1 Canada May FacilitateAccess of Third World

Countries to AIDS Drugs

1 Government Intends to

Resolve Small EntityPatent Fees Issue

1Functional Trade-Marks

Unenforceable

2Update on Canadian

Domain Name Dispute Resolution

3Federal Court Grants Rare

Summary Judgment inPatent Case

3Interlocutory injunctions— The British Columbia

Approach

4 No More

"Canadian Champagne"?

5Reviewing Your

Intellectual PropertyPortfolio

6Notes

Canada May Facilitate Access of Third WorldCountries to AIDS DrugsAgainst the background of the World TradeOrganization Decision of August 30, 2003, thatwould permit companies to obtain a patent licence tomanufacture and export advanced drugs for treatingepidemics such as AIDS, malaria and tuberculosis topoorer countries, the Canadian government hasannounced its intention to address the specific issueof AIDS. In particular, the government has said it willenact amendments to the Patent Act that would per-mit the export of AIDS drugs to developing nationsby Canadian generic companies free of infringementof Canadian patents. The legislation may contain pro-

visions to guard against the re-export of such drugsto other markets. The government has stated itsintention to expedite the legislation.

Canada’s Research-Based Pharmaceutical Companies(Rx&D) has declared its support for the WTODecision. The Canadian Generic PharmaceuticalAssociation (CGPA) has recently released a statementindicating that it is “very pleased” with the govern-ment’s response to this issue.

A. David Morrow, Ottawa

Government Intends to Resolve Small EntityPatent Fees IssueIn the June 2003 issue of IP Perspectives, we reportedon the decision of the Federal Court of Appeal inBarton No-Till v. Dutch Industries. In that case, it washeld that, if a small entity maintenance fee is incor-rectly paid where a large entity maintenance fee wasin fact required, and the time for reinstatement haspassed, the patent is irrevocably lapsed, and the pay-ment of a “make-up” fee is not possible. This holdingputs at risk an unknown, but possibly significant,

number of Canadian patents. On August 8, 2003, theGovernment of Canada announced its intention toamend the Patent Act and Regulations in order toaddress this issue. The form that the amendments willtake has not been announced, and will be the subjectof consultations. However, it is expected that they willinclude some sort of provision that will permitretroactive make-up payments.

A. David Morrow, Ottawa

Functional Trade-Marks Unenforceable Kirkbi AG v. Ritvik Holdings Inc., July 14, 2003, 2003 FCA 297.

On July 14, 2003, the Canadian Federal Court ofAppeal rendered its decision in Kirkbi AG v. Ritvik

Holdings Inc., known as the “LEGO” case. The FederalCourt of Appeal had to decide if a mark whose prin-cipal characteristics are functional — in this case the“LEGO Indicia trade-mark” — can constitute a distin-guishing guise and therefore a valid trade-mark.

The LEGO Indicia trade-mark relates to the shape ofthe upper surface of a 2"x 4" LEGO brick. The TrialDivision had concluded that the LEGO Indicia is pri-marily functional.

In dismissing the appeal, the Federal Court of Appeal,in a 2-1 decision, reaffirmed that a trade-mark cannotbe valid within the meaning of the Trade-marks Act if it

F E B R U A R Y 2 0 0 2O C T O B E R 2 0 0 3

I N T E L L E C T U A L P R O P E R T Y & T E C H N O L O G Y L A W N E W S L E T T E R

S M A R T & B I G G A R / F ET H E R S T O N H A U G H

PERSPECTIVESI P

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

OCTOBER 20032

Alain Adam

is primarily functional, namely, if its functional charac-ter relates to the wares in association with which it isused. The Federal Court of Appeal ruled that theLEGO Indicia, like any primarily functional trade-mark,does not give its owner the exclusive right to use thismark in association with those wares that are relatedto the functionality, i.e. sets of building blocks.

