CIPO May Process Final Fees Faster than Expected

Several actions can, at least theoretically, be undertaken with respect to a patent application after the final fee has been paid following allowance. Section 4(10)(b) of the Patent Rules allows for a final fee to be refunded if a request for its return is received before the start of technical preparations for issuance of a patent. This allows an additional opportunity to amend the patent application, for example if an issue is discovered only at a late stage. Section 36(2) of the Patent Act requires that a divisional application must be filed before issuance of the parent application. Theoretically, the divisional may therefore be filed after payment of the final fee.

In the past, the time interval between payment of the final fee and the start of technical preparations for issuance has been on the order of 8 to 9 weeks. However, recent experience has shown that there is considerable variance in this estimate. In one recent case, the time interval between payment of the final fee and the start of technical preparations was very short – at just over one week.

We have always advised that filing of amendments and divisional applications should be made before or concurrently with payment of the final fee, as much as possible, rather than relying on the unpredictable window of time between payment of the final fee and issuance of the patent. In view of the above, it appears to be more important than ever to follow this strategy as closely as possible, since the time window can be much shorter than expected.

By Michael Maskery

Chain of Title (Part 4 of an Occasional Series of Articles on Due Diligence)

Any party acquiring IP needs to be confident of the effects of the series of transactions transferring ownership from the original creators to the vendor. This is commonly known as the “chain of title”, and like any other chain, it is only as strong as its weakest link.

There are a variety of issues that can weaken the chain of title or lead to uncertainty over the true ownership of the property . Common problems include the following:

Failure to obtain assignments from all the relevant parties: If an inventor or co-owner has not executed a suitable binding assignment then they may retain rights. In some jurisdictions, unless there is a written agreement to the contrary, co-inventors may be free to independently exploit a patent, or may have to account to other co-inventors for any profits.

Failure to accurately identify the parties: Is the correct owner SmithCo, SmithCo Inc.; SmithCo Ltd.; SmithCo Corp.; or Smith & Co.? Naming errors may be difficult or impossible to correct at a later date. Failure to properly identify the subject matter: Which specific trade-marks, patent applications, or industrial designs have been assigned? Were worldwide rights assigned or, did an assignment limit itself to specified countries?

Lack of capacity: In some jurisdictions only specified individuals have the authority to bind a company. A corporate assignment may not be effective unless signed by the authorized legal representative.

Formalities: Some jurisdictions may require that signatures on the assignment be properly witnessed, notarised or comply with other formalities in order to be enforceable.

Registration: Some jurisdictions require that assignments and licenses be registered with the authorities in order to be given legal effect.

IP is a complex and sometimes counterintuitive area of law and this article only touches the surface of some issues that may arise. You should always seek qualified professional assistance before making any decisions.

Euan Taylor is a lawyer, patent agent and trade-mark agent and is based in MBM’s Vancouver office. He has wide experience of IP due diligence for a range of commercial transactions and can be reached at etaylor@mbm.com or at 604-239-0271

Equitable Solutions to Copyright Assignment

Case Considered: Planification-Organisation-Publications Systèmes (POPS) LTÉE v. 9054-8181 Québec Inc 2013 FC 427

This case deals with an interesting problem posed by the Copyright Act, R.S.C. 1985, c. C-42. Where there is no written assignment or written license to use a work, does a person who contributed resources have any rights to the copyrighted product?

Facts 

This case involves a piece of business simulation software that was originally developed for DOS. The original code for the software was developed in large part by Planification-Organisation-Publications Systèmes LTÉE (POPS). Any aspect of the code not developed by POPS was developed by a third party that assigned his rights to POPS.

The principals for POPS and 9054-8181 Québec Inc (IDP) worked together to promote the software, with the principals of IDP bringing pedagogical content, and POPS providing the software.

As WindowsTM became the dominant operating system, the POPS and IDP agreed that a WindowsTM version of the software needed to be developed. A joint venture was developed to further the development of the updated software. Any agreements between POPS and IDP were verbal, or unsigned. Through the development of the updated software, there had been no changes to the source code of the software.

IDP continued to provide pedagogical content to help POPS develop the software. IDP also paid $1000 per year to for the right to use the software in seminars.

