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Displaying items by tag: IP

“Patent Law at the Supreme Court of Canada: A Healthy Balance?”, in Jocelyn Downie & Elaine Gibson, eds., Health Law at the Supreme Court of Canada. Irwin Law Books, 2006, pp. 337-364

In the health care context, the boundaries of private ownership rights over innovation in the fields of biotechnology and pharmaceuticals and the scope of the public domain have important implications for research and development, for cost to both the public purse and to private individuals, and ultimately for access to treatment. An approach which places limits and sets boundaries is therefore often favoured by those concerned about these areas of activity. By contrast, the pharmaceutical industry has emphasized the importance of strong and broad patent rights, arguing that they provide the necessary incentive for continued research and development.

This paper explores these tensions in the context of the decisions of the Supreme Court of Canada. The first section of the paper explores the Court’s recent statements on the purpose of patent law, with a particular focus on statements of purpose in health law related cases. After a consideration of the general statements of purpose made in the cases, the paper examines how these statements influence the interpretation and outcomes in key cases.

            The second section of the paper examines the Court’s approach to interpreting the scope of patents. As the Court has pointed out, a patent is a regulation within the meaning of the Interpretation Act. Thus the interpretation of the scope of the patent granted, also referred to as “claims construction,” is a second level of judicial interpretive activity. The paper considers recent key decisions of the Court in which it details the proper approach to claims construction in light of the stated purposes of patent legislation.

Published in Refereed Book Chapters

“The challenge of trademark law in Canada’s federal and bijural system”, in Ysolde Gendreau, ed., An Emerging Intellectual Property Paradigm: Perspectives from Canada, Queen Mary Studies in Intellectual Property Law, Cheltenham, UK: Edward Elgar, 2008, 3-21

Canada’s constitution divides jurisdiction over the full range of legislative subject matter between federal and provincial governments. While intellectual property subjects have typically fallen within federal jurisdiction, some aspects of intellectual property protection are provincial in nature. This is particularly the case in the area of trademarks. Further, Canada is a mixed jurisdiction. While the three territories and nine of the ten provinces draw on the common law legal tradition, Quebec’s private law is drawn from the French civil law tradition. This federal and bijural nature of Canada’s legal system presents some challenges for trademark law. The challenges cut across a variety of lines. This book chapter explores the issues which arise from the tension between the federal and provincial levels of government and between the co-existing common and civil law traditions. Primary focus is given to the issue of the division of powers. The tension between jurisdiction over registered and unregistered marks is explored. Issues such as the constitutionality of various provisions of the Trade-marks Act, and the Trade-marks Act itself are considered, as well as the interrelationship between provincial legislation governing business names and registered trademarks. The paper also explores the harmonization of principles of “passing off” in the private law of both Quebec and the common law provinces.

Published in Refereed Book Chapters
Thursday, 25 June 2009 11:43

Extension of Intellectual Property Rights

“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.
Published in Refereed Book Chapters

“Faster, Higher, Stronger: The Protection of Olympic and Paralympic Marks Leading up to Vancouver 2010”– edited reprint of refereed article, in Vassil Griginov, ed., The Olympics: A Critical Reader, Routledge, 2010, pp. 344-357

The original (and longer) version of this book chapter appeared in the U.B.C. Law Review in 2008 (listed under refereed publications). The chapter evaluates Canada’s Olympic and Paralympic Marks Act of 2007, with a particular focus on ambush marketing.

Published in Refereed Book Chapters
Thursday, 24 June 2010 11:38

Copyright Reform and Fact-Based Works

“Copyright Reform and Fact-Based Works”, in M. Geist, ed. From "Radical Extremism" to "Balanced Copyright": Canadian Copyright and the Digital Agenda, (Irwin Law, 2010), 571-597. PDF available here.

In recent years we have seen a dramatic growth in the number of websites, databases, tools and applications which use data from a variety of public and private sources to offer innovative information-based services to a wide range of users.  In many cases, the innovators are upstarts – individuals or small companies that see opportunities for new and useful applications. Although developers may rely upon the copyright doctrine that there is no copyright in facts when they create their tools, the state of the law in this area reveals many uncertainties. In an innovation economy, clarity around the status and use of data in new works is crucial; and the public interest is best served by facts remaining in the public domain. This chapter provides an overview of the current state of the law in relation to the protection of fact-based works in copyright law. It then considers the extent to which Bill C-32 clarifies, ignores or makes worse the state of the law in this area.

Published in Refereed Book Chapters

Electronic Commerce and Internet Law in Canada, CCH Canadian Ltd., 2004 (with Michael Deturbide).

This book is the first (and only) Canadian treatise on e-commerce and internet law. It covers a range of topics which include electronic contracts, online consumer protection, data protection and privacy, internet domain names and trademark law, copyright law and the internet, software and e-business patents, the regulation of online speech, and jurisdiction and the internet. Since it was published in 2004, much has changed in this area of law. We are currently working on a second edition of the book, which we hope will be published in 2012.

