Michelle Mao is a 2L JD Candidate at Osgoode Hall Law School and an IPilogue Writer.

The distinct smell of brown sugar and cinnamon wafting out of your grandma’s kitchen every time you visit is unique and unmistakable to you. You claim that it is “one-of-a-kind" and it invigorates you to power through until your next visit to grandma’s house. These features of grandma’s cookies give you a bright idea – what if you patent grandma’s cookies? After all, grandma is a sweet old lady who deserves to live a lavish life in retirement and could use the extra money.��

According to the , patents must meet three criteria: (1) new – first in the world, (2) useful – functional and operative, and (3) inventive – showing ingenuity and non-obvious. To you, the cookies are unique (potentially filling the novel requirement), they serve a functional purpose – of filling you with motivation (useful), and no one has figured out how to replicate her secret recipe (non-obvious). So, what are the chances of patenting grandma’s secret recipe?��

Theoretically, it is possible for recipes to be patented if they meet the above criteria, qualifying under the as a “”. However, recipes have , often failing at the non-obvious or novel stage. Patents for recipes that fail at the non-obvious stage are typically recipes with a simple composition, making them easily decipherable. Patents for recipes that fail at the novel stage are typically those for a commonly made dish, where simple adjustments to the proportion or ingredient amounts are not patentable. The unpatentability of these factors is based on practicality, where someone cooking a cultural recipe or using more seasoning is not suddenly and unknowingly infringing on a newly claimed patent.��

Perhaps a suggestion for Grandma could be to patent her unique process of creating such life-changing cookies, whether it is the process of dough-making or cookie-baking. As technology continues to develop, the incorporation of novel techniques such as dehydration of ingredients, nitrogen cooling, and others, this new way of patenting cooking processes may develop. It will be interesting to see how new processes and techniques that change food longevity, cook times, food’s structural integrity, etc. could change the historical patent success rate of recipes. Unfortunately, for now, your grandma can only protect her secret recipes locked away in a box, rather than through patent protection.

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Image by Philip Ezze ()��

Emily Xiang is an IPilogue Writer, President of the Intellectual Property Society of Osgoode, and a 2L JD candidate at Osgoode Hall Law School.

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What is Bioprinting?

is an innovative technology that uses cells, organic materials, and biological molecules to create complex models and structures. Its is forming organic tissue constructs with a high degree of repeatability, flexibility, and accuracy. Since its first breakthrough in the health and pharmaceutical industries in the 2010s, the application of 3D bioprinting has grown to include , , , , and . In 2021, the global 3D bioprinting market was valued at and is expected to grow from there.

3D Bioprinting in the Cosmetics Industry

The use of bioprinted tissue by cosmetics companies has seen tremendous growth in recent years. In Europe, following the which banned animal testing for cosmetic purposes, cosmetics companies have had to seek alternative methods of ethical testing on varying skin types that would also produce accurate results. ��Moral advantages are not the only kind of benefit that bioprinting technologies can offer. Since human skin is multilayered and comprised of various cell types, 3D bioprinting presents the unique ability to deposit cells in meticulous arrangements that closely resemble actual human skin, resulting in and faster, cheaper, and more effective testing procedures. Since 3D bioprinting entered the marketplace, global cosmetic leaders such as and have invested significantly into the R&D of bioprinting technologies, with a view to revolutionize the practice of dermatology in the future.

3D Bioprinting & Canadian Patent Law

From an intellectual property law perspective, could 3D bioprinted material be patented? While the scope of patentable subject matter in Canadian patent law is generally considered ��quite broad, products and techniques related to bioprinting between the living and the non-living, which could complicate matters. In , the Court held that “higher life forms,” such as genetically modified plants or animals, were not patentable but affirmed the patentability of the genetically modified genes in question. Since the decision, the Canadian Patent Office has more clearly delineated the distinction between higher and lower life forms in the , which defines lower life forms as unicellular and higher life forms as being multicellular. In Chapter 17.02.02 of the MOPOP, the Patent Office states that “[a]rtificial organ-like or tissue-like structures that are distinct from true tissues and organs and that have been generated by human intervention through the combination of various cellular and/or inert components may be considered, on a case-by-case basis, to be manufactures or compositions of matter with the scope of section 2 of the Patent Act.”

