The 10 patents in question touch on Facebook’s social networking concept, privacy controls, messaging function, advertising model and user customization capabilities. Indeed, nearly every aspect of Facebook as an online service is being challenged. This patent infringement lawsuit is so broad in scope that Yahoo claims that “Facebook’s entire social network model, which allows users to create profiles for and connect with, among other things, persons and businesses, is based on Yahoo!’s patented social networking technology.”

This lawsuit highlights some of the criticisms of software patent that have emerged in recent years. Software patents are often defined very vaguely, capable of very broad interpretations, such that they may cover general broad concepts that multiple software developers can easily think of on their own. For example, Patent #5,983,227 “Dynamic page generator”, one of the 10 patents in this lawsuit, describes a process to dynamically generate web pages based on user preferences. According to the patent filing, this patent was intended to generate news web pages that display custom selections of stock quotes, news headlines, sports scores, weather, and the like. Yahoo alleges that Facebook’s News Feed and Wall infringes this patent. Given its breadth, almost every web service that allow users to customize web pages may be considered infringements of this patent. Software patents have been criticized on this ground that innovation in the software industry can be easily stifled if holders of such broad patents are to enforce them aggressively.

Some companies acquire patents, enforce them against alleged infringers and collect settlements and damages as their main revenue source. This has given rise to defensive patents. Companies attempt to accumulate large patent portfolios, by patenting their own works and acquiring additional patents, as a way to defend against patent infringement litigations. Even internet giant Google, while advocating for patent reform, admits that it has no choice but to join in.

With large patent portfolios, an infringement lawsuit can be dealt with by reaching cross-licensing agreements with the suing company. That is to say, the parties involved can agree to grant each other the right to use their own patented technologies. A defendant company that has a small patent portfolio would be at a great disadvantage. Facebook has merely 21 patents, according to the US Patent Office website. This week, Facebook has begun its effort to remedy this disadvantage with its purpose of 750 patents from IBM.

It remains to be seen how this clash between two internet giants will play out. In any case, this is one more illustration that the US patent system is in need of significant reform.

The webcast of Prof Darnton’s lecture can be found here.

In North America, web companies have resisted government intervention and moved towards self-regulation. In late February, the Digital Advertising Alliance – representing over 90% of US online advertising – announced an industry-wide self-regulatory program for online behavioural advertising. Under the program, participating companies like Google and Yahoo have committed to implementing the Do Not Track option in web browsers. By year end, Google Chrome will become one of the last major browsers to support Do Not Track. Microsoft Internet Explorer 9, Mozilla Firefox, and Apple Safari already provide the option to send a Do Not Track header with each page request.

The latest move by the DAA coincided with the White House’s unveiling of voluntary privacy guidelines in the form of a Consumer Privacy Bill of Rights. These guidelines are intended to address sectors not already subject to federal privacy legislation. Seven key principles were outlined: individual control, transparency, respect for context, security, access and accuracy, focused collection, and accountability. While it does not specify Do Not Track as a solution, the Bill of Rights calls for more choice and control over the tracking of consumers’ online data. Both the White House and the Federal Trade Commission (FTC) have lauded the DAA’s announcement as a positive step forward in the direction of implementing concrete privacy protection measures. In fact, the FTC had recommended the Do Not Track concept in 2010 as part of its “privacy by design” approach. Nevertheless, the White House has asked legislators to enact proposed consumer privacy legislations to backstop the self-regulated regime.

In substance, the DAA’s recent initiative falls short of addressing key concerns regarding user tracking. The browser based opt-out function would block targeted behavioural advertising, but does not ensure that underlying user data will not be collected and stored in the first place. Furthermore, the proposal applies to third party companies, such as advertisers that track users via cookies, but not to first party service providers. User tracking for broad purposes like market research and product development will also be exempt from the program.

The European Union’s Article 29 Data Protection Working Party has pointed out that the DAA-style self-regulatory rules do not satisfy the applicable European privacy standards. In a recent letter, the working party chair stated:

DNT should imply that no user data are collected, retained, processed and shared anymore, with the exception of information strictly necessary to provide the service explicitly requested by the subscriber or user. It must be clear that data from a user with an active DNT-setting cannot be used for purposes such as “market research” and “product development”

The World Wide Web Consortium (W3C) – an international body that develops web standards – also welcomed the DAA program, and is pushing head with the development of international e-privacy guidelines. Its member company Mozilla was the first to implement browser-based Do Not Track. In response to the DAA proposal, Mozilla reiterated its commitment to working with W3C and the three underlying principles of giving user real choices, minimizing data collection, and letting users control their online experiences.