Following a detailed review of the jurisprudence onthe matter, the Federal Court of Appeal concludedthat the functionality doctrine applies in Canada toboth registered and unregistered trade-marks. It stat-ed that the underlying policy of the functionality doc-trine is to prevent granting, through the guise of atrade-mark, an exclusive right to a function. Suchexclusivity, it reiterated, could be obtained onlythrough patent protection. A functional trade-mark

holder would receive an indefinite monopoly overthe associated wares, whereas a patent holder wouldenjoy only a limited monopoly. It would otherwise beunfair for the public and for competitors to enabletrade-mark holders to obtain indirectly by a trademark what they cannot obtain directly by a patent.

In a strong dissent, Pelletier, J.A. expressed the opin-ion that while functionality is a bar to registrability, it isnot a defense to an action of unfair competition underthe Trade-marks Act where the subject matter is beingused deceptively, as was the case here.

It is not known if the case will be appealed to theSupreme Court of Canada.

Alain Adam, Ottawa

Jonathan N. Auerbach

Update on Canadian Domain Name Dispute ResolutionOn June 27, 2002, the Canadian Internet RegistrationAuthority (CIRA), the not-for-profit corporation man-dated to operate the Canadian dot-ca top-leveldomain name, announced the institution and imple-mentation of the CIRA Dispute Resolution Policy(CDRP) [See the June 2002 issue of IP Perspectives].The purpose of the CDRP is to give trade-mark andtrade name rights holders, relatively quick, inexpen-sive and fair methods for dealing with bad faith regis-trations of dot-ca domain names.

The CIRA process shares many features of theUniform Dispute Resolution Policy (UDRP) used toresolve disputes relating to dot-com domain names.

There are, however, a number of differences whichexist between the two dispute resolution processes.A complainant must be a Canadian resident, or theowner of a trade-mark registered in Canada. TheCDRP allows owners of unregistered trade-marks andtrade names to bring a complaint, not only owners ofregistered trade-marks. Disputes under the CDRP areresolved by a three-person panel, except in caseswhere the domain name registrant chooses not toparticipate. In addition, the CDRP affords a certainamount of protection for registrants of dot-ca domainnames against disputes that are commenced unfairlyand without colour of right. A complainant that bringsa complaint against a registrant in bad faith could besanctioned to pay up to $5,000 to defray the costsincurred by the registrant.

Similar to the UDRP, the CDRP requires the com-plainant prove that:

1. the registrant’s dot-ca domain name is confus-ingly similar to the complainant’s trade-mark ortrade name;

2. the registrant has no legitimate interest in thedomain name; and

3. the registrant has registered the domain namein bad faith.

At present, there have been thirteen decisions ren-dered under the CDRP. In eight of the decisions, thepanel has found in favour of the complainant. In fourcases, the registrant has succeeded in maintaining itsregistration. In the remaining case, the complainantsought the transfer of ten domain names but onlysucceeded in causing nine of them to be transferred.In no case has the panel sanctioned a complainant forbringing a complaint in bad faith.

Though it is a bit too early to draw any conclusionsfrom these first few decisions, it appears that someCanadian panelists are taking a “Made in Canada”approach to the resolution of dot-ca domain namedisputes. All decisions released under the CDRP canbe found on CIRA’s website at www.cira.ca.

Jonathan N. Auerbach, Ottawa

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

OCTOBER 20033

Denise L . Lacombe

In a judgment issued on July 3, 2003, Mr. JusticeGibson of the Federal Court, Trial Division, grantedsummary judgment in a patent validity and infringe-ment case, despite conflicting expert evidence; seeTrojan Technologies, Inc. v. Suntec Environmental Inc.

[2003 FC 825]. The patent in suit related to an ultravi-olet fluid purification device.

Summary judgment on issues of patent validity orinfringement is rare, especially where there is con-flicting expert evidence.

The Canadian Federal Court Rules permit summaryjudgment in cases where there is no genuine issue fortrial or where the only genuine issue is the amount towhich the moving party is entitled or is a question oflaw. Furthermore, even where there is a genuine issue,the Court may still grant summary judgment if theCourt is able to find the necessary facts on the basisof the evidence before it. Each case must be inter-preted in its own context and if the necessary factscannot be found, or if there are serious issues of cred-ibility, the matter should go to trial.