While some ambiguity remains regarding the patentability of bioprinted materials, there has been some success in patenting associated with bioprinting. Despite these patents, however, bioprinting technology can still be said to be distinct from, for example, more cutting-edge , for which the core of the technology can be patented and can thereby lead to intellectual property disputes. In contrast, the core elements of bioprinting derive from that are already free from patent protection, providing innovators working with bioprinting technology some more leeway to appropriate the existing methodologies in the field.

Conclusion

While cosmetics companies constitute some of the more recent actors to leverage the new technology, bioprinting has gained in the industry in recent years, with interest no longer being restricted to academic circles but also gaining traction in the marketplace. As the research and development of 3D bioprinting continues to evolve, the need for the law to take a more explicit stance on the subject matter will become increasingly apparent.

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Prof David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and Emeritus Professor of Intellectual Property & Information Technology Law at University of Oxford. This is an abstract from Prof Vaver's recently published article which will also appear in the Intellectual Property Journal. You can read the full article either on or .

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? A blockchain is a digital, append-only ledger which provides transactional security to disparate parties. It is a decentralized method of storing information on a ledger that can be added to in “blocks” of data, without the possibility of previous blocks in the chain being tampered with. Adding data to a blockchain requires a “consensus” of all computers in the block chain network. This makes a blockchain decentralized, in that one computer acting alone cannot control the information put into a block, which in turn acts to deter data tampering. This all adds up to create an instantaneous and easily reviewable ledger that is not based on a system of trust. Blockchain allows for digital transactions to take place even in a complete absence of trust between parties, as it displays to all other members of the blockchain if an asset or payment have been transferred in a transaction.

Putting their money where their mouths are, so to speak, spokespeople for Walmart are among the biggest proponents for replacing existing systems with blockchain technology. to allow for a greater level of secure, cooperative record-keeping between separate organizations is one of its biggest draws for companies, who are entering the digital age. As stated by Walmart’s Vice President of Food Safety, Frank Yiannas “What we hope to do with blockchain is bring all food safety system stakeholders and collaborate so that we do it one best way. We can do it very quickly and efficiently.”�� The decentralized and instantaneous nature of a blockchain ledger means that the entire supply route of an item can . At the same time, the innate security of blockchain systems and their resistance to hacking or tampering make them ideal for .

The variety of patents held by Walmart alone shows that blockchain has applications far larger than just as a base for cryptocurrencies. Blockchain can and is being used for any number of data-management activities, and, like any other software, there is potentially a lot of value in patenting blockchain’s most useful applications and variations. �� before it, once viable and efficient uses for blockchain technology find niches in the structures of major corporations, the foundation will be laid for widespread dispersion of blockchain technology into everyday life.

With blockchain patents filed worldwide in 2017, the filing rate of these patents is . Canadian jurisprudence on patenting software comes from a combination of statute and common law. Section 2 of the describes a patentable invention as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. This definition was then interpreted by Sharlow J.A. in the 2011 Federal Court of Appeals case of to state that a mathematical formula, like a computer algorithm alone, is unlikely to be a patentable invention. However, if the algorithm is “only one of a number of essential elements in a novel combination” of a valid patent claim, then a patent may be given to the algorithm. Therefore, if it is an essential part of a broader valid patent, then a blockchain-based system, such as Walmart’s food-tracking system, may be patented.

Luckily for late-to-the-game software developers, the core of blockchain technology has been , in both Canada and the United States, since the publication of the technology by the (probable pseudonym) author Satoshi Nakamoto in 2008. This gives programmers a large amount of leeway when working from the base code, as simply using the base code does not interfere with anyone’s intellectual property rights. Therefore, in Canada, patent rights can only possibly be granted for “new and inventive improvements or implementations” to blockchain, so long as the blockchain software “”.