Some view the DAA’s Do Not Track mechanism as an attempt to preempt W3C’s standard development. It is not clear, however, that self-regulation will remain the industry’s modus operandi for long. Government regulators and international bodies are paying increasingly closer attention to the privacy policies and practices of web service providers and online advertisers. For instance, the National Association of Attorneys General (NAAG) recently sent a letter to Google CEO Larry Page expressing concern over Google’s new privacy policies and asking for an opt-out option to be provided. As privacy breaches continue to make news headlines, the popular demand for meaningful choice and control over the tracking of user data would likely go unsatisfied by the industry’s self-proposed rules. Depending on the pace and scope of implementation of measures like DAA’s Do Not Track, it may be a matter of time before industry self-regulation gives way to legislative enactments and government regulation.

Google’s policy has been criticized by some for collecting far too much information on users, as well as being inflexible. A quick examination of the policy notes that Google ‘may’ collect information as diverse as your phone number, your phone’s hardware model, unique application numbers about installation of Google products, and your actual location when using GPS signals among other types of information. Google plans to use this information to ‘tailor’ its services to individual users and provide better ‘targeted advertising’. Where previously, one’s search terms on Youtube would not affect advertising or search recommendations while using any different Google service, this will not be the case anymore. However, the new model has been criticized for a number of reasons. Firstly, there is no real opt-out procedure here. An individual can delete their previous Google browsing history, but other than that they only really have one option. A user can either accept the new policy, or they can stop using Google services. There is no middle ground, something that has been criticized by the FTC. As any Google user will tell you, the new policy changes were presented to users by virtue of a small pop-up message when one opened their Gmail account for example. Of course, this is probably not the best way to have presented these important changes, because individuals have become accustomed to ignoring pop-ups, treating them the same way they treat End-User License Agreements. Google should have probably found a better way to disseminate this information. However, there are other important concerns around this policy.

The European Union’s Justice Commissioner stated that the new policy violates European law, suggesting they had major doubts about the combination of all of this personal data across services. CNIL, a French watchdog group, noted that the new policy would allow ads related to activity on an individual’s phone, including date and time of calls, and other party calling numbers. Many people, this writer included, don’t like sharing this type of information with people they know, let alone with Google and essentially with advertisers. Google has responded by saying that they believe their policy is in fact consistent with European law and are worried that the European rules and suggestions would “break the internet”.

American regulators have also had concerns. Some questions have arisen as to whether Google would change or manipulate search results in a manner to promote Google and Google products. American lawmakers have also asked the question about why there is no opt-out procedure.

On the other side of the debate is Canada’s privacy commissioner, who called it “a step in the right direction”. However, even that comment came with some questions and concerns about the opt-out procedure.

While it’s unclear what direction Google should be going in, the one thing that is abundantly clear from the reactions around the globe is that Google’s roll-out of this new policy was not done the right way. Though Google has stood its ground and suggested that they have not run afoul of any regulations, the concerns that the public has around this policy should not be brushed aside so blithely.

There is a concern that Google is essentially putting the interests of advertisers, and therefore their main source of revenue, ahead of the interests of its users. While this wouldn’t be an entirely surprising motive, it is of course a major concern. The fact that Google has streamlined its ‘data collection’ and where it might have previously had a number of spread out and disparate troves of consumer information to offer advertisers it now has systematic and easily categorized trove of data. Advertisers will likely be willing to pay larger amounts for the data now as they will be better able to target advertising and do more with it. Though nobody should fall for the mistaken idea that they have anonymity on the internet, Google’s motivations for this new privacy policy could certainly be questioned. The information they themselves presented about this change to users was couched in terms that suggested a streamlining to provide a better user experience, but this is clearly a double-edged sword.

Google has almost certainly put itself in a situation where they are facing litigation of some sort, and it seems as though they may have been unwise in rolling out their new policy in the manner they did. One suggestion would have been to have found a better way to inform individuals about this new policy, either by forcing users to read it and accept or deny the terms before the use of their next Google service, or through another method to ensure awareness. There is something disingenuous about forcing a change upon a user base that for its majority probably hasn’t understood or even been cognizant of the change.