Published in Books

  • Intellectual Property on the Cyber-Picketline: A Comment on British Columbia Automobile Assn v. Office and Professional Employees' International Union, Local 378

    "Intellectual Property on the Cyber-Picketline:  A Comment on British Columbia Automobile Assn v. Office and Professional Employees' International Union, Local 378", (2002) 39 Alberta Law Review 934-962

    This paper is a lengthy and critical comment on the decision of the British Columbia Supreme Court, British Columbia Automobile Assn v. Office and Professional Employees' International Union, Local 378.. The case remains an important decision on issues of passing off, trademark and copyright infringement relating to websites, domain names and meta tags.  In this paper I explore these issues, all of which may commonly arise in situations of alleged competition between websites.  The case thus provides a context for exploring legitimate and unlawful uses of domain names and meta tags, copyright infringement, and web site design, and touches on the role of s. 22 of the Trade-marks Act.  Because BCAA also occurs in the context of a labour dispute, it raises further issues about intellectual property rights and freedom of expression.  In this context, I examine the balance being struck between monopolistic intellectual property rights and the fundamental right of freedom of expression.






    in Refereed Articles
    Tags: Internet IP
  • Patents for Second Medical Indications: Issues and Implications for Pharmacare in Canada

    "Patents for Second Medical Indications:  Issues and Implications for Pharmacare in Canada", (2001) 9 Health Law Journal 23-59

    This issue of second medical indication patents and their implications is an important one, as it has the potential to raise costs significantly for already cash-strapped provincial drug programs.  It may also have implications for privately funded drug plans, and hence for the cost of private drug insurance programs.  At the very least, it may impose costs on provincial health departments to defend themselves in any potential patent infringement actions taken against them.  It has also been argued that to list drugs as only partially interchangeable in provincial drug formularies will place difficult burdens on pharmacists and those who prescribe drugs, and may expose them directly to patent liability issues.  This paper considers both the issues raised by the decision in Apotex v. Ontario, and the implications for health departments, doctors and pharmacists.






    in Refereed Articles
    Tags: IP
  • Patents for Second Medical Indications: Issues and Implications for Pharmacare in Canada

    "Patents for Second Medical Indications:  Issues and Implications for Pharmacare in Canada" (March 26, 2001).  Report prepared for Health Canada.






    in Reports/Consultations
    Tags: IP
  • The Best Things in Law are Free: Towards Quality Free Public Access to Primary Legal Materials in Canada

    "The Best Things in Law are Free:  Towards Quality Free Public Access to Primary Legal Materials in Canada", (2000) 23 Dalhousie Law Journal 301-336

    This paper examines the move, in the 1990s in Canada, towards making primary legal materials freely available to the public over the internet.   The paper begins by assessing the situation in Canada at the time of writing, and the need for a centralized and harmonized electronic portal for primary legal materials.  I consider initiatives in other jurisdictions aimed at providing comprehensive free public access, and explore the rationales for developing and providing such access.  I explore some of the implications and questions raised by the provision of publicly accessible primary legal materials.  These include the concepts of  “public” and “access”, concerns about information monopolies, the role of lawyers as "infomediaries" and the normative implications of "freeing" the law.






    in Refereed Articles
    Tags: Internet IP
  • Language Policy in the United States


    "Language Policy in the United States", in Sylvie Leger, ed., Towards a Language Agenda:  Futurist Outlook on the United Nations, Canadian Centre for Linguistic Rights, 1996. (Reprinted in a digested version in Le Bulletin, newsletter of the Canadian Centre for Linguistic Rights, 1997).






    in Non-refereed Book Chapters/Articles
    Tags: IP
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Published in Publications-Display
Thursday, 10 June 2010 15:35

Canadian Trademark Law

 Canadian Trademark Law, LexisNexis (Butterworths) Canada, Inc., 2010.

This book is a treatise on Canadian trademark law. While a primary focus of the book is necessarily the Trade-marks Act, a number of other statutes are considered, as well as the extensive body of common law relating to trademarks. The book aims to provide a solid grounding in the basic principles of trademark law, while at the same time exploring some of the contemporary challenges in this area of law. These challenges are brought about by the international movement towards harmonization of norms and procedures, as well as phenomena such as the internet and electronic commerce, the growing problem of counterfeiting, and the use of trademarks in critical and parodic expression.

Published in Books
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Page 4 of 5

Canadian Trademark Law

Published in 2015 by Lexis Nexis

Canadian Trademark Law 2d Edition

Buy on LexisNexis

Electronic Commerce and Internet Law in Canada, 2nd Edition

Published in 2012 by CCH Canadian Ltd.

Electronic Commerce and Internet Law in Canada

Buy on CCH Canadian

Intellectual Property for the 21st Century

Intellectual Property Law for the 21st Century:

Interdisciplinary Approaches

Purchase from Irwin Law