Although blockchain is a very new technology, and software patents themselves are in a nascent stage, worldwide trends show that blockchain patents are on the horizon. With the size of the investments being made in blockchain technology and the nature of those investing corporations, Canadian patent law will have many opportunities to be developed and refined. While time will tell if these investments will bear fruit, or if we’re in the midst of a “”, one thing is for certain, patented blockchain technology is coming to a store near you.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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Cannabis breeding is a��. It requires patience, sensory acuity, long-term planning, and a working knowledge of genetics. Through their work, breeders can greatly enhance the commercial value of their product. They can create plants that give greater yields, disease resistance, hardiness, and, of course, drug potency, among many other desirable and profitable traits.

Cannabis breeding can also be expensive. To recoup expenses, developers ��rely on profits from their new strains. If there is nothing preventing competitors from selling the developer’s strain, without first paying the developer for the research and development needed to create the strain, then there is very little financial incentive to develop these new breeds. If Canada is to encourage better, more efficient, and more profitable strains of Marijuana, then the government will need intellectual property laws that can protect the investments of time and money that Cannabis breeders put into their work.

��for novel plant breeds themselves, a legal conclusion which stems����In the landmark 2002 Supreme Court patent case of��Harvard College v Canada (Commissioner of Patents), it was decided that “higher lifeforms”, which include plants, could never be subject to a patent protection per the��Patent Act. This ruling was complicated two years later in��Monsanto Canada Inc. v Schmeiser.��Schmeiser’s ruling decided that, while it was true that a plant itself could not be patented, a man-made gene within a plant could be. If a plant contains such a modified gene then, for all practical intents and purposes, the plant itself could be patented because “where a defendant’s commercial or business activity involves a thing of which a patented part is a significant or important component, infringement is established”.

While these rulings may satisfy Monsanto and the other members of the (extremely limited) genetic-insertion community, they are of little recourse to those who breed new plant strains through more traditional means, like cross-breeding. Patent protection would therefore benefit only the most high-end marijuana breeders.

All hope is not lost, however, for marijuana breeders who don’t engage in genetic insertion, thanks to the 1990 Federal��Plant Breeders Rights Act (PBRA). This Act����to plant breeders if they can demonstrate that a strain they have created is “new”, clearly distinguishable from all existing varieties, stable in its essential characteristics, and sufficiently homogenous across plant generations. To date, a handful of marijuana strains have been protected through the��PBRA, and it has the potential to give some relief to breeders.

��of Plant Breeders Rights is that the protections they give are weaker than those protections given by the Canadian patent regime. A patent grants the right to prevent others from using, selling, offering for sale, and importing the patented invention into Canada for a period of 20 years. By comparison, Plant Breeders Rights exclude others from selling, producing, exporting, importing, making repeated use of, conditioning, and stocking the seeds of the plant, also for a period of 20 years. While these collections of rights are superficially similar, Plant Breeders Rights come with some major exceptions not shared by a patent. Anyone can use the seeds and product of a protected plant for private non-commercial purposes, for experimental purposes, and for breeding purposes. At the same time, the “farmer’s privilege” allows for farmers to replant the seeds from plants they have obtained legitimately in perpetuity.

While Plants Breeders Rights are a good start, full patent protection is necessary if Canada wants to fully encourage large-scale development and experimentation in marijuana breeding. Full Patent protection would be an excellent way to encourage the investment of time and money that breeding requires, and would allow for smaller corporations to protect their investments better than the current gene-insertion protections. While it is true that this could result in initial monopolization of certain desirable strains, the benefits of breeding protection would extend to the cannabis-enjoying population after just 20 years. Extending these rights would not be unprecedented, as plant strain patents are available both��, and in the����Canada should take example from the successful plant strain patents found in the international community, instead of letting a potentially valuable incentive for agricultural development go up in smoke.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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Per the Federal Court’s decision in ,��the Promise Doctrine holds that if a patent application promised a particular utility, it was necessary to prove that function in order to acquire the patent. Furthermore, in the absence of any promised utility, proving even a miniscule amount of utility is enough to be found patentable. Since patents are deemed invalid if there is an insufficiency of utility under s. 2 of the patent act's definition of 'invention' and per paragraph 46 of , the effect of the Promise Doctrine was to substantially raise the bar for applicants that alleged benefits to their inventions by denying patent protections for those who failed to meet the stated promises.