This situation however does provide individuals with a chance to reconsider how they approach the internet. Many individuals are fairly passive in this regard, and perhaps a more proactive approach is what would be better. The internet is treated as a place where you can go around with anonymity, but the fact of the matter is that the internet is fairly public and is becoming increasingly public all the time. In the face of changing privacy policies, individuals need to become actively involved in how they manage their use of the internet. This change in policy from one of the most important internet companies may be the trigger that sparks change.

Sources:

Google Privacy Policy: http://www.google.ca/intl/en/policies/privacy/

1. http://www.techdirt.com/articles/20120301/10313817930/google-asking-trouble-with-its-new-privacy-policy-eu-official-questions-legality.shtml

2. http://calgary.ctv.ca/servlet/an/local/CTVNews/20120301/google-privacy-policy-takes-effect-120301/20120301/?hub=CalgaryHome

3. http://www.bbc.co.uk/news/technology-17205754

4. http://www.cnil.fr/english/news-and-events/news/article/googles-new-privacy-policy-raises-deep-concerns-about-data-protection-and-the-respect-of-the-euro/

5. http://www.theglobeandmail.com/report-on-business/international-news/us-lawmakers-press-google-on-privacy-policy-changes/article2316639/

6. http://www.theglobeandmail.com/news/technology/tech-news/google-on-eu-privacy-plan-dont-break-the-internet/article2317695/

Although this has been attempted several times before, this iteration of the Act has drawn the greatest controversy and criticism to date. Publishers supported the bill through the Association of American Publishers, an industry lobby group representing intellectual property interests of their members.

One publisher in particular, the Netherlands-based Elsevier (which publishes prominent medical journals such as The Lancet and Cell, among many others), came under fire from the scientific community for its donations to the co-sponsors of the bill, Reps. Darrel Issa and Carolyn Maloney. Combined with grievances about their pricing policies, a group of scientists led by mathematician Tim Gowers started a boycott of the publisher.

Over 7,500 published researchers around the world joined the boycott, dubbed The Cost of Knowledge. They promised to refrain from publishing, reviewing, or editing papers for Elsevier  as the boycott grew over the last few weeks. Negative press had been accumulating from both mainstream and scientific news sources for weeks.

Researchers called for greater support of open access online journals, and many publicly supported efforts to cut out the publishers, which collectively rake in billions of dollars in revenue every year. Many in the academic community expressed frustration over publishing policies and strict rights agreements, and noted that the publishers were charging fees at every possible opportunity – for publishing, distribution, access, and subscriptions – in effect putting up unnecessary barriers for information, much of it publicly-funded research.

Finally, things came to a head today and Elsevier bowed down, announcing that it would drop support for the Research Works Act, although maintaining that it continued to oppose the government’s position:

We have heard expressions of support from publishers and scholarly societies for the principle behind the legislation. However, we have also heard from some Elsevier journal authors, editors and reviewers who were concerned that the Act seemed inconsistent with Elsevier’s long-standing support for expanding options for free and low-cost public access to scholarly literature.

…

While we continue to oppose government mandates in this area, Elsevier is withdrawing support for the Research Work Act itself. We hope this will address some of the concerns expressed and help create a less heated and more productive climate for our ongoing discussions with research funders.

Later in the day, the co-sponsors of the RWA, Reps. Issa and Maloney, announced that they would drop the legislation and continue discussions with both publishers and the research community:

As the costs of publishing continue to be driven down by new technology, we will continue to see a growth in open-access publishers. This new and innovative model appears to be the wave of the future. The American people deserve to have access to research for which they have paid. This conversation needs to continue, and we have come to the conclusion that the Research Works Act has exhausted the useful role it can play in the debate.

While this can fairly be called a victory for academics, the implications of the boycott movement may have long-lasting consequences for publishers who have long resisted the open access movement and often charged high fees for subscription and online journal access.

For example, the Faculty of 1000, a site that organizes “post-publication peer review” for the medical and biological sciences, last month launched the F1000 research, an alternative to academic publishing that would allow researchers to publish in their data base under a Creative Commons license, and allow other published researchers to write public comments on the paper (acting like informal peer-review).