Eventually, the principal of POPS became a shareholder and employee of IDP to help accelerate the development of the WindowsTM version of the software. IDP then spent a significant amount of money to update the software. The WindowsTM product still had significant bugs that made it difficult for a person to use the software. It is important to note that the source code remained largely unchanged through this process.

In the end there was a breakdown of the relationship between POPS and IDP. POPS claimed to revoke any license to IDP that permitted IDP to use or develop the software.

POPS then sued IDP for copyright infringement for continued use of the software. IDP counter-claimed seeking an order from the court that IDP had an irrevocable license to use the software.

Decision 

The Chief Justice found that POPS was the owner of copyright in the software, but that IDP was to be granted at least an implied non-exclusive irrevocable license to use the software.

Analysis 

The Copyright Act states an author is the first owner of the copyright in a work. The exception to this rule occurs where the author is an employee, where the employer would be the first owner of the copyright. The Copyright Act also requires any assignment or grant of interest by license to be in writing to be valid. According to statute, then, IDP could not have any valid ownership rights in the software, as there were no written agreements licensing the software.

However, since a non-exclusive license is not a grant of an interest, the Chief Justice found that the verbal and unsigned agreements between IDP and POPS to constitute a grant of a non-exclusive license.

Given the significant consideration IDP gave to the development of the software, the Chief Justice went further to find that IDP’s license is irrevocable. Since the license is non-exclusive, even though it is irrevocable, it is still not a grant of an interest under the Copyright Act, and therefore does not have to be reduced to writing.

Conclusion 

This case shows that some rights may be recognized where a party has invested heavily in the development of a work, even though they may not have contributed to original expression of the work. These rights fall short of ownership in copyright or an exclusive license, however, the party cannot be stopped from using the work they invested in.

By Jahangir Valiani 

Should You Get a Paid LinkedIn Account?

Many LinkedIn users wonder if they should invest in a paid LinkedIn membership. The purpose of this blog post is to give you a brief overview of each membership level. Please note the membership fees referenced are paid per month. You can save up to 25% per year if you pay on an annual basis (of course).

• Who’s Viewed Your Profile – See who viewed your profile and how they find you. 

• Full Profile – See full profiles of all the people in your network including 1, 2nd and 3rd degrees.

• Full Name Visibility – See complete names of 3rd degree connections and group connections. 

• InMail Messages – Send direct messages to anyone on LinkedIn. If you don’t receive a response within seven days, LinkedIn will return the InMail credit to your account. Also, unused InMails roll over and accumulate for three months while you are a paid member. 

• Introductions – Get introductions to LinkedIn members through your LinkedIn connections. 

• OpenLink – Let anyone on LinkedIn message you. This is an optional feature and needs to be activated. Premium Search – Get up to 8 search filters. Filters include Seniority, Company Size, Interests, Fortune 1000, etc. 

• Profiles Per Search – See more profiles when you search. 

• Saved Search Alerts – Save searches and get email notifications when LinkedIn profiles fit your specifications. 

• Reference Search – Get a list of people in your network who can provide a reference of someone you are interested in researching. 

Benefits of a Free Membership

Stick with a free membership if you are a new LinkedIn user. A free membership will allow you to:

• Grow your network with unlimited connections

• Join up to 50 LinkedIn Groups

• Create a Profile 

• Give and receive Recommendations

• Request up to 5 Introductions 

• Do general searches 

Benefits of a Paid Membership

A paid membership is only beneficial if you use all the features. Do you research conference attendees prior to attending? Are you interested in finding out which connections can introduce you to leads you want to meet? If your answer was yes to either of these questions, a paid LinkedIn membership is for you. A paid membership will also allow you to:

• Send a message to anyone on LinkedIn regardless of their play in your network

• Send more introductions 

• View more profile information of 2nd and 3rd connections and people not in your network

By Samantha Collier

China’s Patent Prosecution Highway Program (PPH)

As of 1 March 1, 2013, nine Patent Offices have entered into agreements with the State of Intellectual Property Office (SIPO) of the People’s Republic of China for a Patent Prosecution Highway Pilot Program (“PPH”). These include the Japanese Patent Office (“JPO”), United States Patent and Trademark Office (“USPTO”), Korean Intellectual Property Office (“KIPO”), German Patent and Trade Mark Office (“DPMA”), Federal Service for Intellectual Property of the Russian Federation (“ROSPATENT”), National Board of Patents and Registration of Finland (“NBPR”), Denmark Patent and Trademark Office (“DKPTO”), Austrian Patent Office (“APO”) and Mexican Institute of Industrial Property (“IMPI”). 

