Androu Waheeb is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Gone are the days when businesses were valued by their ability to market tangible goods. and reported that intangible assets (IP and data) are crucial to wealth creation and represent the “world’s most valuable business and national security assets.” In 2019, they accounted for 91% of the S&P500’s value. Canada has struggled to meaningfully partake in this intangible economy.

Canada’s patent portfolio is incommensurate with its enviable workforce and publicly funded research. Domestically, Canadian patent filings decreased by 3% annually and 7% in the last ten years. Non-resident filings swelled by 1% and 4%, respectively. In 2019, Canadians contributed 12% of the patents filed in Canada, whereas Americans accounted for half. Contrarily, reports that Americans owned 60% of patents filed in the USA.

Internationally, Canadian patent filings decreased after 2012, stagnated after 2014, and are geographically clustered. In 2018, 2/3 of Canadian international applications were filed in the USA – a meagre 2% of applications filed there.

Canada’s struggle to protect ideas has dire economic consequences. As Canada’s IP footprint diminishes, Canadian corporate operations face increasingly onerous restrictions, with portfolios too anemic to leverage. Consequentially, our GDP per capita has declined by 3% since 2010 and job quality by 15% since the 1980s. New jobs generate 2/3 of the income they did in the 1980s.

and blamed this on deficiencies in IP awareness, access, resources, expertise, capacity, laws, and funding. Neither report performed competent modelling or statistical analysis, which led to inadequate recommendations. To implement those recommendations, Canada developed the ; Ontario established the and .

Meanwhile, Peter Nicholson of the blamed Canada’s inability to foster and retain innovative corporations. The technology sector, a driver for innovation, contributes only 5% of the . Conversely, the 75 technology corporations in the constitute 1/3 of the index. Without innovative corporations to develop IP, Canada will never amass the portfolio it deserves. Public funds and talent earmarked for innovation will benefit other economies to the detriment of our own, cementing Canada as an innovation farm for hire.

Innovation emigrates from Canada because of what calls its “buy versus make” economic structure which results in passive posturing and ambivalence about market dominance in Canadian C-suites. Canada’s refusal to acclimate to new global economic realities disincentivizes local innovation independently of the patent system, and the “trend of investment in innovation is not encouraging.”

Canadian innovations’ short-lived victories exemplify this. and revolutionized telecommunications, yet their failure to continue innovating led to their demise. Canada’s abandonment of the shuttered .

Canada must foster a fertile corporate environment and broad innovation incentive structures to fend off the pending economic degradation. All policy instruments must be recruited, including taxation, trade, and regulation. Unfortunately, the current strategy of developing IP awareness, access, resources, and law alone will not suffice.

The post Like a Moth to the Flame: Attract Corporations and IP Will Come appeared first on IPOsgoode.

Luna Li is an IP Innovation Clinic Fellow and a 3L JD Candidate at Osgoode Hall Law School.

Prior to the Covid-19 pandemic, academic discussions indicated that artificial intelligence (AI) would signify with tangible economic benefits and . With remote work becoming the , there is a growing reliance on digital technologies that lack sufficient transparency and . Nowadays, privacy concerns exceed .��

With more businesses developing and using AI-based automated decision-making (ADM) systems, algorithmic discrimination (at , , or ) has been in the spotlight (in both the public and governments’ eyes). For instance, ADM systems may lead to bias against marginalized groups based on discriminatory historical data. Algorithms can adversely affect vulnerable populations through , even excluding protected characteristics. Specifically, .

This article summarizes recent global privacy regulations focusing on algorithmic management.�� AI developers, licensors and licensees may benefit from reviewing these regulations and the business implications following the summary table.

:

Ethical AI Assurance

There are rising requests for AI providers/developers to represent or warrant that the ADM systems were developed ethically. The company using AI systems may need to maintain and adhere to ethical AI policies and data control procedures according to applicable law in the jurisdiction.

Risk Allocation

Algorithmic bias may arise discriminatory historical data and proxies (through machine learning). It is thus crucial to clarify a proper risk allocation to ensure the right party is liable for monitoring and acting on algorithmic issues as they appear. The Canadian legal regime concerning AI currently remains untested. Therefore, parties may clarify expectations on AI ownership and data-use procedures to engage relevant contract law protections.

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Photo by Ståle Grut ()

Claire Wortsman is an IPilogue Senior Editor and a 2L JD Candidate at Osgoode Hall Law School.