In court, the series of decisions and appeals in the AstraZeneca Canada Inc v Apotex Inc suit focused on whether the Promise Doctrine should be used to find AstraZeneca’s ‘653 patent – pertaining to optically pure salts of the (-) enantiomer of omeprazole, esomeprazole – invalid because the patent promised more utility than it could deliver.

At the , Justice Rennie found two alleged utilities: using esomeprazole as a proton-pump inhibitor (effectively reducing stomach acidity) and having superior pharmokinetic and metabolic characteristics so that its therapeutic profile in clients would be more stable. By applying the Promise Doctrine, the ‘653 patent was found invalid for not meeting the utility requirement of of the Patent Act for the alleged superior therapeutic profile, despite the utility of esomeprazole being proven as a proton pump inhibitor. At the , the judgment of the lower court and the applicability of the Promise Doctrine were affirmed.

However, the decision from the SCC demonstrated that the Promise Doctrine and the analyses of the lower courts run contrary to the form of the Patent Act by conflating the requirements set out in s. 2 and s. 27.3. demands there be some useful aspect of a creation for it to be regarded as an invention at law. If some usefulness is present, the invention must be disclosed as specified in of the Act in its patent application. In , Dickson J clarified that the usefulness standard set out in s. 2 of the Patent Act acts as a “condition precedent to an invention” whereas s. 27.3 merely sets out disclosure requirements that are to be interpreted independently of s. 2. So, the Promise Doctrine goes against the independent interpretation of these two sections of the Act by demanding that the utility requirement set out in s. 2 be fulfilled or predicted at the time of filing, or otherwise find the invention pre-condition for patentability vitiated.

The SCC noted that the Promise Doctrine is also at odds with the Act where multiple utility promises are made. Under the Doctrine, all utility promises would have to be satisfied for the usefulness threshold in s. 2 to be met. However, the opinion of the SCC is that any single use “that is demonstrated or soundly predicted by the filing date” would be adequate to satisfy the demands of s. 2. Requiring all utility promises to be met, would be “unfair” and can lead to “otherwise useful invention[s] to be deprived of patent protection” simply because some promises were not demonstrated or predicted.

Given the highly experimental and sometimes tangential nature of innovation, a lack of protection for inventions that have managed to achieve some, but not all, of the promised utilities highlights the the Promise Doctrine appears to have on research and development. Citing the work of , and , , the SCC found that “inventions are like a many-faceted prism: multiple claims… covering all facets are allowed in the same patent if a single general inventive concept links them.”

Considering a multiplicity of promises is especially important in pharmaceutical development and organic syntheses where broad, overarching concepts like an improved therapeutic profile may be anticipated, but not proven in full. The possibility of off-target therapeutic effects or side-effects can make an exacting prediction of utility difficult and, under the Promise Doctrine, may bar legal protection. After all, as the SCC established in ., “the patent regime has a dual purpose – to incentivise [creation] and to encourage inventors to publicly disclose [their knowledge] for society’s benefit.” If the bar for acquiring a patent is set too high, some inventors may get cold feet.

Dominic Cerilli is the IPilogue content editor and social media coordinator as well as a JD candidate at Osgoode Hall Law School.

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What is CRISPR?

Some scientists believe the design and development of new biomolecules is as much an art as it is science. The ��discussed, and used, by Dr. Pearlman capitalizes on an adaptive immunity system found naturally in bacteria and archaea that uses clustered, regularly interspaced short palindromic repeat (CRISPER) DNA segments to fend off invading viruses. In naturally adapting to a virus invading the cell, CRISPR associated proteins (Cas proteins) will create a spacer unit of genetic code that is unique to the invading virus and incorporate this spacer into the CRISPR region of the cell’s genome. This unique spacer unit will then be transcribed (that is, converted from double stranded DNA to RNA), associate with Cas proteins to form a functional complex, and then target and inactivate the very same type of virus that led to the creation of the spacer unit.