The first step in determining either infringement orvalidity is to construe the claims of the patent. InTrojan Technologies, the evidence of two experts, one

for each party, was considered on the issues of con-struction, validity and infringement.

When concluding that the necessary facts could befound to support summary judgment, and that therewas no serious issue of credibility, the judge stated:“While I find the affidavit evidence of both experts tobe credible and trustworthy, I prefer the evidence ofTrojan’s [plaintiff and moving party] expert on each ofthe critical issues and I am satisfied that having theevidence of the experts presented at trial where a trialjudge would have an opportunity to observe theirdemeanour and their reactions under cross-examina-tion would not in all likelihood affect the end result inany significant manner.”

Although the case may be viewed as an encourage-ment to seek summary judgment in patent cases,some caution is required since the decision has beenappealed. The Federal Court of Appeal has stayedportions of the Order and has expedited the appeal,which will be heard November 12, 2003 [2003 FCA309]. In granting the stay, the Court of Appeal foundthat a serious issue was raised by the treatment of theconflicting expert evidence.

Denise L. Lacombe, Toronto

Federal Court Grants Rare Summary Judgment inPatent Case

Interlocutory injunctions (known in other jurisdic-tions as preliminary injunctions or temporaryrestraining orders) can be powerful and importanttools for intellectual property ("IP") owners, as theyprovide a means for right holders to prevent contin-ued infringement of their rights pending trial.

The Supreme Court of Canada has held that in orderto obtain an interlocutory injunction, a plaintiff mustsatisfy the following three-pronged test:

1. there is a serious issue to be tried;

2. it will suffer irreparable harm if an interlocu-tory injunction is not granted; and

3. the balance of convenience favours the plain-tiff.

In recent years, the Federal Court of Canada hasbeen very reluctant to grant interlocutory injunc-tions in IP cases, based on a number of Federal Courtof Appeal decisions which set a very high bar for theevidence of irreparable harm. The result is that fewerIP rights holders seek injunctive relief in the FederalCourt.

In contrast, the Supreme Court of British Columbia,which has concurrent jurisdiction with the FederalCourt of Canada on most IP issues, has a differentand arguably lower threshold with respect to findingirreparable harm.

Our Vancouver Office was recently successful inobtaining an ex parte interlocutory injunction in a trade-mark dispute in the British Columbia Supreme

Interlocutory injunctions — The British ColumbiaApproach

Karen F. MacDonald

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

OCTOBER 20034

Court, on behalf of a well-known United Statesbased manufacturer of nutritional and dietary sup-plements, against its previous distributors inCanada. The following evidence of irreparable harmwas accepted by the Court as being sufficient toobtain an interlocutory injunction:

1. evidence that there was a lack of control bythe Plaintiff over the quality of the goods,which could result in a loss of goodwill in theirtrade-marks;

2. evidence of loss of actual and potential cus-tomers by the Plaintiff, which would flow fromthe Plaintiff losing control over the characterand quality of the goods;

3. evidence regarding the inability of the Plaintiffto re-establish a market presence in Canadathrough a new distributor;

4. evidence showing that there would be a lossof distinctiveness of the Plaintiff’s trade-marks based on concurrent use by two partiesin the market place; and

5. evidence of the possibility of general confu-sion in the marketplace.

Obtaining the injunction led to the settlement of thecase.

Where it is appropriate from a jurisdictional and evidentiary perspective, IP owners may wish to con-sider the possible advantages of bringing theirinfringement action in the Supreme Court of BritishColumbia, or in the Courts of the other provinces,which also may have less exacting standards forirreparable harm than the Federal Court.