As Toronto museums once again, their only option to stay “open” is to turn towards the digital. Toronto museums are not alone, although perhaps their struggles are more drawn-out; museums and art galleries . have also faced physical closures due to lockdown restrictions. According to , more than 85,000 museums worldwide (nearly 90% of museums surveyed) have closed their doors. In 2020, visitor figures for the world’s top 100 art museums by 77%.

In staying “open” virtually, museums and galleries have their online presence by producing virtual tours and immersive experiences for remote viewing. Many museums have made high-resolution images of their collections available online, including the Victoria and Albert Museum, whose hit a level of audience engagement in 2020. New York art attorney Amelia K. Brankov that museums can ensure compliance with copyright legislation while protecting against the risk of liability resulting from third-party actions by providing an appropriate “terms of use” section on their website.

For North American museums with works still under copyright, the 2017 Guidelines for the Use of Copyrighted Materials and Works of Art by Art Museums by the Association of Art Museum Directors will come in handy. However, many of the masterpieces housed by museums are in the public domain. Copyright subsists in until 50 years after the creator’s death and in the . and . until 70 years after the creator’s death (although, per the terms of the Canada-greement, Canada will bridge that 20-year gap). Yet, in many cases, museums continue to profit off of and control these works.

On the one hand, licensing deals made possible by control over artistic works offer an important source of revenue for museums struggling during, or in the wake of, mandated closures. On the other hand, some museums’ practice of reappropriating works in the public domain by claiming copyright protection for their reproductions, thereby artificially extending the duration of copyright protection. Further, museums risk being “hypocritical” when they promote the commercialisation of their collections while banning usage by others.��

In 1972, art critic John Berger , “For the first time ever, images of art have become ephemeral, ubiquitous, insubstantial, available, valueless, free.” Taco Dibbits, director of collections at the Rijksmuseum in Amsterdam, that the museum allows audiences to download high-resolution photos of its collections: “If they want to have a Vermeer on their toilet paper, I’d rather have a very high-quality image … than a very bad reproduction.”

The question remains whether Vermeer-covered toilet paper marks a problem. The debate of who, if anyone, should have control over cultural artefacts in the public domain was recently reinvigorated when the Louvre museum and Uffizi Gallery to sue Pornhub for turning works by painters Titian and Courbet into pornography without authorization. As , it is worth noting that Pornhub is at the center of of hosting and profiting off videos of rape, incest, and child abuse. Those who criticize the company, and any association with it, may have better grounds to stand on than moral outrage over pornography.����������������

Moral rights the right to the integrity of the work and attribution in reasonable circumstances. Museums in France claim perpetual moral rights of an author’s work. In Italy, the museums’ permission to use images from their collections for commercial purposes. On these bases, the Louvre museum and Uffizi Gallery, based in France and Italy respectively, threatened to bring legal action against Pornhub. This is the same Louvre that launched “a flurry of brand partnerships” in 2021 with brands ranging from to . This is also the same Uffizi that has taken to to depict scenes ���dzٳپ����������’s Venus running away from tourists attempting to take selfies with her. Would Botticelli approve more of his works appearing on TikToks, phone cases, and graphic tees than pornography? And the ultimate question: Who’s to say?

So, what can we expect as the COVID-19 pandemic enters its third year? The best answer I have found is : the only certainty is that nothing is certain. Despite this, the museum directors and head curators that Cheshire spoke to are confident in their ability to adapt to the changes that 2022 will bring. Director of the UCCA Center for Contemporary Art Philip Tinari , “It’s a question of pricing in some uncertainty to your planning.” Another explanation for the confidence of directors and curators going into the new year is the and the of global sales of licensed goods and services, particularly in art.

The post When Doors Close, A Market Grows: Museums, COVID-19, and Cultural Digitisation appeared first on IPOsgoode.

Junghi Woo is an IPilogue Writer and a 3L JD Candidate at Osgoode Hall Law School.

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The 2021 Innovation Economy Council (“IEC”) Roundtable an exciting discussion around the commercialization of intellectual property in Canada. IP rights can be incredibly important to a business’ corporate strategy both during and after product development. Opening up a corporation’s IP can even be advantageous in fields such as quantum computing.

