Federal court clarifies test for patent subject matter eligibility

Federal court clarifies test for patent subject matter eligibility

By Jerome Bastien

The Federal Court has recently issued a decision in the case of Benjamin Moore & Co. v. The Attorney General of Canada, 2022 FC 923. This case follows the Amazon decisions by the Federal Court and the Federal Court of Appeal, and the more recent Choueifaty decision, in articulating what the legal test for patent subject matter eligibility is in Canada.

At issue in the case were two patent applications by Benjamin Moore which were rejected by the Canadian Patent Office. The claims, directed to a computer-implemented colour selection method, were found by the Patent Office to not comply with section 2 of the Patent Act. In reaching this conclusion, the Patent Office analyzed the problem solved by the claims, found that the problem was not a computer-related problem, and therefore concluded that the computer was not a part of the solution.

Both the appellant (Benjamin Moore) and the respondent (the Attorney General), agreed that the Patent Office applied the “problem and solution approach”, which was previously rejected by the Federal Court. Moreover, the Federal Court noted that despite paying lip service to the purposive construction approach prescribed by earlier decisions, CIPO continued to apply the problem and solution approach.

As all parties agreed that the Patent Office had applied the wrong legal test, the only issue to be decided by the court was which legal test should CIPO apply. The respondent requested that the matter be remitted to the Patent Office with instructions to follow the Choueifaty decision as guidance. In contrast, the appellant sought an order instructing the Patent Office to follow a legal test proposed by the Intellectual Property Institute of Canada (IPIC), which was an intervener in the case.

The test proposed by IPIC is reminiscent of prong 2 of step 2A in the subject matter eligibility test used by the USPTO, as it asks whether the claimed subject matter comprises a practical application which uses an abstract idea or scientific theorem, or whether the claims are just directed to a mere abstract idea or scientific theorem.

In a victory for the appellant and the intervener, the court agreed to instruct CIPO to use the practical application test proposed by IPIC. The matter will be remitted to CIPO for evaluation in accordance with the court’s instructions.

However, it is too early to tell whether this victory will translate into CIPO adopting the approach prescribed by the courts or whether it will continue paying lip service to court decisions while still applying the “problem and solution approach”, as it has done following past decisions.

By Jerome Bastien

Canada’s federal court issues unprecedented site blocking order to stop piracy of stanley cup playoffs

Canada’s federal court issues unprecedented site blocking order to stop piracy of stanley cup playoffs

By Jaimie Bordman

As copyright pirates continue to develop ever more complex ways to evade copyright enforcement, content owners must continually devise new ways of stopping them. In a recent decision, Canada’s Federal Court has provided content owners a significant new tool to use in their efforts to stop piracy.

Known as a Dynamic Site Blocking Order, the Order compels third party internet service providers (ISPs) to block access to internet sites as identified by the content owners from time to time, sometimes on very short notice. This type of Order differs from Static Site Blocking Orders, where the sites to be blocked are specifically identified in the Order, and the addition of new sites to be blocked requires Court intervention to amend the Order.

While Static Site Blocking Orders have been issued by Canadian courts before, this is the first time that a Canadian court has issued a Dynamic Site Blocking Order.

The site blocking order was issued to the owners of the National Hockey League’s Stanley Cup Playoffs, to prevent unauthorized redistribution of the coverage by unidentified pirates. The unprecedented dynamic nature of the order was necessary because of the pirates’ advanced means of evading detection, which included frequently relocating the illegal feed to new internet sites, sometimes several times per game. Due to the nature of the copyright works as a live broadcast, the owners required the ability to quickly add new sites to the site blocking order; without this ability, they would effectively have no means of preventing unauthorized access to their content.

The Order was opposed by several of the ISPs that will be required to block the sites under the Order. Several concerns were raised, including the possibility of inadvertently blocking access to legal content, and the cost of compliance with the order. For some ISPs, core network equipment would have to be upgraded in order to block sites as required, which would substantially add to the cost of compliance.

