Dimock Stratton LLP

New Federal Court rules on expert witnesses in force

Thu, 02 Sep 2010 00:00:00 EDT

The previously-published amendments to the Federal Courts Rules relating to expert witnesses and procedural amendments came into force on August 3, 2010.

The amendments to the Rules include a number of changes to expert witness practice in court, including:

an expert Code of Conduct has been added as a Schedule to the Rules;
experts are required to identify their proposed area of expertise;
the Court is provided with discretion to require that experts confer in advance of the hearing;
the Court maintains an overriding discretion to order an expert witness to testify where the judge deems it necessary, even where the parties have consented to the evidence being read into the record or otherwise introduced;
in actions, the Court has the discretion to require that some or all of the experts testify as a panel (otherwise known as "hot-tubbing"), although experts will only be allowed to pose questions to each other with leave of the Court.

The Rules amendments regarding procedural matters address issues such as personal service on the Crown, the timing of filing of affidavits in applications, and providing the Courts Administrator with the flexibility to transmit orders by electronic means.

IPIC-McGill course: Understanding Patents

Tue, 27 Jul 2010 00:00:00 EDT

Mark B. Eisen will be speaking on Industrial Designs at this year's IPIC-McGill course on July 27th, "Understanding Patents - The Beginning: Obtaining a Patent".

Dimock Stratton congratulates Geoff Mowatt on passing the Patent Agent exams

Thu, 15 Jul 2010 00:00:00 EDT

Dimock Stratton would like to congratulate Geoff Mowatt on recently passing the Patent Agent exams.

The exams are held annually by CIPO in April and test candidates on the practice of drafting and prosecuting patent applications before the Patent Office, as well as preparing opinions on the validity and infringement of patents.

US Supreme Court finally issues business method patent decision

Tue, 29 Jun 2010 00:00:00 EDT

The United States Supreme Court has issued its ruling in In Re Bilski on the patentability of business method patents. The Court affirmed the lower court's ruling and held that the challenged claims of the Bilski patent application were not directed to patentable subject matter because they claimed an abstract idea. The Bilski patent application was directed to the concept of hedging risk and the application of that concept to energy markets.

The Court considered the claims of the Bilski application in the context of the 'machine or transformation' test used by the en banc U.S. Court of Appeals for the Federal Circuit, the patentability of 'business methods' as a category, and patenability of an abstract idea, and ruled unanimously that the Bilski application was not patentable subject matter as it was directed to an abstract idea. The Court criticized the lower court's "exclusive" use of the machine-or-transformation test, but noted it was a useful tool for determining patent eligibility. Through concurring opinions, a minority would have categorically excluded business methods from patentable subject matter.

The opinion of the Court (PDF) is available from the Supreme Court website.

Recent and upcoming appearances by DS Lawyers

Mon, 28 Jun 2010 00:00:00 EDT

Recent Articles – April to June 2010

Mee Ling Wong wrote "Court blocks attempt to stall patent lawsuits through re-examination" (page 11) for The Lawyers Weekly Intellectual Property Focus section on May 7th.

Henry Lue and Jennifer Ko co-authored "Google AdWords dodges liability for trademark infringement" (page 13) for The Lawyers Weekly Information Technology Focus Section on June 4th.

Recent Appearances – May to June 2010:

Both Angela M. Furlanetto and David M. Reive spoke separately at the 9th Edition: Drugs Patents in Canada on May 6-7.

Jennifer Ko moderated the IPIC Young Practitioners' Committee webinar " Networking in a Digital Age: Social Media for Professionals" on May 11th.

Mark B. Eisen moderated the IPIC - European Patent Practice Seminar on May 11th and spoke at the IPIC Advanced Patent Claim Drafting Course on May 12th in Toronto.

Bruce Stratton spoke at the Federated Press conference- 3rd Patents as a Competitive Strategy on "Developments in International Patent Law" in Toronto on May 12th.

Bruce Stratton spoke at the CBA Advocacy in IP Matters - Motions that Matter seminar on "Achieving "Zen" During Discovery" in Ottawa on May 13th.

Ronald E. Dimock spoke at CIPO ( Patent Examiners) in Gatineau on June 21st on the "Recent Developments in the Patent Law".

Upcoming Appearances and Speaking Engagements – July to September 2010

Mark B. Eisen will be lecturing on Understanding Patents An introductory course specifically on "The Beginning: Obtaining a Patent" at this year’s IPIC-McGill course on July 27th in Montreal.