Karen F. MacDonald, Vancouver

No More “Canadian Champagne”?In June, 2003, Canada and the European Unionannounced that they had entered into an agreementthat will commit the parties into protecting eachothers’ geographical indications for wines and spir-its. The agreement has yet to be ratified by theEuropean Council and the Canadian Parliament, andit is not known when ratification will occur.However, the main effect of the agreement appearsto be to phase out the generic use in Canada of anumber of European geographical indications forwines. While the terms of the agreement and howthey will dovetail with Canada’s existing lawsregarding the protection of geographical indica-tions, which are incorporated into the Canadian

Trade-marks Act, remains unclear, the intent appearsto be that Canadian wine makers will cease use ofcertain French geographical indications in threestages. In the first stage, the use by Canadians ofBordeaux, Chianti, Claret, Madeira, Malaga, Marsala,Medoc, and Mosel will cease as soon as the agree-ment comes into force. Since these indications arenot presently used by Canadian wine makers, thisparticular provision is of no more than academicinterest. The use of Bourgogne/Burgundy,Rhin/Rhine and Sauterne/Sauternes will cease byDecember 31, 2008. Since the use of these geo-graphical indications by Canadians is today virtuallyunknown, this provision is also of no great signifi-

cance. Finally, the use of Chablis, Champagne,Port/Porto and Sherry will cease after December 31,2013. These geographical indications are currentlyin widespread use by Canadians as part of genericwine terms like “Canadian Chablis” and “CanadianChampagne”. This therefore appears to be the prin-cipal real effect of the agreement.

The agreement also creates a mechanism for theprotection of certain Canadian geographical indica-tions in Europe, and provides for certain reciprocalagreements regarding production and quality stan-dards for wines and spirits.

The Canadian wine industry has been movingtoward its own system of protected geographicalindications, together with a voluntary quality controlsystem, and its use of foreign geographical indica-tions has been diminishing over time. This agree-ment will impose a legal framework over theseexisting trends.

Presumably, the Canadian legislation putting theagreement into effect will have the effect of prohibit-ing the sale in Canada of wines from other countriesthat use the European geographical indications asgeneric or semi-generic terms, for example, CaliforniaBurgundy or New York Champagne.

A. David Morrow, Ottawa

A. David Morrow

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

OCTOBER 20035

L. Cather ine Eckenswi l ler

Reviewing Your Intellectual Property PortfolioA company’s intellectual property portfolio is one ofits most valuable assets and, as such, it should beproperly maintained and well managed. Proper main-tenance requires that the intellectual property port-folio be reviewed on a regular basis and updated inview of budgetary constraints and marketing strate-gies. This article summarizes some aspects of such areview and certain considerations that should beaddressed in conducting it.

Maintaining An Inventory

Every business should have an inventory of its intel-lectual property assets which is complete and up-to-date. The inventory should include records of all ofthe technologies owned by the business and shouldinclude such relevant information as all patents,patent applications, industrial design registrations,invention disclosures and trade secrets. Intellectualproperty which is protected by copyright should alsobe included such as software, manuals, trainingvideos and any works of an artistic nature.

Brands are an important part of a business’ intellectu-al property and the inventory should include recordsfor each brand including examples of all trade-marks,logos and business names along with the dates thatthey were first used and that any trade-mark applica-tions were filed or registered.

Finally, it’s important to maintain copies of all agree-ments to which the company is party relating to intel-lectual property, confidentiality and employmentmatters as these agreements are important in estab-lishing ownership of, and rights to use, intellectualproperty.

Reviewing Patents and Patent Applications

The cost of obtaining patent protection around theworld is high so it’s important to ensure that budget-ary resources are allocated to those technologies,and those countries, of most relevance to the busi-ness’ current activities and future plans. Patents andpatent applications in areas of waning interest mayneed to be withdrawn or abandoned to reduce costs.Similarly, patent applications may need to be filed incountries which could become important markets.Another important consideration is the countrywhere products, and competitors’ products, are man-ufactured. Strong intellectual property protection inthese countries can be used to curtail the manufac-turing activities of infringers. Marketing, sales andmanufacturing are dynamic processes, therefore

ongoing evaluation is necessary to ensure that thebusiness’ patent strategy and its business plan arealigned.