The Court was sympathetic to many of these concerns, and issued the Dynamic Site Blocking Order subject to several conditions, including the following:

  • The content owner is required to retain a third party expert to monitor the owner’s use of the Order, and ensure that blocked sites are properly identified;
  • No ISP will be required to upgrade equipment to comply with the Order;
  • ISPs will be entitled to full reimbursement of their costs incurred to implement the Order. Reimbursement is capped at a maximum amount, but reasonable costs to implement the Order are not expected to exceed that cap.

Despite these strict conditions, the Court’s Dynamic Site Blocking Order establishes precedent in Canada for a powerful new tool for copyright owners to enforce their legal rights against pirates who go to great lengths to infringe.

The Court’s lengthy reasons for issuing the Order can be seen in Rogers Media Inc. et al. v. Doe 1 et al., 20220 FC 775.

By Jaimie Bordman

Canada to change copyright term

Canada to change copyright term

By Jaimie Bordman

The length of the term of copyright protection in Canada is going up.

Canada’s budget implementation bill contains amendments to the Copyright Act that will extend the term of copyright. The new term length will be the life of the author, plus 70 years. This is up from the current term which extends for the life of the author plus 50 years.

Under a term of the United States-Mexico-Canada trade agreement (the “USMCA”), each party must provide under its laws copyright having a term of 70 years from the death of the author. The amendments to Canada’s Copyright Act will bring Canada into compliance with this term of the USMCA.

This change will have potentially significant implications for both copyright owners and users of content. If you have questions or concerns over how you or your business may be impacted, Moffat & Co. would like to help. Please contact us to more information.

Jaimie Bordman is an associate and litigation specialist with Moffat & Co.

Cipo publishes first determinations related to due care

Cipo publishes first determinations related to due care

By Ashley Chu

The Canadian Intellectual Property Office (CIPO) recently published its first determinations regarding due care.

Since the amendments to the Patent Act and Patent Rules came into force on October 30, 2019, applicants and patentees have been required to show due care when:

• requesting reinstatement of an abandoned application due to failure to pay a maintenance fee and the late fee;
• requesting reinstatement of an abandoned application due to failure to request examination within 6 months of the deadline to request and failure to pay the late fee; and
• requesting reversal of the deemed expiry of a patent due to failure to pay a maintenance fee and the late fee.

In determining whether the failure occurred in spite of the due care required by the circumstances having been taken, the Commissioner of Patents (the “Commissioner”) considers whether the applicant/patentee took all measures that a reasonably prudent applicant/patentee would have taken in the circumstances to avoid the failure.
CIPO had previously provided some general circumstances in which the due care standard may be met (e.g., force majeure, unexpected illness, facsimile or software submission failure, docketing system error or isolated human error by assistant). But until now, applicants and patentees did not have any concrete examples of situations where the Commissioner had found that due care had been taken.

Three determinations have been published, all of which relate to a failure to pay maintenance fees due to an isolated human error. In one case, the missed maintenance fee payment was a result of the client’s instructions being misclassified in a docketing system. In the other two cases, a mistake in identifying the correct patent number was inadvertently made.
While each case was decided on its particular set of facts, it appears that at minimum, what is needed to establish due care in cases of human error is a clear and detailed explanation of the circumstances, including:

• how the applicant, patentee or agent chooses, trains, instructs and monitors the work of a reliable, experienced, well trained and supervised employee;
• the number of years the employee has been entrusted with the particular task and whether the employee has performed all his/her duties diligently in the past;
• if an annuity service is used, how the annuity service possesses the technical skills required for the payment of maintenance fees and how the annuity service chooses, instructs and supervises the work of an experienced, well trained and supervised employee; and
• if a docketing system is involved, the measures taken to ensure client instructions are properly classified and how foreseeable limitations of the system are generally monitored and addressed.

Any additional reasons provided by the applicant/patentee should be clearly linked to the failure to pay the maintenance fees. It is also helpful to provide evidence in the form of affidavits by relevant persons, such as the employee and/or the employee’s supervisor.