Several leading professionals provided their unique perspectives on the topic: Rhonda O’Keefe (VP, Intellectual Property & Contracts, NGEN), Darren Anderson (CEO, Vive Crop Protection), David Asgeirsson (Manager, Partnerships & IP, Xanadu), Domenic Di Mondo (VP, Technology & Business Development, GreenMantra Technologies), Mike Wessinger (CEO, PointClickCare), Krista Jones (VP, Momentum, MaRS), Frank Rudzicz (Director of AI, Surgical Safety Technology), and George Tsintzouras (CEO and co-founder, AlertLabs). The panel was hosted by Manjula Selvarajah (Journalist & Tech Columnist, CBC Radio).

Though many questions were raised, two in particular stuck out: 1) why are so many patents held by venture-capital-backed Canadian startups in foreign hands, and 2) is this concerning?

What Role Does IP Play In Corporations?

While many may assume that patents are the only and most effective way to protect a corporation’s IP, this may not hold true for every product. For example, although Di Mondo uses patent protection in his company GreenMantra Technologies, he also leverages trade secrets. Patent protection and trade secrets provide different types of protection, depending on the goal. When applying for a patent, Di Mondo recommends asking why and determining how to maximize the value of such protection. Companies must consider the substantial time and money required to obtain a patent, and if it fits within their business strategy. Alternatively, protecting IP with trade secrets requires a plan on how the trade secrets will be effectively protected. This involves deciding how to collect and store the data, determining who has access to company trade secrets, and drafting confidentiality agreements.

For some industries, patents are essential. As Anderson emphasized, since patents are more IP-focused and highly regulated, most of the value and growth of his company Vive Crop Protection is derived from its patent portfolio.

On the other hand, technology industries, such as software providers, barely touch on patent registration. Wessinger explained that a company would have to spend too much money and time in patent registration to be worth it. The technology industry, especially software, moves too rapidly for patent protection to be effective. Barrie McKenna, author of the IEC reports, added that companies do not patent because their products are not so different than others in the marketplace, or they cannot be bothered by the timely expense when the secret to their success is their customers. In contrast, Wessigner’s company, PointClickCare, mostly focuses on copyright and trade secrets and so it invests most of its time and resources into Research and Development to stay ahead of the competition.

Small and medium-sized enterprises (“SME”) may not be aware of their IP rights and the steps they can take to protect them. A recent report to the Government of Ontario by the Expert Panel on Intellectual Property

The Current Situation

Since 2017, According to the 2021 IEC Report,

Why Are Foreign Hands So Full?

The IEC report found that the lack of Canadian patent ownership is . Financing is incredibly important for startups to scale up and commercialize their innovation, and if they cannot find sufficient support in Canada, they must look elsewhere. This is one of the many reasons why Canada has become a source, but not a destination, for innovation.

As shown through the many takeovers happening in Canada, talent is clearly not an issue. What is missing are the anchor companies and investors that would support Canadian SMEs to their later-stage growth.

Should we be Concerned About Increasing Foreign Ownership?

��Jones commented that to realize the economic benefits of Canadian innovations and protect the innovative work developed within Canada’s innovation ecosystem, national ownership may be essential in certain instances. To encourage national ownership, companies need the ability to remain headquartered in Canada with the support of Canadian acquirers.

On the other hand, while Tsintzouras’s Alert Labs has U.S. ownership, he still keeps his operations based in Canada. “We remained a Canadian company, we remain here, we still employ people here, we still grow, but we looked at what the best chance for our technology to make it to market and grow in scale,” commented Tsintzouras. He also highlighted a major aspect that is often overlooked when examining foreign takeovers: the company’s access to the U.S. owner’s network. The connections that the U.S. owners provided Alert Labs significantly contributed to its ability to enter certain markets and capitalize on certain opportunities. Rudzicz agreed and claimed that foreign ownership would not be a problem if the people and data stayed in Canada post-takeover.

So, What’s the Answer?

To take advantage of developing Canadian IP, we need to support IP commercialization, not or patent sales to prevent foreigners from acquiring Canadian IP. ��

In achieving this goal, Canadian policymakers play an important role. Their in encouraging Canadian buyers, such as tax breaks and grants, have proven successful. However, the current numbers show that we need more sustained support for our scaling companies. ����

Overall, further supporting national IP commercialization instead of penalizing foreign takeovers seems to be the answer. Or perhaps Canada can take Alert Labs’s approach and encourage foreign takeovers but put policies in place to encourage growth and development within Canada. Whatever the approach is, we must act quickly as these takeovers will only increase Canada’s ever-growing opportunity costs.