The claims of issued patents and pending patentapplications must be reviewed on a regular basis toensure that they adequately cover important productlines, including those that are on the market now andthose that will be launched in the future. Deficienciesin this area must be addressed by amending existingapplications or filing new ones.

Confirming Ownership Issues

Nothing can be more devastating to a business thandiscovering that it doesn’t have adequate ownershipof its intellectual property due to a failure to obtainappropriate assignments or suitable contracts withemployees and third parties. A complete intellectualproperty portfolio should include documentary evi-dence of the business’ ownership of its intellectualproperty in the form of contracts with its employeesand contractors along with assignments from theinventors of each invention. This is a particularlyimportant consideration to a business seeking toattract investment since investors are becoming moreconcerned about ownership and rights to use intel-lectual property and are increasingly requiring thatdocumentary evidence be clear, complete and up-to-date.

Protecting Trade-Marks

A comprehensive intellectual property inventoryshould include samples of use of each of the busi-ness’ brands. By carefully monitoring these samples,the business can ensure that its trade-marks are beingused properly, both by itself and by third parties suchas distributors and sublicensees. Improper use oftrade-marks can result in loss of trade-mark rights anda consequent inability to enforce trade-marks againstinfringers. Accordingly, it’s very important that theuse of the trade-marks be consistently monitored andcontrolled. If variations of trade-marks are beingused, this use must be corrected or, alternatively, newapplications must be filed for the variations in use.

Samples of trade-mark use are also important shouldconflicts arise with infringers. In these circumstances,it may be necessary to provide evidence that thebusiness has properly used its trade-marks. This willnecessitate providing examples of how each trade-

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

OCTOBER 20036

NotesAnnouncements

Nicholas H. Fyfe has recently been appointed a mem-ber of the editorial board of Trademark World.

Steven B. Garland has been named Vice-President ofthe Intellectual Property Institute of Canada (IPIC). Hehas also been recently been named Chairman of Patent

World’s editorial board.

Euan R. Taylor is currently working in Beijing at theoffices of China Sciences Patent and TrademarkAgents Ltd., from November 1 - 30, 2003.

We are pleased to announce that the following indi-viduals have joined the Firms:

Timothy H. Briggs has joined our Vancouver office. Mr.Briggs has a B.Sc. in Chemical Engineering. He also hasan LL.B. from the University of Alberta and his J.D.from the University of Tulsa. He was called to theOkalahoma Bar in 1985, the California Bar in 1997, andthe British Columbia Bar in 2003.

Alakananda Chatterjee has joined our Vancouver office.She has a B.A. in Biology from Smith College and aPh.D. in Biochemistry from the Sackler School ofBiomedical Sciences at Tufts University. Ms. Chatterjeeearned her J.D. from Suffolk University Law School.She was called to the Massachusetts Bar in 2003.

Roger T. Gallant has joined our Montreal office. Dr.Gallant has a B.Sc. (Chemistry) the University of PrinceEdward Island and an M.Sc. in Theoretical/Computational Chemistry from the University ofOttawa. He also has an M.B.A. from Wilfrid LaurierUniversity and a Ph.D. in Organic Chemistry from theUniversity of Western Ontario.

Daniel C. Smith joined our Montreal office. Mr. Smithhas a B.Eng. in Mechanical Engineering from McGillUniversity.

Mark S. Starzomski has joined our Ottawa office. Mr.Starzomski has a B.Eng. in Electrical Engineering fromthe Technical University of Nova Scotia and an M.A.Sc.in Electrical Engineering from DalTech DalhousieUniversity. Mr. Starzomski is a Registered ProfessionalEngineer with APENS.

Euan R. Taylor has joined our Vancouver office. Dr.Taylor has a B.A. in Natural Sciences from theUniversity of Cambridge and a Ph.D. from theUniversity of London. He received his LL.B. from theUniversity of British Columbia and was called to theBritish Columbia Bar in 1998. Dr. Taylor is also aRegistered Trade-mark Agent.

