“Extension of Intellectual Property Rights”, Chapter 1, in M. Boyer, M. Trebilcock & D. Vaver, eds., Competition Policy and Intellectual Property, Toronto: Irwin Law, 2009, pp. 17-145
This very long chapter flowed from a report prepared for the Competition Bureau as part of a series of papers exploring the intersection of IP and competition law. In recent years, concerns have been expressed that the traditional balances struck in intellectual property law have been undermined through a range of practices, rules and phenomena that contribute to an extension of intellectual property rights beyond what was originally contemplated by policy-makers. This chapter examines some of the strategies used to extend intellectual property rights under two broad categories. The first is the expansion of intellectual property rights through increasing overlap between areas of protection. The second involves the assertion of weak or uncertain intellectual property rights. In the section on overlapping protection, two issues are considered in detail: the overlap between patents and trade-marks, where trade-mark protection is sought over functional features of articles, and the overlap between copyright and trade-mark. This latter overlap is examined in the context of the use of copyright law to prevent the parallel importation of non-copyright goods, based on rights asserted in trade-mark logos or product wrapper designs. The exercise of weak or uncertain intellectual property rights is examined in the context of reverse-payment settlements in patent disputes between brand name and generic drug companies. These cases, which have proven problematic in the United States, highlight complex issues arising from a combination of factors. The paper provides a detailed exploration of the issues which arise in each example, and explores the possible impact of these practices on innovation and competition.