The post Summarizing the 2021 Innovation Economy Council Roundtable appeared first on IPOsgoode.

Mitacs designed the BSI program for students to find employment this summer and to help participating partner organizations to restore or modify their business operations in response to the COVID-19 pandemic. This is the first year that Mitacs will run this program. Our students will be able to further their legal knowledge beyond the classroom through practical work on real world projects.

Here is some more information about each project:

3D Bridge Patenting and Commercialization Research

has developed a secure digital medication platform through which health practitioners and other authorized care providers can connect with patients remotely. The device will help to ensure that the medication is properly administered to patients, specifically the elderly, patients with comorbidities, and those who take addictive or high-cost medication. Krystel Ametepeh, 1L student and IP Innovation Clinic Fellow, will work under the supervision of Karima Bawa, CEO and in-house lawyer of 3D Bridge, to provide legal research services in intellectual property, health and privacy law and to address the legal requirements associated with commercialization amidst this product’s pre-commercial rollout.

Innovative Educational and Marketing Tools for Prospective IP Rights Owners (Bereskin & Parr)

(B&P) has struggled to market their services and educate clients without their usual in-person events. With funding from Mitacs, B&P will hire Bonnie Hassanzadeh, 2L student and IP Innovation Clinic Fellow, to create educational and marketing tools for various purposes, including training for new staff and educating prospective and existing clients. Under the supervision of B&P Partner Reshika Dhir, Bonnie will also research marketing strategies about tailoring these materials to various clientele and determine the most effective media to convey the relevant information. Some of these materials will be available for use by our IP Innovation Clinic.

Interaxon Scaling Project

is a Toronto-based company that helps customers to build rewarding meditation and sleep practices to lead healthier and happier lives. As the COVID-19 pandemic has increased their need to address mental health concerns, Interaxon is looking to increase the commercialization of its products and services. The funding will allow Androu Waheeb, 1L student and IP Innovation Clinic Fellow, to work alongside Naseem Bawa, General Counsel at Interaxon, in developing licensing arrangements for the company’s relevant IP and seeking FDA approval to make Interaxon’s devices more accessible to users.

We are very grateful to Mitacs for approving IP Osgoode's proposals in this inaugural year of their Business Strategy Internship program. We would also like to thank our supervisors at 3D Bridge, Bereskin & Parr, and Interaxon for working hard on such short notice to make space for our students and put our proposals together. We look forward to seeing how our students grow and what they accomplish with our partner organizations.

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Positions Available: Innovation Clinic Fellows (2-3 positions).

Students will mostly assist clients with patent or trademark law matters. Their remaining time will be spent working��on other IP and start-up business related needs as they arise. Tasks may include:

• Patent prior art searches;
• Trade-mark searches;
• Other tasks as assigned and supervised by the supervising lawyer.

Term: Summer 2021 with the possibility of extension for the school year of 2021/2022.

Commitment: This is a part-time, OPIR qualifying, volunteer position. Fellows are expected to��provide approximately 2-3 hours a week with opportunity expand.

Training: While a general understanding of intellectual property law is helpful, interest is more critical.

Qualifications:

• Fellows must be Osgoode Hall Law School students.
• An interest in IP law, technology and commercialization law.
• Responsiveness and a commitment to client service.
• Attention to detail and ability to write clearly and concisely.
• Excellent time-management, organizational, and interpersonal skills.

Application Process:

Deadline: Monday, March 22, 2021 at 8 am

Please provide the following materials via email (subject: Application: IP Innovation Clinic Fellow) to iposgoode@osgoode.yorku.ca:

• One page cover letter. Please outline your interests in IP law in addition to other areas of interest. For reference, see current fellow bios.
• A copy of your résumé.
• Unofficial grades, if available

Only those selected for an interview will be contacted.

The post CALL FOR APPLICATIONS: Summer 2021 IP Innovation Clinic Fellows appeared first on IPOsgoode.

Prof. D’Agostino helped to link the two federal initiatives, describing Canada as a country home to entrepreneurial talent but lacking the ecosystem and infrastructure necessary to capitalize on these resources domestically. Earlier, Mr. Paikin had stated that the innovation or knowledge-based economy represented the “future economy”. This is primarily true, as information-based, knowledge-intensive industries and technologies affect a growing number of sectors. However, as Prof. Breznitz helped to highlight that outside of Canada, other companies and their home countries — such as Google in the United States (US) — are already reaping the rewards of knowledge-based research and development, some of which Canadian universities originally generated.