Nick P. Toth has joined our Vancouver office. Mr. Tothhas a B.A.Sc. in Electronics Engineering from SimonFraser University and an LL.B. from the University ofVictoria. He was called to the British Columbia Bar in2003.

David M. Walters joined our Ottawa office. He has aB.Eng. in Electrical Engineering from MemorialUniversity and is a Registered Patent Agent.

We are pleased to announce that Scott A. Beeser andKavita Ramamoorthy of our Toronto office have beencalled to the Ontario Bar, and Timothy H. Briggs, David

A. Gileff and Nick P. Toth of our Vancouver office havebeen called to the British Columbia Bar and are nowassociates with the Firms.

We are pleased to announce that Jennifer L. Ledwell,Kelly L. Miranda and Jeremy E. Want of our Ottawa

mark has been used over time in such places asadvertisements, labels, packaging and invoices.

The use of trade-marks by distributors, sales agents,franchisees, sublicensees or other third parties mustbe governed by appropriate licensing agreements. Afailure to ensure that proper licensing agreements arein place can result in a loss of trade-mark rights.Accordingly, each of the licensing arrangements withsuch parties should be examined to ensure that ade-quate licensing agreements are in place.

As it should be clear from the points mentionedabove, reviewing your company’s intellectual proper-ty portfolio is not a single task that can be carried outon a one-time basis. Inventions, patents, patent appli-cations, trade-marks and intellectual property agree-ments must be reviewed on a regular basis to ensurethat intellectual property assets are adequately pro-tected and that budgetary resources are allocatedeffectively.

L. Catherine Eckenswiller, Ottawa

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

OCTOBER 20037

office, as well as Mark G. Biernacki, Colin C. Climie, Peter

A. Elyjiw and Denise L. Lacombe of our Toronto officeand Trina K. Sarin of our Montreal office have recentlypassed the Canadian patent agent examination andare now registered patent agents.

Seminars and Presentations

Euan R. Taylor taught a course to visiting Chinese taxofficials entitled “Canadian Intellectual Property Law &Related Tax Issues” held at Simon Fraser University inVancouver, July 28 - August 1, 2003.

Steven B. Garland lectured at the International &Comparative Intellectual Property Law Program forProfessionals, held at St. Peter’s College, OxfordUniversity, July - August 2003.

Matthew Zischka was the Program Director, as well as afacilitator in several tutorials and lecturer on the topicof patent claim drafting, for the IPIC / McGill UniversityPatents Course that was held in Montreal from August4 - 8, 2003. Sanjay D. Goorachurn participated as atutor in the course’s Patent License Workshop.

Philip Lapin was the Program Director of and presenteda paper at the week-long IPIC / McGill Universitycourse entitled “Understanding Trade-marks” held inMontreal from August 11 - 15, 2003. Christian Bolduc

tutored a workshop and A. Dennis Armstrong lecturedfor this course as well.

Christian Bolduc participated in IPIC / McGillUniversity’s “The Trade-marks Practitioner” courseheld in Montreal from August 18 - 22, 2003.

Joy D. Morrow presented on “The Impact of the NewRegulatory Standards on Establishing IntellectualProperty Claims” at an Insight Information Conferenceentitled The New Regulations Governing NaturalHealth Products held in Toronto on September 16,2003.

François Guay was a speaker at the 77th Annual IPICMeeting on the topic of “Dealing with Patents afterInsurance” held in Halifax from September 18 - 20,2003. Solomon M.W. Gold was a panel member dis-cussing Canadian patent prosecution at the samemeeting.

A. David Morrow delivered a paper on the theme of“Intellectual Property and Biotechnology in the Age ofBiotechnology: Challenges, Opportunities and Risks”

at the University of British Columbia Law SchoolInternational Conference on Intellectual Property heldin Vancouver from September 19 - 20, 2003.