Other similar services have also come to prominence as a result of the boycott, including the arXiv, which hosts pre-publication and working papers in the physical and mathematical fields, as well as SSRN, hosting similar content for the social sciences fields including law.

Of course, these services come with their own set of issues, including the lack of quality control and pre-publication peer review. These issues, however, are not difficult to work out and sites like the arXiv already have existing policies in place to ensure a minimum level of quality, including an “endorsement” system to maintain credibility of authors.

Thus, the threat to traditional publications remains – if researchers become accustomed to and familiar with online publishing practices, they may see more value both in terms of money and reach by cutting out the publishing “gatekeepers”.

Justice Hughes offered a rare glimpse into the world of patent litigation from the judicial perspective. Titled “A View From The Bench” he spoke of the patent system and what it takes to be successful in the world of patent litigation. To start, he quipped that it takes 4 things to succeed: A good lawyer, good law, good facts and good luck!

The often funny Justice Hughes then went on to talk briefly about the Federal Court and how it deals with patent litigation. He noted that the court has about 6-8 judges that typically handle the patent caseload. He compared this approach to other jurisdictions that have specialized patent courts, and said that our Canadian judges are among the best.

From there, Justice Hughes presented an overview of a typical patent action and highlighted a relatively new feature at the Federal Court – hot tubbing.  Given the highly technical nature of patent litigation, parties rely heavily on experts to explain the science to the Court. In addition experts are also employed to give the Court an idea of what a “person having ordinary skill in the art” would think at the time of the invention. With the new Federal Court Rules, a judge can put the dueling experts head to head and question them so that one will have to directly address/rebut what the other is saying in real time.

Afterwards, he began a brief overview of the Patented Medicines Notice of Compliance (PMNOC) Regulations. Justice Hughes rather candidly remarked that the Regulations are not ideal and was a patchwork copy of the American counterpart, the Hatch-Waxman Regulations or Orange Book. He mentioned that since the proceedings are by way of an application with all evidence submitted through affidavits, the enormous paperwork that is attached to PMNOC cases can sometimes be intimidating.  However with advancing technology, he noted that where lawyers used to submit 10 banker’s boxes full of documentation, he now receives a couple of USB sticks with the entire record in electronic form with hyperlinks linking to transcript evidence.

The discussion then turned to the role of experts. Justice Hughes cautioned about the use of experts because they can sometimes cross the line between expert and advocate. He mentioned the Angola Cat tactic where patent claims will be drafted narrowly and then puffed up during litigation. He showed the infamous Judge Posner decision from the US Court of Appeal in which Judge Posner expressed his displeasure with counsel by likening the argument to an ostrich burying its head in the sand.

Justice Hughes also showed a decision he wrote in Janssen-Ortho v Novopharm, 2006 FC 1234 as a sample of the level of detail and technicality that goes into pharmaceutical patent litigation.

During questions, he was asked what makes a good lawyer. He said it will be the ability of the lawyer to be concise. As an example of what not to do, he told the story of the lawyer who told the Court he had 27 points to make. When the judge asked which one was his best, the lawyer responded with “Well that’s for you to decide” As a general tip Justice Hughes told the student to adhere to the “Rule of 3.” In other words, a good lawyer should only have 3 points of argument.

Overall, the students were treated to a candid and highly informative lecture. It was a great success and a fitting end to the speaker series.

As will be familiar to those who turned on the radio, went online or opened a newspaper in the days that followed, the Bill has been the subject of much controversy and criticism from political opponents, independent agencies and advocacy groups.

Most of the concern centres on a number of provisions in the Bill that have the potential to result in a marked intrusion on the privacy rights of individual internet users. While all are encouraged to read the tabled Bill in full, the most discussed (and maligned) sections can be summarized as follows:

Sections 6 and 7, which requires ISPs to have the ability to intercept and record communications by any user of their services;

Section 16, which requires ISPs to turn over personal information (including address, email address, IP address, and telephone number) to select government, police and agency officials upon request;

Section 34, which grants designated ‘inspectors’ wide-ranging powers to inspect, collect, reproduce and otherwise examine an ISP’s transmission and communication data, with no requirement of a warrant or a criminal investigation.