Answering Mr. Paikin’s question about tackling the widening pay gap, Prof. D’Agostino highlighted the work of the . “You do need the patents, the IP, so with patents come all the other associated IP rights,” said Prof. D’Agostino, “you also need that ecosystem.”

Speaking to her experience with law students in both Canada and the US, Prof. D’Agostino argued that Canada is lacking a culture of innovation. “In many ways, when we look to other countries or when I go back to my time in the [Silicon] Valley, you saw that there: they go to law school, they want to make millions. They want to be the next Facebook. When students go to law school here, they want to go work in a law firm or make policy or other options but they don’t really come to law school to make that big company. So, I think there needs to be a cultural shift and that’s something that takes time. That’s something more on the ground.”

The IP Osgoode Innovation Clinic, conceived and founded by Prof. D’Agostino, seeks to build off of the burgeoning ecosystems in the Toronto, York, and Waterloo regions to help develop the next generation of commercialization-savvy IP practitioners. By having Innovation Clinic Fellows assist student start-ups at��, in particular the at the , inventors at incubators and accelerators, such as ventureLAB and , and entrepreneurs in the Waterloo Region and elsewhere who are in need of pro bono assistance to protect and formalize their ideas and IP, the IP Osgoode Innovation Clinic is helping to build an ecosystem based on IP awareness, support, and inclusivity.

Under the supervision of partners at , the Innovation Clinic Fellows take carriage of their own files and provide IP information and support to Canadian start-ups and entrepreneurs as they work to scale-up and commercialize their products or provide publicly oriented tools and services to disadvantaged communities.

At the same time, Innovation Clinic Fellows are able to hone their understanding of IP law and commercialization practices, enabling them to provide more value to their Clinic Clients and those they will work with during their future careers as legal practitioners. A small number of similar clinics operate in Canada, including the University of Detroit Mercy School of Law and Windsor Law’s . As Prof. Myra Tawfik and Jim Hinton have argued in a number of places (see , , and ), these pro bono IP law clinics help address a gap in Canada’s innovation ecosystem. ��Mr. Paikin and Mr. Ciruiak both note that this ground-up approach may be a generational project. But in just over 7 years of operation, the IP Osgoode Innovation Clinic has already demonstrated success, providing services to hundreds of clients and having trained close to a hundred law students from .

This summer’s as well as the Canadian Intellectual Property Office’s new highlight the need to improve education, build IP awareness and outreach, and improve IP savviness and access to IP advice. As Prof. D’Agostino points out, the federal government will need to demonstrate a long-term financial and public commitment to increasing capacity in these areas. If expanded and networked across the country, IP law clinics, such as the IP Osgoode Innovation represent ground up ways to fill a gap in the country’s innovation ecosystem.

The IP Osgoode Innovation Clinic is operating with support from the Centre for International Governance Innovation, Osgoode Hall Law School, ��and Norton Rose Fulbright LLP.

If you would like more information about the Clinic or are interested in engaging the services of the Clinic, please contact us: IP Osgoode Innovation Clinic, Osgoode Hall Law School, �첥��Ƶ, 4700 Keele Street, Toronto, ON M3J 1P3, Email: ipinnovationclinic@osgoode.yorku.ca, Tel: (416) 650-8449, Fax: (416) 736-5736, Website:

The post Build-Up, Scale Up: Fostering Innovation in Canada appeared first on IPOsgoode.

Back in 2001, the Government of Canada—then led by Prime Minister Jean Chrétien—. In the sixteen years since, gallons of ink and plenty of bytes have been used to call for a domestic strategy to address the country’s . The release of the Government of Canada’s , which included and the , has changed the debate in the country, replacing recurring calls for action (for example, see , , , , , , , , , and ) with cautious optimism—.