Elliott S. Simcoe presented a talk on September 23,2003, entitled “What Startups Need to Know aboutPlanning an Effective IP Strategy” to The OttawaNetwork’s Venture Creations Group.

Joy D. Morrow was a keynote speaker at “The Queen’sBusiness Forum on Biotechnology” at Queen’sUniversity in Kingston on September 26, 2003.

Gunars A. Gaikis is an instructor lecturing on “DrugPatents / Notice of Compliance” in the Fall 2003 PatentCourse of Osgoode Hall Professional Development’sL.L.M. Intellectual Property program.

Steven B. Garland is teaching the Fall 2003 Patent Lawcourse at the University of Ottawa’s Faculty of Law.

François Guay spoke at the Insight Information confer-ence on “Les actifs de propriété intellectuelle dans lecadre de conventions commercials” held at the HotelIntercontinental in Montreal from October 7 - 8, 2003.

Ronald D. Faggetter spoke on the law of trade secrets atthe Center for Advanced Studies Conference onOctober 8, 2003.

Gunars A. Gaikis presented at the Pharmaceutical TradeMarks Group (PTMG) conference on the topic of“Internet Pharmacy Trade-mark issues” held inMontreal from October 8 - 11, 2003.

Gunars A. Gaikis spoke on the topic of “The LatestStrategic and Legal Developments under the NOCRegulations” at The Canadian Institute conference onPharma Patents held in Toronto on October 16, 2003.John R. Morrissey spoke on the topic of “Expanding theArsenal: Other IP Strategies to Protect and AttackPharma Patents” at the same conference.

Christian Bolduc spoke to microbiology students aboutthe patent agent profession at Université Laval inQuebec City on October 24, 2003.

Matthew Zischka will be participating in the LawSociety of Upper Canada’s Six Minute Lawyer series,speaking on “The Patent Cooperation Treaty: Changesto Come” on November 7, 2003.

The preceding is intended as a timely update on Canadian intellectual property law. In order to request a copy of any decision, paper orlegislative document, or for more detailed information or suggestions, kindly contact an author of the relevant article, or the Editor,A. David Morrow. The contents of our Newsletter are informational only, and do not constitute legal or professional advice. To obtain suchadvice, please communicate with our offices directly. To be put on the IP Perspectives mailing list, or to amend address information, pleasecall (416) 593-5514 (extn. 386).

OTTAWA

55 Metcalfe Street, Suite 900

P.O. Box 2999, Station D

Ottawa, Ontario Canada

K1P 5Y6

t. 613.232.2486

f. 613.232.8440

ottawa@smart-biggar.ca

TORONTO

438 University Avenue

Suite 1500, Box 111

Toronto, Ontario Canada

M5G 2K8

t. 416.593.5514

f. 416.591.1690

toronto@smart-biggar.ca

MONTREAL

1000 de La Gauchetière St. W.

Suite 3400

Montreal, Québec Canada

H3B 4W5

t. 514.954.1500

f. 514.954.1396

montreal@smart-biggar.ca

VANCOUVER

650 West Georgia Street

Suite 2200

Box 11560, Vancouver Centre

Vancouver, B.C. Canada

V6B 4N8

t. 604.682.7780

f. 604.682.0274

vancouver@smart-biggar.ca

EDMONTON

10060 Jasper Avenue, Suite 1501

Scotia Place, Tower Two

Edmonton, Alberta Canada

T5J 3R8

t. 780.428.2960

f. 780.423.6975

edmonton@smart-biggar.ca

www.smart-biggar.ca

OCTOBER 2003

I•P PERSPECTIVES INTELLECTU AL PROPERT Y AND TECHNOLOGY LAW NEWSLETTER

8

SMART & BIGGARFETHERSTONHAUGHBarristers & Solicitors • Patent & Trade-Mark Agents

A. David MorrowRobert D. GouldJohn R. Morrissey† ‡Thomas R. KellyJohn BochnovicJoy D. MorrowFrançois Guay*Gunars A. GaikisMichael D. Manson†Keltie R. SimRonald D. FaggetterGlen B. TremblayMark K. EvansTerry N. Kuharchuk**

