The relationship between intellectual property law and the protection of Indigenous knowledge and cultural expressions is a complex subject that has been receiving increasing attention over the last few years. This is reflected in, for example, the Federal Government’s 2018 Intellectual Property Strategy which includes initiatives that reflect the needs and interests of Indigenous peoples. IPIC’s Indigenous IP Committee is playing a role in Canada to raise awareness of these challenging issues. We reached out to Paula Clancy, the Chair of the committee, to learn about the work of the committee.

Artificial intelligence (AI) has been the subject of human fascination and awe (and Hollywood movies) for many years. Who can forget the iconic scene in 2001: A Space Odyssey when the intelligent computer HAL 9000 says “I’m sorry Dave, I’m afraid I can’t do that,” and refuses to allow Dave to re-enter the pod bay doors because HAL knows that Dave is planning to disconnect it (him?). AI is busy learning, growing, computing, and in some cases inventing, all while we sleep.

Good news for diagnostics, less so for computer-implemented inventions. On Nov. 3, 2020, the Canadian Intellectual Property Office (CIPO) released revised guidelines1 and examples2 for the assessment of patentable subject matter in Canada. Released without prior consultation, the guidelines explain how claims to computer-implemented inventions, medical diagnostic methods, and medical “uses” are to be examined in light of recent jurisprudence from the Federal Court of Canada (FCC).

On August 21, 2020, the Federal Court of Canada (FCC) handed down its ruling in the appeal of Yves Choueifaty against the rejection of Canadian Patent Application No. 2,635,393 for a “Method and Systems for Provision of Anti-Benchmark Portfolio” by the Commissioner of Patents. Mr. Choueifaty was the named inventor of a computer implementation of a new method of selecting and weighing investment portfolio assets that minimize risk without impacting returns. During examination, he amended the claims twice to address the Examiner’s and Patent Appeal Board’s finding that the subject matter of the claims fell outside the definition of “invention” in the Patent Act.

The new Canadian Patent Rules came into effect on October 30, 2019 with the intent to make Canada compliant with its international treaty obligations by harmonizing and streamlining the administrative procedures for patents and patent applications. The changes to the Rules have resulted in both patent prosecutors and intellectual property owners adapting and developing new prosecution strategies.

Earlier this year, we provided an overview of the Canada Border Services Agency’s (CBSA) Request for Assistance Program. The program provides an opportunity for owners of registered Canadian trademarks and copyrights to record those rights with the CBSA to prevent importation and distribution of counterfeit goods in Canada. The CBSA identifies shipments of all sizes and regardless of quantities ordered as part of the program. One shipment can play a pivotal role in uncovering information pertaining to larger networks and suppliers in the counterfeit trade.

Indigenous IP, computer-generated artwork and CIPO practice updates -- This year’s IPIC annual conference had it all.

The Federal Court of Appeal’s long-awaited decision on what constitutes trademark “use” in association with services in the Internet age has finally been released. On September 9, the Court of Appeal dismissed Miller Thomson’s appeal and maintained Hilton’s Canadian trademark registration for its WALDORF ASTORIA mark in association with “hotel services”, despite there never having been a “bricks and mortar” Waldorf Astoria hotel anywhere in Canada.

In a few weeks, TikTok’s parent company ByteDance will have to either complete the sale of TikTok’s US operations to an American company (contenders have included Microsoft, Wal-Mart and Oracle, with Oracle the current favourite), or be banned from the U.S. market.

The COVID-19 pandemic has had a big impact on conferences around the globe, and IPIC’s 2020 Annual Conference is no exception. For the first time in its history, IPIC has decided to replace its annual in-person conference with a virtual event, dubbed IPIC2020 Virtual, to be held on October 1-2, 2020.

IPIC’s monthly committee profiles showcase the volunteer work that our talented IPIC members are doing to grow the IP profession and share valuable knowledge with their peers across the country. This month, we sat down with Béatrice Ngatcha, the Editor of the Canadian Intellectual Property Review, to learn more about what the Editorial Board of IPIC’s CIPR committee has been up to this year.

This is the second edition of IPIC's member profile series on the UnscrIPted blog, which features a monthly interview with a Canadian IP professional to discuss their career accomplishments, interests and overall outlook on the IP profession. Richard Levy has been an IPIC member since 1986 and has been a member of multiple IPIC Committees, as well as the Chair of the Alternative Dispute Resolution Committee. He is based in Montreal, where he runs his private practice, Levy IP Law and Dispute Resolutions.