Concern about the legislation has also been accompanied by a broader discussion about the value of online privacy. This is by no means a new conversation, nor is it new legislation; the Conservatives introduced virtually identical legislation prior to the 2011 federal election, and Andrew Coyne, writing in the National Post, reminds us that many of the provisions in Bill C-30 are nearly identical to those in the “Modernization of Investigative Techniques Act”, introduced (but not passed) by the Liberal Paul Martin government in November of 2005.

So why the uproar now? I would argue that barrier-free communication and sharing of information has been ‘normalized’ for the average Internet user by platforms like Facebook and Twitter, and has accelerated faster than corporations, service providers or governments have been able to keep up. Once these behaviours become entrenched, it becomes more difficult to infringe upon them without inciting criticism and opposition.

In addition, these new platforms have also allowed people to become informed about issues and causes that may otherwise escape the glare of traditional media gatekeepers and journalists. The leaking of details of Public Safety Minister Vic Toews’ personal affairs and the tongue-in-cheek #TellVicEverything hashtag on Twitter illustrated the illusory nature of online privacy and the power of instantaneous communication. Yet they are just the most recent manifestation of a trend that includes the anti-SOPA protests earlier this year and the use of Twitter as a mobilizing agent in the Arab Spring protests of 2011.

With respect to Bill C-30, the government almost immediately made it clear that it will revisit and amend some of the more controversial elements of the legislation, particularly in response to the ‘warrantless’ investigation provisions in Section 34 outlined above. That said, it is unlikely that these debates about online security and personal privacy will be quieted anytime soon.

Today’s panel featured three seasoned patent litigators, Don Cameron from Bereskin & Parr LLP, Andrew Shaughnessy from Torys LLP, and Yoon Kang from Smart & Biggar.

Mr. Cameron began by discussing the state of patent law in Canada after the Supreme Court decision in Apotex Inc. v. Sanofi‑Synthelabo Canada Inc., 2008 SCC 61, where Justice Rothstein adopted the four-step test from the UK case law in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd. for determining whether a patent is “non-obvious”.

He argued that the elements adopted in the test was flawed, as there are some important differences between UK and Canadian patent law which was overlooked in the decision. For instance, in step 2 of the non-obviousness test, the court is required to “identify the inventive concept of the claim in question, or if that cannot readily be done, construe it.” The requirement for inventive concept is required in the UK Patent Act, but not Canada’s – so “construing and inventive concept” is possibly inapplicable in Canada.

Moreover, British courts have held that experimentation is not “invention” for the purpose of a patent, and therefore results of experimentation alone are not patentable. In Canada, however, this is not the law – although it has been creeping into the jurisprudence. The “obvious to try” test also differs from British law, where courts have held patents invalid if it was obvious that experimentation would work. Thus, it is much more difficult to find a patent valid under the scheme adopted by Justice Rothstein.

Mr. Cameron considered a few more examples of how the test has been applied, and pointed to the case of Abbott Laboratories Ltd v Canada (Health) and Sandoz as an example of where all of the steps had been applied properly. He concluded by summarizing the obviousness test: “a predictable solution may be obvious, but an unpredictable outcome cannot be an obvious solution.”

Mr. Shaughnessy spoke next, discussing the concept of utility and usefulness in patent law. In order to uphold a patent, it must be a “useful” invention – a concept that has been subject to some debate. What is required to satisfy the usefulness criteria?

For starters, the inventor must demonstrate utility at the date of filing – even a “scintilla” of usefulness will suffice. However, there is an underlying tension behind the concept of patents – inventors want to disclose and promise as little as possible, yet courts will always want greater detail in order to uphold the patent bargain – that the inventor discloses her invention in order to get monopoly rights.

One of the greatest difficulties of the utility requirement is that many inventions are not “demonstrably” useful (e.g. through experiments) at the date of filing. When this is the case, the patent can still be valid if utility is based on “sound prediction”.

There are three requirements of sound prediction: (1) a factual basis, (2) an articulable line of reasoning that can link the factual basis to the prediction, and (3) proper disclosure. The third requirement, in particular, raises some tough questions.

This element came from a case about the antiretroviral AZT (Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153), but has, as Mr. Shaughnessy put it, “played like a bad high school prom dance theme” in the courts, being strictly applied in the case law. The proper disclosure requirement for sound prediction means that any data that is needed to predict its utility must be included in the patent application. External data, such as lab notebooks and reports, cannot be used in defending a sound prediction claim.

