Canadian patent examiners will now be assessing patent applications under a new guideline which applies a four-part test on obviousness.  This flows from the 2008 Supreme Court of Canada decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61. The following test is being applied pursuant to CIPO’s new Practice Notice on Obviousness - November 2, 2009:

1. Who is the “person skilled in the art” and what is the relevant common general knowledge of that person?
2. What is the inventive concept of the claim contained in the application?
3. What difference, if any, exists between the prior art and the inventive concept contained in the application?
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Related reading: SCC Decision on Selection Patents

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Richard Stobbe’s article “Tips and Trends in CleanTech Licensing“  is published in this week’s edition of the Lawyer’s Weekly (Vol. 29, No. 28; November 27, 2009).  It discusses the issues of:

• pre-license preparation;
• licensing;
• improvements and enhancements;
• the regulatory environment; and
• patents and litigation.

Click here for the PDF version.

Richard is a member of the LES Clean Tech Committee, High Tech Sector and is currently the Chair of the Calgary Chapter of Licensing Executives Society. 

Related Reading: the Lawyer’s Weekly site.  

Calgary - 11:00 MST

In a story that reads like a law-school exam, a company with a German trade-mark took a California man to arbitration to try and win the domain name project.me, which is registered under the rules for the country code top-level domain for Montenegro.  iPhone app developer Project.me (the German company) recently lost at arbitration before the World Intellectual Property Office Arbitration and Mediation Centre.  The decision project.me GmbH v. Alan Lin Case No. DME2009-0008 is noteworthy for several reasons:

1. The German company failed primarily because the domain name in question was applied for before the company was incorporated or the trade-mark was applied for. The California registrant who initially registered the domain name couldn’t have registered it to take advantage of the German company’s brand, since the German company didn’t exist at the time.

2. Domain name arbitration decisions typically ignore the suffix (.com, .ca or in this case .me) but this decision notes that “a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”  Future domain name disputes may take this reasoning into account.

3. This case illustrates the international nature of intellectual property disputes and shows why it’s important to get advice on trade-marks, branding, and domain name strategies.

Calgary - 11:00 MST

We’re launching applaw.ca.™

Businessweek’s recent article “Inside the App Economy“ shows that mobile applications are evolving from a geek-niche to a powerful industry sector. Not convinced? Consider the case of Zynga, a US app developer that has gone from zero to $100 million in revenues in just 2 years. Canadian app developers are also ringing up sales through the iTunes store.  Fortunes are being made 99¢ at a time. As more platforms, smartphones and mobile devices come on-stream - including BlackBerry, Palm, Android, Google, Yahoo, Facebook - the industry will continue to grow.

This brings us to the emerging body of “app law” that is being articulated by the courts, as developers jostle for position in the marketplace. Richard Stobbe will be presenting to the Vancouver iPhone Forum on November 24th on the subject of app law and intellectual property issues in Canada.  Bookmark applaw.ca™ on your iPhone, BlackBerry, Palm or other mobile device for continuing updates in this field.

Calgary - 09:45 MST

In a recent US lawsuit Tricome v. eBay, Inc., 2009 WL 3365873 (E.D.Pa. Oct 19, 2009), a user sued eBay in Pennsylvania and eBay invoked the “forum selection clause” in its online agreement.  That clause specifies that disputes under the agreement have to be brought in California, eBay’s home turf.

The court decided that the clause was not shocking or unreasonable, the user had a choice of other service providers and was not forced into this agreement, and eBay did not use any “high pressure tactics” to get the user to agree. The court also recognized that eBay, as an international business, has a legitimate interest in controlling where it will litigate disputes. 

In Canada, there is also a growing line of cases establishing that “forum selection clauses” will be upheld. For example, see: Wembley Marketing Ltd. v. Itex Corporation, 2008 CanLII 67425 (ON S.C.), a recent Ontario decision.  This provides additional comfort for online retailers, licensors and service providers that such clauses in online user agreements will be upheld when they are well-drafted.

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There is no shortage of intellectual property stories in the media. What used to be a “special interest” story is now mainstream news. Here are a few recent stories worth noting:

• The Globe and Mail^® has posted a podcast on How to protect your intellectual property from the Canadian entrepreneurs at i4i who locked horns with Microsoft. They discuss the lessons learned. (Related post: Canadian Company Shuts Down Microsoft Word)

• BusinessWeek^® Magazine has a story on Intellectual property protection in China.  Intellectual property rights protection is a hard-fought battle in China, but western companies see Chinese domestic disputes as a catalyst for better enforcement.  

Calgary - 10:45 MST 

ICANN announced on Friday that it has approved - in principle - the creation of domain names made up of non-Latin characters. The protocols that run today’s internet recognize domain names and internet addresses made up of numbers and A-to-Z Latin characters. ICANN’s “Fast Track Process” will launch on November 16, 2009, permitting countries to apply for non-Latin domain names: think Korean, Chinese, Arabic and Hindi. Once the technical wrinkles are ironed-out (and web-browsers catch up), the new internationalized domain names will be implemented, and registries will start accepting registrations.

For Canadian businesses, this development is worth watching, as it presents an opportunity to carve out a local presence in overseas markets.  

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