P9: Courting Confusion: the Patent Act, legal decisions, and impacts on Canada’s science and innovation landscape

Thursday, November 21, 2013 - 1:30pm to 3:00pm
Organizer: 
Agriculture and Agri-Food Canada

"Canada’s Patent Act exists to encourage progress in science and the useful arts. It achieves this by securing inventors’ property rights in their inventions, thus establishing a market-based regime of incentives to foster innovation. Securing a patent is based on following logical, sound principles, unchanged in two centuries. The Patent Act itself establishes an order of steps that, if correctly followed, would resolve many controversial issues.

Under the act, a patentable invention must satisfy four main criteria: patent-eligible subject-matter; novelty; utility, and; non-obviousness. Novelty means new anywhere in the world. Utility is met where a person of ordinary skill, reading the specification, would understand the utility of the claimed invention. Non-obviousness requires that a persons of ordinary skill would not have been led to the claimed invention directly by the earlier teachings of others.

Recently, the scope of patent-eligible subject-matter has been controversial in pharmaceuticals, the life sciences; and in business methods, particularly involving computer software.

However, in the past few years, Canadian courts, including the Supreme Court of Canada (SCC), have issued rulings which may be seen as inconsistent or confusing in areas of patent-eligibility, novelty, utility, and non-obviousness . Canada does not have a specialized patent court, and the volume of litigation is insufficient to yield a finely developed body of law. Few judges have a technical or scientific background; fewer still have a background in patents.

This session will discuss how these issues have played out in several recent high profile cases and their implications for Canada’s science and innovation landscape.

In a modern agricultural context, the patenting of higher life forms is controversial, and has been the subject of two high-profile SCC decisions: Harvard College v. Canada (Commissioner of Patents) (the “Harvard Mouse” case), and Monsanto Canada Inc. v. Schmeiser (2004), which centered on patent infringement for genetically-engineered (GE) canola.

The 5-4 decision in the Schmeiser case led to concerns amongst anti-GE and some civil society and consumer groups about the ability to patent “the genes of life” and quasi-related unease about corporate concentration in the agriculture and food sectors. However, stakeholders in the agricultural biotechnology sector received the decision positively, as it affirmed the validity of their gene and cell patents and demonstrated that they could successfully seek redress for infringement.

In the Amazon.com case, the Federal Court of Appeal faced the issue of patent-eligibility of business methods, particularly those implemented by software applications. Although there had been hope that the Amazon.com case would bring clarity to the law, the outcome has been enigmatic. The patenting of business methods was also the subject of considerable debate in submissions before the House of Commons Standing Committee on Industry, Science and Technology for their March 2013 report on the Intellectual Property Regime in Canada.

Recently, the courts have had difficulty with utility. Odd decisions in the pharmaceutical field are now yielding equally surprising results in other business sectors. These cases and other practice changes have altered the balance between inventors and the public, and their effects now working their way through the economy."

Speakers

Co-founder
Abaunza McLeod LLP – Intellectual Property Law Canada

Albert L. Abaunza graduated from Université de Montréal in 2006 with a B.Sc. in biomedical science. During his undergraduate studies, Albert worked as a research assistant in pharmacology and biochemistry, where he studied the effects of reactive oxygen species (ROS) on the catalytic activity of the hepatic cytochrome P450 and participated in a high-throughput screening project for protein-protein interactions in a yeast model by using Protein-fragment complementation assay.

While studying biomedical science, Albert became involved in the planning and orchestration of the McGill Bioethics Conference for two consecutive years as VP Administration and VP External

After graduating in 2006, Albert decided to pursue his law studies at the Université de Sherbrooke and at Queen’s University where he was admitted to the national joint program and was granted a dual law degree; a Bachelors of laws (LL.B.) and a Juris Doctor (J.D.), in 2009 and 2010, consecutively.

During his last year of law school, Albert was concurrently focused on a specialization in health technology assessment and management. After having successfully completed the international program in four different cities; Barcelona, Rome, Montréal and Toronto, Albert was granted a M.Sc. degree in health technology assessment from Université de Montréal in 2012.

In 2013, Albert joined forces with Dr. Mark C. McLeod and co-founded Abaunza McLeod LLP – Intellectual Property Law Canada, where together and with the support of other well-seasoned IP practitioners, they provide a full spectrum of intellectual property law services in English, French and Spanish.

Partner
Bereskin and Parr

Mr. Bousfield has significant experience in the railroad industry and has also obtained protection for consumer goods, oil field equipment, and a wide variety of mechanical and electro-mechanical other devices. He is a member of the Intellectual Property Institute of Canada’s (IPIC) Information Technology Committee.

Prior to being admitted to the bar, Mr. Bousfield obtained significant industry experience working as a designer and test engineer for an electronic equipment manufacturer and for an aircraft company.

Senior Partner
Norton Rose

Brian Gray’s practice at Norton Rose focuses on litigation and dispute resolution in patent, copyright, trade-mark and advertising matters. He provides strategic advice concerning intellectual property matters and advises on the intellectual property and technology aspects of transactions.
Mr. Gray has taught patent and trade-mark law at the University of Toronto and has taught copyright law at McGill University. Mr. Gray has authored numerous papers on patent, trade-mark, trade secret, copyright and technology transfer.

He is on the editorial board of World Intellectual Property Report, Federated Press Intellectual Property Quarterly and of World E-Commerce Report and has also served on the editorial board of the Trade-Mark Reporter.

From 1989 to 1999 Mr. Gray was a member of Canada’s National Biotechnology Advisory Committee, appointed by the Minister of Industry to advise on science policy. He has also served as counsel for the intervener - Canadian Banking Association and the Canadian Life and Health Insurance Association - in the Amazon case.

James McGill Professor
McGill University - Faculty of Law

Dr. Richard Gold is a James McGill Professor at McGill University’s Faculty of Law where he was the founding Director of the Centre for Intellectual Property Policy. He is also an Associate Member of the Department of Human Genetics at McGill's Faculty of Medicine. He teaches in the area of intellectual property and innovation. His research centres on the nexus between innovation systems and intellectual property,with an emphasis on the life sciences.

Professor Gold has provided advice to Health Canada, Industry Canada, the Canadian Biotechnology Advisory Committee, the Ontario Ministry of Health and Long-Term Care, the Organisation for Economic Cooperation and Development (where he was the lead author of the OECD Guidelines on the Licensing of Genetic Inventions and a report on Collaborative Mechanisms in Life Science Intellectual Property), the World Intellectual Property Organization, the World Health Organization and UNITAID.

His research has been published in high-impact journals in science, law, philosophy, international relations including Nature Biotechnology, The Lancet, PLoS Medicine, the McGill Law Journal, Public Affairs Quarterly and the European Journal for International Relations.

Senior Policy Officer
Agriculture and Agri-Food Canada

Giuliano Tolusso is a senior policy officer with Agriculture and Agri-Food Canada in Ottawa. He has spent most of the past decade at AAFC working on biotechnology and emerging technology issues from a number of perspectives including communications and issues management, intellectual property policy and international trade policy. Prior to joining AAFC in 2001, Giuliano was a marketing and communications executive for a number of trade and professional associations in Toronto. He holds a Bachelor of Journalism degree from Carleton University in Ottawa.

At last year’s CSPC, he organized and moderated a provocative panel discussion entitled Talking to Canadians about Biotechnology: Should we wake up the neighbourhood?