Ron Dimock Speaking to Patent Examiners of CIPO

Mon, 21 Jun 2010 00:00:00 EDT

Ronald E. Dimock will be speaking in Ottawa to the patent examiners of the Canadian Intellectual Property Office on recent developments in the patent law.

Parliament introduces new copyright reform bill

Fri, 04 Jun 2010 00:00:00 EDT

This week, Parliament tabled Bill C-32, the most recent attempt to update the Copyright Act. Previous government attempts to amend the Copyright Act fell victim to prorogation and a non-confidence motion.

This new bill, which will be scrutinized by the various stakeholder groups in the coming months, addresses a wide range of issues including fair dealing, performers' and photographers' rights, torrent search services, and format shifting. Most notably, the proposed legislation includes provisions for digital locks and makes the sale or importation of tools for breaking digital locks illegal.

Bill C-32 is available from the Parliament of Canada website.

CIPO, USPTO announce initiatives to accelerate patent examination in select cases

Wed, 26 May 2010 00:00:00 EDT

Both the Canadian and U.S. patent offices have recently announced plans to provide select applicants with the opportunity to expedite examination of their patent applications.

CIPO has announced that it is developing an initiative to expedite applications directed to "green" technology. Unlike the current process for expediting examination, which requires the payment of a fee with the request to expedite, the proposed changes to the regulations would waive the fee, but require a declaration from the applicant that the application relates to technology that, if commercialized, could help to resolve or mitigate environmental impacts or conserve the natural environment and resources. It is expected that proposed amendments to the Patent Rules will be published in the fall for consultation.

The USPTO had already implemented a pilot program to promote green technologies through expedited prosecution. Now, to assist in clearing the examination backlog in all technology areas, the USPTO has announced that it would expand its pilot exchange project, in which qualifying applicants may receive expedited examination of one currently pending application in exchange for withdrawing another currently pending, as yet unexamined, application. It is claimed that this program will provide an incentive to applicants to withdraw applications that may no longer be important to them.

Offering music previews over the Internet is fair dealing, FCA rules

Tue, 25 May 2010 00:00:00 EDT

While rightsholders await the new copyright reform bill expected to be introduced in Parliament in the near future, the Federal Court of Appeal issued a brief decision on the subject of fair dealing, finding that brief previews of sound recordings delivered over the Internet qualified as "research" within the scope of s. 29 of the Copyright Act.

This decision arose in the context of a Copyright Board decision regarding a tariff submitted by the Society of Composers, Authors and Music Publishers of Canada (SOCAN) in respect of the offer made to consumers to permit listening to previews of musical works, usually over the Internet. The Board had found that this offer, involving excerpts of thirty seconds or less of the work, fell within the scope of fair dealing for the purpose of "research or private study" and was therefore not infringement. SOCAN sought judicial review of this decision.

The Board had actually raised the issue of previews and fair dealing on its own initiative without hearing from any of the affected parties on the issue. The Court of Appeal agreed that the parties ought to have been heard; but notwithstanding this omission, found that the Board's decision was not unreasonable or in error. It was not unreasonable to give "research" in s. 29 its primary and ordinary meaning, as the consumer is attempting to locate a desired copyrighted work, and wishes to ensure its authenticity and quality before obtaining it. Listening to previews assists in this investigation. While the previews do assist in increasing sales and profits, from the point of view of the person for whom they are intended, they assist the consumer to find the desired musical work.

The Board had assessed the amount of the dealing with the copyrighted work as the length of the individual preview in proportion to the length of the work, and found that the amount was modest and fair in view of the user's objective of researching. On review, SOCAN proposed that the amount of the dealing should be measured in terms of the aggregate number of users and previews, and the resulting number of hours of uncompensated music. This means of assessing the amount of the dealing raised additional questions about the Board's fair dealing analysis which the Court of Appeal found better to leave for another day, in view of the fragmentary nature of the available information. Under the circumstances, the Board's decision was not unreasonable or in error, and the judicial review was dismissed.

Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2010 FCA 123

CBA IP Judges' Dinner

Thu, 13 May 2010 00:00:00 EDT

The annual CBA IP Judges' Dinner, provides a unique opportunity for members of the bench and IP bar to meet socially. This year, the profession will pay tribute to the accomplishments of The Honourable Alice Desjardins of the Federal Court of Appeal and The Honourable Allen Linden of the Federal Court of Appeal.

Dimock Stratton will be hosting their annual after-dinner reception at the Fairmont Château Laurier for dinner attendees.