The pilot periods of the PPH programs with these Patent Offices are scheduled to end either at the end of this year or early next year, but may be extended. 

Applicants can file a request under the SIPO-Office of First Filing (“OFF”) PPH agreement based on an OFF application, if the SIPO application is (a) a direct entry under the Paris Convention, or a PCT national phase application, and also (b) has at least one or more claims found to be allowable by the OFF. The SIPO application must have been published, the request for examination must have been made and the SIPO must not yet have begun examination at the time of the PPH request. 

The Applicants need to submit copies of all Office Actions issued by the OFF, a copy of the allowable claims, copies of all references cited by the OFF Examiner and a table of correspondence indicating how all the claims in the SIPO application correspond to the allowable claims in the OFF application. 

A first Office Action may be issued within three months after the PPH request is approved by the SIPO, whereas under the normal examination process the first Office Action will generally be received around one to two years after the examination procedure commences. It appears that using the PPH program has the potential to dramatically speed up the examination process for Chinese patent applications. However, the SIPO still carries out examination independently, so the grant of a patent by the OFF does not guarantee the grant of a patent in China. 

By Yawen Liu

The Cost of Selling Outside the Network

Case Considered – Beyond The Rack Enterprises Inc. v. Michael Kors 2013 FCA 107

This is an appeal by Beyond The Rack from a decision of Justice Manson that confirmed Prothonotary Milcyznski’s decision to dismiss a motion to strike a portion of Michael Kors’ Statement of Claim. Specifically, Beyond The Rack sought to strike the allegations of trade-mark infringement and passing off in Michael Kors’ statement of claim.

Michael Kors is a manufacturer of high end bags and apparel for women and men. Beyond The Rack is an online retailer that allows shoppers to purchase luxury branded goods at steep discounts.

Michael Kors brought this action against Beyond The Rack alleging that Beyond The Rack infringed Michael Kors’ trade-mark by using it without authorization and in association with counterfeit products. Michael Kors’ basis for this allegation is that Michael Kors sells its products exclusively through authorized distributors, and Beyond The Rack is not one.

Beyond The Rack responded by stating that the goods it sold were authentic, and they obtained them, directly or indirectly, from authorized distributors of Michael Kors products. Beyond The Rack rebutted that this exercise was a mere fishing expedition to determine the source of Beyond The Rack’s inventory.

In commencing the motion to strike the portion of the Statement of Claim relating to trade-marks, Beyond The Rack argued that the material facts to substantiate the allegations were missing.

The Court of Appeal dismissed the appeal and confirmed the lower decisions. It agreed that since Beyond The Rack was outside the network of authorized distributors, the authenticity of the Michael Kors branded products Beyond The Rack sells is a triable issue.

If Beyond The Rack is truly selling authentic Michael Kors products, Beyond The Rack should be successful at trial on this issue. This decision, however, will likely expose Beyond The Rack to examination of its supply chain, as well as the costs associated with preparing the relevant documents and affidavits for this issue. But that just may be the cost of selling outside the network.

By Jahangir Valiani 

Beware of Latest Trade-mark Scam

We have recently become aware of yet another scam that involves sending an unsolicited letter to a Canadian trade-mark owner and offering to register our client’s Canadian trade-mark at the “International Register of Trade-marks” upon provision of a substantial cheque or bank draft. In this instance, the sender of the letter was GAIA almanac Ltd., P.O. Box 8501, Papa, Hungary. 

Once again, we cannot stress enough: Do not heed any communication referencing your trade-mark application or registration that does not come directly from either your Agent of Record, or if you are self-represented, the Canadian Intellectual Property Office directly. Trade-marks law is jurisdictional in nature, and as such there is no such thing as an “International Register of Trade-marks” or an international trade-mark. 

If in fact you do receive any correspondence from any party that is not your trade-mark agent, please make sure to notify your agent immediately. 

Further, if you have any questions about any suspicious communications referencing your trade-mark, please feel free to contact us at MBM as we would be happy to be of assistance.

By Adam Tracey