Law Times

Law Times • February 9/16, 2009 FOCUS PAGE 13 Developments in Russia bear more attention ROUND UP BY JULIUS MELNITZER For Law Times UNITED WE STAND Canadian lawyers looking outward for intellectual property law devel- opments usually have their sights set on the U.S., and to a lesser de- gree, the European Union. But John Place of Heenan Blaikie LLP's Toronto office, says that developments in Russia's IP enforcement and protection laws bear more attention. "Canadian technologies are uniquely well suited for com- mercialization and marketing in Russia," he says. "So Canadians have a great deal to gain by pro- tecting their IP in Russia and by maintaining an interest in the emergence of IP law there." Canada and Russia, Place maintains, are natural partners in innovation and high tech, and consequently in IP protection. "We share similar challenges in terms of finding efficient ways to provide services, systems, and technology over a vast land mass and to a population spread across a continent," Place says. "For ex- ample, Canadians have positioned themselves well in the rollout of Internet broadband services across various Russian regions." The nations are also north- ern partners, sharing a common climate. "We see a lot of technology — like heating systems, search and rescue technologies, and innova- tions in Arctic exploration — that originate in either Canada or Rus- sia, but are perfectly suitable for commercialization in the other." SELECTION PATENTS VALID In its November 2008 decision in Apotex Inc. v. Sanofi-Synthela- bo Canada Inc., the Supreme Court of Canada upheld the va- lidity of selection patents. In so doing, it harmonized Canadian patent law in this area with de- cisions in the United Kingdom and the U.S. A selection patent is a pat- ent based on a selection of com- pounds from those described and claimed in an originating patent. Such a patent claims a substan- tial advantage derived from use of the selected compounds due to a special character peculiar to the selected group. The court ruled that selection patents were acceptable in prin- ciple, and considered whether the impugned patent was invalid for anticipation or obviousness. With regard to anticipation, the court articulated a new two-step test for a finding of anticipation. First, the invention must have been disclosed in the sense that a person skilled in the art could understand merely by reading the original patent that it disclosed the special advantages of the se- lection patent. No trial-and-error process was permitted. If the spe- cial advantages were not disclosed on a bare reading, the original patent could not be said to have anticipated the selection patent. The second element of the test is enablement: a person skilled in the art must have been able to per- form the invention without un- due burden. In other words, the person may use common general knowledge to supplement infor- mation contained in the original patent and may conduct routine — but not prolonged or arduous — trials and experiments. With regard to obviousness, the court noted that both U.S. and U.K. law had accepted that the "obvious-to-try" test could be rel- evant in an obviousness inquiry. Here, the court restated the Windsurfing test by adopting four criteria for determining whether obviousness existed: 1. Identify the notional person skilled in the art and the rele- vant common general knowl- edge of that person; 2. identify or construe the in- ventive concept of the claim in question; 3. identify any differences exist- ing between the state-of-the- art material and the inventive concept of the claim; and 4. viewed without any knowl- edge of the alleged invention as claimed, identify whether these differences constitute steps that would have been obvious to a person skilled in the art or Section 8 battle far from over Continued from page 10 punished an unsuccessful inno- vator. Hughes, however, sided with Brodkin. Section 8, he de- cided, was no different in kind from courts' power to compen- sate defendants for damages in- curred as a result of wrongfully granted temporary injunctions. Hughes also rejected Merck's contention that s. 8 created a civil cause of action and there- fore intruded on the provinces' exclusive jurisdiction in matters of property and civil rights. He reasoned that s. 8 was an inte- gral part of the PMNOC, which in itself was a valid exercise of Parliament's power to enforce patent rights. According to Prenol, however, the battle over the constitution- ality of s. 8 is far from over. www.lawtimesnews.com "There are other arguments that can be made to attack s. 8 and so it is likely that the Federal Court and the Federal Court of Appeal will be called upon to de- termine the validity of this sec- tion in future cases," he says. LT whether they would have re- quired any degree of invention. The "obvious-to-try" test was applicable to the last step in ar- eas where advances tended to arise from experimentation, as in the pharmaceutical field. Such a test would include consideration of the following factors: • Whether success was more or less self-evident; • the nature and amount of ef- fort required for the inven- tion; and • whether the prior art included a motive to find the solution addressed by the invention. OVERZEALOUS IP LITIGATORS BEWARE Justice Roger Hughes of the Fed- eral Court has reduced by half a costs award to Research in Mo- tion because its conduct of the lit- igation was overzealous and failed to consider the limitations on the court's time and resources. The decision came in June 2008, following patent infringe- ment litigation between RIM and Visto Corp., which paralleled evidence indicated that the sum would not be large. Hughes concluded that the parties had conducted the litiga- tion as "all-out war" in the pretri- al stage. They refused to narrow the issues or focus the suit. RIM's claims for relief were very broad, and were based on assertions that Visto had infringed virtually every claim in its patents. For its part, it was just a few months before trial that Visto narrowed the large number of in- validity issues it had raised and ref- erences to prior art it had made. Consequently, the court John Place similar lawsuits in the U.S. and the U.K. RIM alleged that Visto was infringing three patents and claimed damages, profits, and an injunction. Visto countered that the patents were invalid. The parties reserved 90 days DD LT B QtrB-02 Frntr ad 1/30/09 10:26 AM Page 1 for trial, but settled before trial. The modest result included an agreement that the patents were valid and had been infringed. Visto would pay damages to be determined later, but all the devoted significant time and re- sources to the cases. The settle- ment had the effect of wasting the court's preparation time, and the cancellation of the lengthy time scheduled for hearing was done on short notice. Federal Court costs are nor- mally calculated pursuant to a tar- iff and vary according to a number of factors, including a case's length and complexity, the claim's value, and the parties' conduct. In this case, Hughes resorted to the usual method to deter- mine RIM's entitlement — and then cut the award by half. LT your ERGONOMIC PRODUCTIVITY source Innovative ideas in workplace comfort Wills and Powers of Attorney are important personal documents. Ergohuman ME7ERG Mesh High Back Chair To reflect this Dye & Durham has designed a complete line of quality stationery products. LIFETIME WARRANTY • the most popular configuration of the Ergohuman Chair • diamond pattern mesh weave provides a combination of breathability and soft, forgiving support • ideal for up and down office work and supportive enough for long days in your desk chair • flexzone engineering ensures constant contact and support to the user's shoulder and lumbar regions • all high back chairs come with a height and pivot adjustable headrest • available in standard black, red, orange, blue, green, and grey ME7ERG 50%save Regular .................$1,025.00ea. sale $512.50ea. 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