This in effect sets up a two-tier system, where inventions that can be demonstrated directly by experiments can be defended with external data, while sound prediction claims cannot. This tips the balance of the underlying patent bargain, as it incentivizes demonstrable utility over sound prediction, in effect minimizing what inventors “promise” in their patents. In so doing, however, courts have been reluctant to uphold any patents that do not appear to “promise” anything useful.

The last speaker was Yoon Kang, who further discussed the requirement for disclosure of utility. She noted that this requirement does not find its basis in the Patent Act. This requirement was added by the case law only in 2002 – there is no statutory requirement to show why the invention works or to prove why it works, which is what the proper disclosure requirement does in effect.

Ms. Kang added that in the AZT case, the question of proper disclosure did not actually need to be answered, although it set out this framework which has since been strictly applied by courts.

The disconnect between the two standards – that of demonstrated utility and sound prediction – is hard to explain. It does not come from the enablement requirement in the Act, because any patent being litigated has likely already been implemented therefore it has clearly been put into use. She pointed out that this gives rise to some inherent unfairness, as something that is soundly predicted and provides a real benefit to society might not be patentable because of this proper disclosure requirement.

The situation is exacerbated by the fact that patent applications cannot be modified or added to after it has been filed. This is particularly problematic for many pharmaceutical patents that were filed in the 1990s – before the proper disclosure requirement for sound prediction was added by the Supreme Court. Because those patents were not filed with the new framework in mind, most do not have the required information within the application to support a sound prediction claim. The Supreme Court has in effect set up a moving target for patent law, which has possibly caused millions of dollars of lost profits from patent rights.

The second day of the TIP Conference focused on the controversial and sexy (for patent law) topic of non-practising entities. The public has a tendency to label non-practising entities as patent trolls, and with that label comes a whole consortium of negative connotations. What is a patent troll? The image that appears in most people’s minds is a person who acquires many, many patents and sits in wait, under the bridge, ready to unfairly pounce on anyone who attempts to cross.

The second day of the conference examined the “troll label” critically – to think carefully about people who are labelled as “patent trolls”, identify who receives that label, and examine the question of whether that label is justified. The speakers included Michel Vulpe, Founder and Chief Technology Officer of i4i, Richard Owens, who acted as counsel for i4i in its legal battle against Microsoft, and Bhupinder Randhawa, a patent lawyer from Bereskin & Parr. The panel was moderated by Dimock Stratton’s Bruce Stratton.

Mr Vulpe first described the litigation with Microsoft from the perspective of a software engineer running a small company. Mr Vulpe recounted how i4i was labelled as a patent troll, even though the court eventually found that it was, and still is, a practicing entity. However, he also noted that being a non-practicing entity may not be a bad thing – after all, many institutions, including the University of Toronto, collect patents but are non-practicing entities.

He then discussed how the judicial system itself is a huge barrier for small to medium companies to assert their patent rights. While the number is smaller in Canada, Mr Vulpe stated that for a company to initiate patent litigation, it will take at least $25 million. For many smaller companies, that’s a dead end right there. For those who can go forward, it’s an all or nothing gamble. For companies like Microsoft, it’s just part of doing business.

Bhupinder Randhawa and Richard Owens then raised a number of issues from the perspective of patent litigators.

Mr Owens argued that even if the small company managed to win the lawsuit, damages would more or less be what the original license fee would be had the patent infringer simply licensed it. Given the uncertainty of the final outcome of patent litigation, the mammoth amount of capital necessary to even initiate such litigation, and the fact that large companies can simply out-muscle the smaller company into bankruptcy, there is little reason why large companies would ever need to properly license patents of small companies. They can, and do, take with impunity because most of the time, there are no serious consequences.

Mr Randhawa pointed out that there are actually very few patent trolls, in the commonly understood negative sense, out there. Most small to medium companies, who assert their patent rights, do have an actual invention in their history. Problem is, they often lack the substantial resources necessary to begin commercializing. One way to start building a capital base is to collect licensing fees. Mr. Randhawa acknowledged that in some situations, especially relating to new, cutting edge technology, people who simply buy many patents may succeed in litigating them, this does not happen very often.