It was against this backdrop of a renewed innovation impetus that Canada’s Minister of Innovation, Science and Economic Development, , gave the opening keynote for the in Toronto. Minister Bains used this forum to advocate for . In his speech, he commented that connecting Canadians through access to telecommunications services is necessary because:

In his speech, Minister Bains referred to enabling connectivity and bridging the “digital divide” between Canadians; however, doing so will require more than simply connecting Canadians through telecommunications services and digital technologies. Public and corporate policies must be updated to capitalize on the strengths and mitigate the negative ramifications of innovation-based economic activity. , Co-Director of the at the , described how at the same time that Israel has become a key supplier of new technologies, it has also experienced pronounced economic inequality. Canada’s Innovation Agenda, then, must look to address the many facets of our digitally-connected lives and work to promote inclusiveness and opportunity for all Canadians.

The segment that the IPilogue’s Content and Social Media Editor writes about describes how Canada’s telecommunications industry players are – and are not – preparing for the increasing adoption of digital and interconnected devices. Cerilli notes the vital role that telecom service providers play in providing the backbone of digital connectivity, and how consumers aYonida may become more, assertive about receiving higher standards of services.

Similarly, Yonida Kouiko’s piece, , focuses on another key aspect of interconnected Internet of Things (IoT) devices: users expectations of and their need for privacy. She notes how the European Union (EU) is working to update privacy laws to instill Privacy by Design (PbD)—an engineering approach that seeks to make users communications and data secure at the earliest stages. However, as Kouiko demonstrates, PbD requires investment and expenditure by technology producers and telecommunications providers—and she wonders whether consumers will be willing to pay increased prices for more secure means of communication.

Questions surrounding affordability arise again in IPilogue Editor As Shukla notes, concerns surrounding the affordability of telecom services in Canada and questions about the level of competition in the country’s telecommunications industry have been recurring issues for successive federal governments. Given the ISED Minister’s remarks, exploring new service delivery mechanisms and a continued focus on affordability for Canadians look to be prominent points of debate.

Yet, as , the Executive Director of reminded me , attaining inclusive innovation will also require digital skills and education. Organizations such as CFSC help provide the digital tools and skills necessary to increase the talent-level of Canadians in innovative sectors. While the federal government’s includes measures to address the faced by tech firms in Canada, developing domestic expertise and experience remain essential.

At the CTS17 , the Vice-President, Research at the , touched on one such area of expertise, noting that Canada currently suffers from problems with commercializing the ideas and knowledge generated by Canadian researchers and entrepreneurs. Part of this problem, Schwanen noted, is due to Canada’s poor track-record of utilizing intellectual property (IP) law to keep Canadian inventions in the hands of Canadian companies. Familiarity with IP law and commercialization strategies are important for attaining access to capital (through investment and licencing opportunities) and access to customers (through branding and the ability to prevent others from appropriating one’s technologies, goods, and services).

Enabling and are crucial to improving commercialization prospects and assisting with the growth of the country’s innovation ecosystem. IP Osgoode’s own – and a small number of other Clinics across the country (such as at the and the ) – help address gaps in Canada’s entrepreneurial support system by providing pro bono IP information and assistance to early-stage and under-funded inventors and companies.

The vast array of policy and commercial issues at stake in the development of Canada’s innovation agenda and national IP strategy are daunting but imperative. As the country is increasingly recognized for having its , the time is right for an inclusive Innovation Agenda that provides benefits for Canadian companies, consumers, citizens, and society at large. Positioning the country as an will require a strategy that lays the groundwork for that help Canada’s cutting-edge ideas become economically and socially beneficial products and processes.

Joseph F. Turcotte is a Senior Editor with the IPilogue and the Coordinator. He��holds a PhD from the Joint Graduate Program in Communication & Culture (Politics & Policy) at �첥��Ƶ and Ryerson University (Toronto, Canada) and can be reached .

��***

��The brings together the leadership of Canada’s telecom, broadcast, and IT industries. For its 16th year, the CTS focussed on and featured keynote presentations and panel discussions on the range of issues facing industry and public policy makers in Canada. IP Osgoode and the IPilogue team members thank the CTS’ organizers ( and ) and for their generous support to allow us to attend.

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Whenever a new technology has the potential to be ground-breaking and extremely valuable, there are bound to be disputes about invention and ownership. From to the , scientists and inventors are often driven into competition and conflict. Recently, one such conflict has arisen over one of the biggest of the Twentieth Century.

Clustered regularly interspaced palindromic repeats () are a molecular system whose harnessing is transforming the science, with important applications in medicine, biotechnology and other areas. By repurposing the natural biological system, scientists are able to target and make precise changes to specific strands of DNA at a more cost-efficient and faster rate than ever before. While CRISPR has spurred the development of a host of new technologies, there has been significant controversy over who actually owns the “invention.” A winner-takes-all dispute over the technology’s patent rights is in full swing between the Broad Institute and the University of California, Berkeley, and the spoils are plenty.