These cases make it clear that CIPO requires a great level of detail in the reasons and evidence submitted by the applicant/patentee in order to meet the due care standard. However, the process of preparing such documentation is undoubtedly time-consuming and stressful, particularly since there is no guarantee that the Commissioner will make a finding of due care.

This underscores the importance of paying maintenance fees and requesting examination on time, to ensure that the rights of the applicant or patentee are preserved.

For more information on Canadian patent practice, please contact the professionals at Moffat & Co.

Ashley Chu – is an associate with Moffat & Co. Ashley is a lawyer and a registered patent agent.

Cipo publishes first determinations related to due care

Ashley Chu – qualifies as registered canadian patent agent

Ashley CHU – Qualifies as Registered Canadian Patent Agent – The Partners, Associates and Staff at Moffat & Co. wish to announce and congratulate Ashley CHU on her recent success in passing all four of the Patent Agent examinations thereby qualifying as a Registered Canadian Patent Agent. Notably, this was Ashley’s first attempt at the exams. Well done, Ashley. This is a rare accomplishment indeed.

Ashley joined the firm as a patent and trademark agent trainee in 2018. She received an Honours Bachelor of Health Sciences degree from McMaster University in 2015 and a J.D. from the University of Western Ontario in 2018. During her undergraduate degree, Ashley spent her summers working as a clinical research assistant in the medical biophysics department at the Princess Margaret Cancer Centre. Ashley is a barrister and solicitor, having been called to the Bar in June of 2019.

She is currently a member of IPIC’s Public Awareness Committee, the Federation of Asian Canadian Lawyers (Ontario) and the International Association of Young Lawyers.

Ashley practices in the areas of Patents and Trademarks

Cipo publishes first determinations related to due care

Canada’s supreme court affirms that tariffs certified by the copyright board are not mandatory

By Jaimie Bordman

Canada’s Supreme Court has recently affirmed that tariffs for dealing with copyright-protected works levied by copyright collective societies and certified by the Copyright Board, are optional. Users of copyright-protected material are free to opt out of said tariffs and obtain appropriate licenses by other means, if desired.

The underlying dispute involved York University; whose professors make huge volumes of copies from copyright protected works pursuant to instructing students. The University had obtained a license for such copying via Access Copyright, a collective society representing the owners of copyright in most (if not all) of the written works that York professors were reproducing in the course of teaching their students.

The parties were negotiating to renew York’s license for reproducing the written works. When negotiations broke down, Access Copyright sought certification of an interim tariff from the Copyright Board of Canada, which would have the effect of unilaterally setting the royalty rate for the license at the current rate until negotiations could be concluded. The Copyright Board granted the request for an interim tariff, but after some time York University declined to take license rights from Access Copyright altogether and stopped paying the tariff.

York’s refusal to take a license from Access Copyright and pay the interim tariff gave rise to the central question in this matter: when a tariff is certified by the Copyright Board, setting royalty rates for a license to use copyright works, is it mandatory that anyone using the works in the manner covered by the tariff pay the tariff rates to obtain a license? Access Copyright maintained that the tariff was indeed mandatory and sought to enforce the tariff in Federal Court. The Federal Court sided with Access Copyright, but the Federal Court of Appeal disagreed, finding that Copyright Board approved tariffs are voluntary for those using the copyright material covered by the tariff.

The Supreme Court held that the interim tariff from the Copyright Board was optional and was not enforceable against York University. The Copyright Act does not contain any language that clearly, distinctly establishes a duty to pay a copyright collective society for a license under copyright pursuant to a tariff certified by the Copyright Board. Accordingly, any user of copyright-protected material is free to obtain a license in whatever manner it desires. Users are also free to determine whether they believe a license is required at all, or whether their activities fall under the “fair dealing” exception to copyright infringement (subject to the risk of a copyright infringement suit from the copyright owner, of course).

The Supreme Court’s decision is York University v. Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32, and can be found at this link: https://decisions.scc-csc.ca/scc-csc/scc-csc/en/item/18972/index.do#