An interesting point that was made was that the Microsofts of the world themselves practice patent trolling behaviour. They sit on huge portfolios of patents, most of which they do not practice, and claim license fees and/or bring lawsuits against other companies for infringing their patent rights. So when small companies assert their patent rights, they are patent trolls, but when large companies do it, they aren’t?

On potential solution to the judicial obstacle of patent litigation that was suggested Mr Randhawa, was for there to be a patent court in Canada. Of course, every area of law feels like they need their own specialized court, but one unique obstacle about patent law is its heavy reliance on technical and scientific fields. Such fields require a great deal of background knowledge, something most judges today do not have.

In the end, patent trolls will continue to be a controversial topic. However, what we can conclude is, as Mr Volpe quoted Judge Michel: “It’s a label. It’s an excuse to not think carefully about the problem.”

Professor David Vaver started off the session “Introduction to Patents” with a question: “What is a patent?”

After discussing the current concept of a patent—a state-granted exclusive right over the manufacture, use or sale of an invention, to its inventor or the holder of the patent, for a period of 20 years from the date of filing—Professor Vaver launched into an engaging history of the evolution of patents through the the centuries, from their early days, when they were still “letters patent” and protected things like playing cards, to the current state of the law.

David Ng, Paul Grootendorst, and David Vaver. Photo by Susan Deefholts

Today, patents protect machines, methods of manufacture and compositions of matter. In order to establish patentability, an invention must pertain to appropriate subject matter. The invention also must be novel, non-obvious, and useful—in that it is both functional and that it does what the inventor says it does. Patents seek to incentivize the move away from trade secrets, instead encouraging full disclosure of the invention in return for exclusive use, thus allowing for public access to such innovations.

He also touched on the issue of the patentability of higher life forms like mice, which were deemed to be non-patentable. Plants also cannot be patented, however, the individual cells that make up the plant can be patented. The result is that so long as the applications are appropriately drafted, the cumulative effect of the individual patents can functionally result in a patent on the entire plant.

Professor Vaver concluded by touching on other areas of invention and how they challenge the current status of patent law, like computer software, and processes like new methods in business and science.

David Ng of Ridout & Maybee LLP then spoke about the process of registering a patent.

“Claims,” he said, “are key.” They are what allow for patent holders to draw a fence around their invention. Ng went on to point out, however, that these fences are drafted in words, and the must be carefully composed in order to demarcate the boundaries of the patent. The process is usually one of dialogue between the applicant and the patent office and generally involves multiple iterations and revisions, before the patent is granted.

Ng then went on to talk about patent litigation, reviewing the types and forms of litigation that can take place around the issue of patents. From infringement litigation, to declarations of non-infringement and impeachment actions—which are essentially requests for the invalidation of a patent—the different types of action in turn give rise to a range of remedies as well, including injunctions that will provide recourse to the patent holder in the event that the infringer continues his unauthorized use.

He also pointed out that the basic threshold for a finding of infringement only requires that one of the claims be infringed upon. The usual defenses involve either the claim of non-infringement or the claim that the patent itself is invalid. In order to support the claim of invalidity, if the defendant can prove that the invention has been anticipated, or that it is obvious, then this will allow for a finding of invalidity.

Professor Paul Grootendorst rounded out the session, in talking about patents in the context of pharmaceuticals.

“The problem here is that while the number of new drugs being invented is relatively flat, the amount of money pharmaceutical companies are putting into that invention is on an upward curve.” This naturally results in a higher cost for the drugs, because of the high sunk costs of the development.

He went on to discuss the issues around patent protection for pharmaceutical products, including a critique of the standard rationales for providing such protection and erecting fences around potentially life-changing products. This is counter weighted by the high cost of R&D, which is sunk into the challenge of developing the drugs in the first place. Pharmaceutical companies argue that they need patent protection to allow for recoupment of their investment, so they can take action against those who might eat into their market share.

This results in a large amount of litigation around pharmaceutical patent battles—”Which is great if you want to practice patent litigation,” Professor Grootendorst pointed out, “but not so good for the cost of drugs and the consumer.”

He concluded by touching briefly on some of the alternatives and supplements to IP, including reducing the cost of doing the R&D in the first place by subsidizing the front-end for drugs that might not otherwise be developed. Another alternative is to rethink the ways in which R&D is undertaken, and to encourage open source development in a public domain context. This would avoid duplication of effort across research groups.