J. Christopher Robinson†Helen Garwasiuk**Alistair G. SimpsonSolomon M.W. GoldBrian P. IsaacSteven B. GarlandJ. Sheldon HamiltonDavid E. Schwartz‡†Sanjay D. GoorachurnBrian G. Kingwell†Yoon KangPhilip LapinMatthew ZischkaChristian Bolduc*

Elliott S. SimcoeTimothy P. Lo+Theodore W. Sum+Marc Gagnon*L. Catherine EckenswillerNancy P. PeiKohji SuzukiChristine N. GengeKevin K. Graham Marc-André Huot*Tai W. NahmGeneviève M. PrévostEuan R. Taylor+Mark G. Biernacki

Daphne L. MaraveiStephen J. Ferance+Ekaterina K. Tsimberis*Jean-Sébastien Brière*Alain AdamArnold T. CeballosJeremy E. WantPeter A. ElyjiwColin B. GallantBenoît Huart*Colin B. IngramKaren F. MacDonald+Daphne C. RipleyBeth Trister*

Jonathan N. AuerbachDenise L. LacombeKathryn A. LipicSally A. HemmingMay Ming Lee Andris D. Macins+Kelly L. MirandaJames Jun PanKavita RamamoorthyScott A. BeeserTimothy H. Briggs+David A. Gileff+Nick P. Toth+

Barristers & Solicitors, Patent & Trade-mark Agents

CounselJames D. Kokonis, Q.C. Nicholas H. Fyfe, Q.C.

James McGrawA. Dennis ArmstrongR. John HaleySohrab Sabet

Tokuo HiramaStephan P. GeorgievJohn W. KnoxNeil S. Clark

R. Allan BrettThuy H. NguyenBrigide MattarS. Serge Shahinian

Sanro ZlobecA. Oliver StoneEmma StartPenny J. Brady

David M. WaltersColin C. ClimieJennifer L. LedwellTrina Sarin

Marc P. PépinChristian BérubéMathias DormannRonald Fernando

Sheema KhanBeverly C. Lai Michiko MizunoElizabeth A. Hayes

Susan M. TeesMarie-Hélène RochonMartin A. TremblayMark S. Starzomski

Alakananda ChatterjeeRoger T. GallantDaniel C. Smith

Patent & Trade-mark Agents

Unless otherwise indicated, the lawyers listed are members of the Law Society of Upper Canada only.

† of the British Columbia Bar also ‡ of the Alberta Bar also of the Quebec Bar also of the New York Bar also+ of the British Columbia Bar only ** of the Alberta Bar only * of the Quebec Bar only

Technical Consultants

Matthew Zischka will be a guest lecturer for theCyberlaw and Policy course at Queen’s UniversityFaculty of Law on November 11, 2003.

Ekaterina Tsimberis will be giving a talk on trade-markoppositions at a conference entitled Récentsdévelopements en droit de la propriété intellectuelleorganized by the Continuing Education Service of theQuebec Bar on November 14, 2003.

Christian Bolduc will present at the EDILEX course enti-tled Technologies I - R&D Contracts on November 6,2003, followed by a course entitled Technologies II -The Contractual Bases of Research & Developmentand Technology Transfer held on November 20, 2003.

Publications

Marc Gagnon, “La Cour suprême du Canada détermineque l’oncosouris n’est pas brevetable,” published inVol. 15 No. 3 of Les cahiers de propriété intellectuelle inMay 2003.

Tokuo Hirama is the author of an article entitled“Harvard Mouse Found to Be Unpatentable by theSupreme Court of Canada,” published in Vol. 48 No. 7of the AIPPI Journal in July 2003.

Elliott S. Simcoe and L. Catherine Eckenswiller, “AHeadline Year for IP in Canada,” Americas IP focus: pro-

tection and enforcement (supplement to Managing

Intellectual Property), September 2003.