement of novelty for example, is that an invention not be published in a Canadian or other international publication or be otherwise disclosed more than one year prior. Under this requirement there is very little that would prevent someone who has travelled to an Indigenous community that had not published its knowledge from receiving a patent for some form of TK. Unless the Patent Office somehow knew to check with this community in order to determine if this invention were novel, there is very little reason to suspect that the patent would not be granted. As Professor Mgbeoji notes in his book Global Biopiracy, in the UK and the US this is precisely what has happened in numerous cases in which patents have been granted for medicinal plant use. Professor Mgbeoji specifically notes that patents for Tipir and Cunani, the former used to reduce fever and the latter used to treat heart blockage, were granted to a British chemist. Both were the product of the chemist having spent time with an Indigenous community in Guyana and having been taught of the medicinal uses of the plants (at pg. 147). The way in which novelty is interpreted is a good example of where the law could use a broader perspective that takes TK and Indigenous perspectives into account.

Attempts are being made to alter the patent landscape such that TK is given more consideration and valuation. For example the UN report notes that the World Intellectual Property Organization has funded the participation of Indigenous groups in an intergovernmental committee on intellectual property which is currently drafting a set of objectives and principles. There are also attempts being made by developing countries to ensure that TK is properly acknowledged. For example, India is well-known for successfully fighting for the revocation of a European patent on turmeric, a traditional Indian medicine used in curries. More recently the Indian government has launched a project dubbed the Traditional Knowledge Digital Library which is to act as a digital encyclopaedia of millennia-old traditional Indian medicines and treatments. The idea will be to prevent the expropriation of TK by demonstrating that, despite what some patent applicants may claim, such “inventions” are hardly novel.

As patent law becomes more globalized and as biotechnological innovations create opportunities for life-forms such as plants to be subject to patents, it is increasingly important for students of patent law to consider the value of TK and to ensure that Indigenous peoples are not overlooked.

For further information on this topic see:

Marie Battiste and James (Sa’ke’j Youngblood Henderson, Protecting Indigenous Knowledge and Heritage: A Global Challenge (Saskatoon: Purich Publishing, 2000).

Ikechi Mgbeoji, Global Biopiracy: Patents, Plants, and Indigenous Knowledge (Vancouver: University of British Columbia Press, 2006).

Posted in Cross Border Issues, Patentability, Patents
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