In the laboratory, genome editing uses the functional complex found in this adaptive immunity mechanism to insert or remove genetic code from the genome of a cell. By attaching a synthetic, guiding portion of RNA (sgRNA) to Cas proteins they can be directed to a portion of the genome, through complimentary base pairing with the sgRNA, where Cas will recognize a portion of the genome and cut it to either insert a new region or to remove a portion and disrupt the expression of a gene. By cutting out sections of DNA a gene can be disrupted and lose its functional expression in the cell. In other words, it will no longer be able to produce the molecular products responsible for its former physical trait. By inserting new regions of DNA, the genome can be expanded to confer resistance to invading pathogens, such as viruses, or to express new protein products that can add or enhance the cell’s function. For example, a new portion of DNA may be inserted that codes for a digestive protein not normally found in the cell and, consequently, grant a new molecular digestive mechanism.

What does Genome Editing have to do with Law?

Dr. Pearlman noted that there has been an explosion of scientific literature covering the CRISPR system of genome editing since 2010 and it appears that the momentum will only grow in the coming years. The ability to edit genomes can allow for the expression of new protein products that can be of great commercial value as well as pave the way for new medical treatments that circumvent traditional pharmaceuticals. Additionally, Dr. Pearlman noted that the CRISPR system can be used to produce heritable traits – that is, changes that can be transferred from a parent to their offspring. With this sort of molecular modification becoming more pragmatic, it becomes paramount to have a thorough understanding of the biochemical expression pathways that govern genomic expression to keep an eye on the ethical implications of modification. If human genome editing were to become available, should those with advantageous genomic modifications be treated differently by public health systems? To whom should these technologies be made available, if ever? These questions are beyond the scope of current genomic technology but, with the growing pace of CRISPR methodologies, designs may soon start to reach more readily into the macroscopic domain.

What Makes Scientific Designs Different?

With the cost of biochemical research and development increasing and a billion-dollar entry fee for the drug and biomolecular development market it follows that when an industrially relevant molecule is finally created the developer should be able to recuperate their investment and benefit from their work. Normally, the boundaries of property rights require contextual understanding: what is the nature of comparable products, if the new product’s design is generic or obvious, and if the new product can have a place in its intended market. The differentiating criteria of the sciences become pronounced when considering the esoteric nature of the discipline. How can one reasonably expect a thorough consideration of the distinguishing criteria for obscure scientific concepts, like base pair fidelity, when the requisite knowledge is held only by a few people, like Dr. Pearlman, who have committed years, if not decades, to the study? The nuanced nature of genetics can make innovations in genome editing or CRISPR technology appear to be near imitation; however, the modification of a single nucleotide in the genetic code can have a profound impact on the success and possible application of a biotechnology.

Synthesis, Structure, and Industry

What amount of scientific knowledge is sufficient in legal practice? that a special breed of IP lawyer will arise to confront the high demands of contemporary science and technology patents. Considering the high financial stakes and the significant likelihood that a new molecule or molecular technique will fail the requisite safety tests at any of a multitude of stages, a lot of designs are left in the laboratory. A re-engineering of the approach or scrapping the project in its entirety may follow, meaning product patents should not be initiated until after the molecule has been proven safe for its regular use instead of when it is first designed or synthesized in the lab. Additionally, research and development can indirectly prioritize self-benefit over scientific collaboration since scientists rely on design details to learn about their ever-developing field and most details are kept secret until after a patent has been granted.

This is where innovation becomes conservative and structure becomes especially important. Does a single elemental substitution in the genetic code constitute a new product if the application remains the same? What about changing a single gene to modify a physical characteristic that relies on multiple genes? While certain business practices, such as non-competition deals, are commonly found outside of the sciences, unique can arise from small chemical modifications which effectively extend a patent beyond its expiry date through the issuing of a new patent for a highly similar molecule. Furthermore, patents may be sought for generic parts of biotechnology procedures that are nonessential to its action, prohibiting competitors from including strategies in their approach and significantly , or even demolishing, a competing synthesis. Lastly, meeting the testing and safety demands of different communities poses an for introduction into a global market due to different national regulatory standards.

So, What Makes It My Molecule?

The same fundamental concepts that apply to patents outside of genome engineering also apply to those inside the discipline but with a stringent demand to understand the nuances of molecular design. An integration of mechanistic knowledge may prove to be key when evaluating possible distinguishing criteria among patents filed for similar compounds but it is ultimately up to practicing lawyers to integrate sufficient scientific knowledge to accurately capture the scope of their client’s designs.

Dominic Cerilli is the Content Editor for the IPilogue and a JD Candidate at Osgoode Hall Law School.

[1] Dr. Pearlman's talk was organized by The York Collegium for Practical Ethics and The York Centre for Public Policy and Law under the leadership of Ian Stedman.�� Support for the event was provided by IP Osgoode, McLaughlin College, �첥��Ƶ - Faculty of Health, �첥��Ƶ - Faculty of Science, and �첥��Ƶ's Office of the VPRI.

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When an considers subject matter of an application to be an aggregation, the defect is identified under section 28.3 of the Patent Act as being obvious. Obviousness subject matter is broadly described as lacking an . Aggregations are believed to lack an inventive step since the absence of integration between elements makes their results predictable. However, since the patent system is founded on incentivizing the dissemination of knowledge for the advancement of society, should aggregations that lead to advances in social utility be considered defective simply because there is no integration of elements?

A well-known English states that "necessity is the mother of invention". This implies that the driving force for invention is need. In response to this proverb, author stated “I don’t think necessity is the mother of invention – invention, in my opinion, arises directly from idleness, possibly also from laziness. To save oneself trouble.” Neither of these quotes incorporate any consideration of the patent system; however, they point to a flaw in the way obviousness is used to invalidate an application.

(1875) is a U.S. Supreme Court decision on the validity of patent for an eraser fixed to one end of a wooden pencil. In the decision, Justice Hunt writes that “a combination, to be patentable, must produce a different force, effect, or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; otherwise it is only an aggregation of separate elements.” Consequently, the application of a piece of rubber to one end of a pencil was ruled an aggregation. When the eraser is removed from the pencil, the pencil and eraser continue to function as intended. Strictly speaking there is no integration of elements; however, the eraser and pencil when manufactured together produce a product that has a utility greater than the utility of the elements by themselves. In other words, the aggregation produces “a utility step”. A pencil with an eraser attached saves oneself trouble.

As indicated in Article 27 of the agreement, an inventive step is necessary for patent eligibility in member states. Member states adopt their own tests for determining the presence of an inventive step. In the U.S., the use of “” allude to the imperfect nature of its test for obviousness. Secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results. Evidence of secondary considerations can prove an invention is non-obvious even though, in theory, it appears to be obvious.

The ingenuity of an invention is often inextricably linked to its utility. Consequently, separate tests for utility and obviousness present a problem. Utility, after all, is what society needs for the patent system to have value. The current Canadian test for obviousness provided in does not contemplate utility advancements because utility occupies a separate requirement. The test for obviousness contemplates only whether differences between the state of the art and the inventive concept of the claim would have been obvious to the person skilled in the art. Prior to Sanofi, the most recent Canadian comprehensive obviousness checklist was that of Justice Sharlow from , the levofloxacin infringement case. The list incorporates many of the secondary considerations used in the U.S. and is still used in Canadian patent law. However, I believe law on obviousness remains inadequate for to its failure to incorporate utility analysis as a secondary consideration to prove non-obviousness.

Aggregations which produce a utility step suffer from hindsight bias when undergoing the obviousness test. An useful aggregation will tend to look obvious after the fact. Hindsight bias is thought to be safeguarded by viewing prior art through the eyes of a person not having knowledge of the claimed invention. An additional safeguard from hindsight bias requires the Examiner or judge to articulate why it would have been obvious to combine prior art to arrive at the claimed invention. I believe these safeguards to be overly idealistic.

There is a small, but significant, number of that offer protection (also known as petty patents or innovation patents). In the utility model, the stringent requirement of non-obviousness is lowered, or absent altogether, for protection that lasts between 7 and 10 years (depending on the country). I believe the utility model represents a strong compromise between the desire to incentivize improvements for the benefit of society while offering shorter terms of protection to indicate the level of inventiveness does rise to that of a patent. I believe they are a practical solution for utility step aggregations. Canada currently does not offer utility model protection.

Justin Philpott is a JD Candidate at Osgoode Hall Law School. Justin is currently enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

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British Telecommunications (BT) alleges that��on-line services offered by Valve infringe on four U.S. patents held by BT. The patents at trial are broadly worded and could implicate many popular video game, social networking, and video streaming services. If [BT v Valve]��were to succeed,��they would be granted legal authority allowing them police many of the services relied upon by the video game industry, as well as many other popular websites.

David versus Goliath

Valve, founded in 1996, owns and operates ��Steam, an industry-leading software distribution and social networking application for computer gaming.��Steam, released in 2003, commands a near-monopoly over the digital rights management (DRM) and computer game distribution. Despite massive support among developers and gamers alike, ���ٱ𲹳�—a�Ի� �ղ�������—h������ .

British Telecommunications (BT) group is the oldest telecommunications company on the planet, tracing its roots to the invention of the first telephone by Alexander Graham Bell. BT is a leading communications provider in the United Kingdom. According to court documents, BT “,”��in network telecommunications.

What the suit claims

BT argued that Valve continued to operate services at great cost to the patent holder, despite multiple communications asking Valve to stop. The following patents are alleged to have been infringed:

• Communications node for providing network based information service:��

• Method for automatic and periodic requests for messages to an e-mail server from the client:��

• Communications network and method having accessible directory of user profile data:��

• Multi-user display system:��

One can��see��how Valve's services are implicated in these patents. Steam��is a digital marketplace that distributes “”; provides chat services “”; stores “”��for its users; and allows these users to “.”

Valve is far from the only company implicated by the broad language of these patents (and certainly not the most financially successful). Messaging, video streaming, and web marketplaces are endemic to the internet and the tech world. As the patent holder, BT has a choice to enforce the patent against whomever they wish. Why go after Valve?

Possible reasons:

1. This is intended as the first of many similar suits

If the court were to rule in favour of BT in this case—however likely that may be—it would open the door for further enforcement of the strict language contained by the patents-in-suit. If the court accepted the language that “BT has been damaged and continues to be damaged by Valve’s infringement,” and applied retributive, pecuniary damages, this would set a precedent allowing BT to challenge industry leaders’ social media and networking IPs.

2. BT is looking to become involved in gaming, DRM, or streaming

Video games are a multibillion dollar industry. Leading publishers and distributors, like Valve, command the industry’s continually expanding value. Social and competitive gaming services, like Valve's��Steam are at the heart of a parallel, expanding market for “e-Sports”. Video game “sport” tournaments have exploded in popularity and now host regular tournaments each year. Cash prizes range in the tens of thousands of dollars. It is not improbable that major telecommunications companies would keep an eye on this growing market. If BT had any interest in permeating the market, the ability to enforce this patent against Valve could pay serious dividends.

3. A suit against Valve will allow BT to test public opinion

Most computer gamers must interact with Steam.��As a result,����news related to Steam and Valve receives a great deal of attention. The video game consumer base is very large. An accusation against Valve is sure to gain the attention of a large audience, including many people who would not otherwise follow tech news. This is a known tactic within the video game industry to��lobby public opinion.��Kotaku.com has gone so far as to develop a separate ��news page to cover all of the grievances--material and superficial--raised against Valve/Steam.��Targeting Valve is a��sure way to determine if public opinion will allow BT to go ofter other, higher-profile internet services with patent suits (e.g., Facebook, Amazon).

What does this mean?��

Perhaps this can be dismissed as a "patent troll" case. But, granting patent rights to BT in this case might lead to controversial effects. The Trans Pacific Partnership (TPP) (albeit, with rapidly diminishing support). The TPP would permit greater US-based regulation of the public internet. If this were ratified, a decision like that in BT v Valve would support and legitimize BT and the US government's policing of many of the most popular applications and resources on the internet.

Further news related to the suit will follow in the coming months.

Christopher McGoey is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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The validity of a patent can be challenged on the basis of double patenting. In , the Supreme Court noted that there were two branches of this doctrine. "Same invention"-type double patenting [4] asks whether the claims of the later patent are "identical or co-terminus" to an earlier patent, while "obviousness"-type double patenting asks whether a person skilled in the art would find the claims "patentably distinct". Earlier this year, two different federal court judges addressed allegations that Eli Lilly's was invalid due to double patenting of the invention in the earlier . ( [5] and [6]). While both justices ruled in favor of Eli Lilly, they disagreed on the “appropriate date” at which the common general knowledge of a person skilled in the art should be assessed in order to undertake an obviousness-type double patenting analysis.

Both the '377 patent and the '784 patent relate to the compound tadalafil, which is now marketed by Eli Lilly under the brand name CIALIS and used in the treatment of erectile dysfunction (ED). However, it was not always known that tadalafil had such interesting uses, and the compound was initially developed as a treatment for disorders such as hypertension. Both Justice Gleason (Apotex-Tadalafil) and Justice de Montigny (Mylan-Tadalafil) agreed on the construction of the relevant claims in the '377 Patent (a claim for one compound, tadalafil, as a PDE V inhibitor) and in the '784 Patent (a claim for tadalafil as a PDE V inhibitor to treat ED). PDE V is an enzyme which catalyzes a chemical reaction that consumes a chemical that is responsible for, among other things, maintaining an erection. Tadalafil blocks this enzyme from functioning and thereby prevents the loss of an erection.

If, as of the "appropriate date", a person skilled in the art would have known that a PDE V inhibitor could be used to treat ED, then the two inventions would not be patently distinct and the '784 patent would be invalid for obviousness-type double patenting. The Court therefore needed to answer the question of what "appropriate date" should be used in the assessment.

In Mylan-Tadalafil the judge held that the "appropriate date" was the priority date of the earlier patent (January 21, 1994). At this point the evidence showed that the skilled person, although aware of the role of PDE V in cardiovascular disorders, would not have known about its role in erectile dysfunction. De Montigny rejected the priority date of the later patent (July 14, 1995) as the "appropriate date" for two reasons. First, such an analysis would simply become a question of whether the second patent was [7] without the patentee being able to rely on the one-year applicant disclosure grace period.[8] Second, when considering "obviousness"-type double patenting, the question is whether the later patent "disclose[s] novelty or ingenuity" over the earlier patent. If it does, then a second patent is justified.

However, in Apotex-Tadalafil justice Gleason found there was a "sound argument" for the selection of the priority date of the second patent (July 14, 1995) as the "appropriate date". Choosing the later date would guard against a patentee abusing the between filing a patent application and it becoming available to the public. If the common general knowledge were to develop in such a way as to suggest an additional use for the patented compound (in conjunction with the confidential information in the patent application) the patentee would have the advantage of filing a second patent that would have been obvious had the 18 month delay not been in place.

In the end, the issue became moot as the only piece of prior art published between the two dates (the '902 application above) turned out not to be relevant. However, if the issue were to be decided, I find the reasoning of Justice de Montigny more compelling. While the scenario described by Justice Gleason could occur, the patentee would run the risk of a competitor independently discovering the information in the first patent and filing an application for the new use themselves.

[1] Pioneer Hi-Bred Ltd v Canada (Commissioner of Patents), [1989] 1 SCR 1623.
[2] Patent Act, RSC, 1985, c P-4 s. 42.
[3] Whirlpool Corp v Camco Inc, 2000 SCC 67 at para 63. [Whirlpool]
[4] Whirlpool, at paras 64-65.
[5] Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC, 2015 FC 17. [Mylan-Tadalafil]
[6] Eli Lilly Canada Inc v Apotex Inc, 2015 FC 875. [Apotex-Tadalafil]��������������������������
[7] Patent Act, RSC, 1985, c P-4 s. 28.3. For the Supreme Court of Canada's approach to the non-obviousness requirement for a patent see Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61.
[8] Patent Act, RSC, 1985, c P-4 s. 28.3(a). For a summary of the one-year grace period for applicant disclosure see .

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