Serendipity and bacterial immunity

First discovered in Japan in , CRISPR was subsequently shown to be an adaptive system used by bacteria to defend against viral infection. Francisco Mojica identified these repeating sequences of DNA in 1993, while working as a graduate student in Santa Pola, Spain. Mojica isolated CRISPR loci in over forty different microbes and identified their key features.

Just as Mojica was publishing his paper, Gilles Vergnaud—at the time, a geneticist for the French ministry of defence—was also completing research illuminating the function of the CRISPR system. Vergnaud found that the CRISPR locus often contained new spacers similar to those in prophages in bacterial genomes. It was Vergnaud and his colleagues who first hypothesized that CRISPRs serve as a defence mechanism for viral infection.

Subsequent work by researchers such as Philippe Horvath and Rodolphe Barrangou, working in the dairy industry to identify bacteria in yogurt and cheese production, developed our understanding of the cas9 protein. A by Marrifini and Sontheimer, two researchers then at Northwestern contributed to identifying DNA as the target of CRISPR. These researchers were also the first to predict that CRISPR could be used for genome editing.

, which involved scientists working in industries as diverse as defence and food processing, predated the work done by the Berkeley’s , and of the Broad Institute. These varied fields which led to the development of the CRISPR-Cas9 system are telling of the wide impact the CRISPR system could have.

Not your average scientific debate

It is not surprising that arguments arose over the ownership of rights to CRISPR-based inventions which contributing to . “Cancer-fighting” and are attention-grabbing phrases, and the implications and value of the science are both . For instance, there has been much debate over the to allow a research team to engage in germ line editing of human embryos. The —usually infrequently interested in complex scientific discussions—is attune to the importance of the and the stakes.

So, what is the problem? The problem is that two major academic and scientific institutions, along with their scientists, cannot agree about the patents for CRISPR technology.

Big league players

The debate is more an institutional one than one between competing scientists. At the highest level, it is and the who are fighting a patent (and ) war over CRISPR. At issue are patents filed by Broad’s Zhang and Berkeley’s Doudna. Whoever owns the technology can expect a windfall in .

The researchers

In 2012, Doudna et al. published that elaborated on the mechanism used by the associated CRISPR system to insert breaks in target DNA. In this publication they discussed the possibility of applying the CRISPR-Cas9 system to genome editing in eukaryotic cells. However, as confirmed by , a biologist at �첥��Ƶ, this paper described only the possibility of using CRISPR Cas9 for genome editing in eukaryotic cells and in that paper, the authors did not in fact do genome editing in eukaryotic cells.

Zhang et al. appear to have been first utilizing the CRISPR system to accomplish genome editing in mammalian cells. Soon after, George Church, a leading geneticist from Harvard, ��published that outlined possible applications of CRISPR in editing human cells. that, while Doudna and Zhang were instrumental in the application of CRISPR technology, the gene-editing project was a collaborative effort. However, aside from this anecdotal evidence, it is not clear that this was the case.

The patents

The Berkeley application was filed on March 15, 2013 by Doudna and . Zhang filed his application seven months later on October 15, 2013. Zhang expedited the review of his application (under a “”), which would otherwise as conflicting with the earlier one. He was in April 2014.

In addition to determining who filed first, there are further questions concerning the scope of the patent claims in question. As New York Law School’s notes, Doudna’s initial application “”, while Zhang’s “.” Although Doudna’s initial filing may not have conflicted directly with Zhang’s, her , because—her lawyers argue—the application covered gene-editing in mammalian (including human) cells.

Science goes to court

In April 2015, Doudna (Berkeley) took the issue of the competing patents to the and, in early January of this year, . An interference proceeding is used to assist in the determination of priority: “.”

Administrative Patent Judge Deborah Katz, who declared the interference, now refers the matter to the Board of Patent Appeals and Interferences, which will consider evidence from both parties (such as laboratory notes and publications from both parties) in order to determine dates of invention. Today, the United States has a “” patent system, but at the time Doudna filed her patent application, it was “first to invent,” so the interference proceedings will go forward on that basis.

The decision of the panel will determine who, if anyone, owns , based on . This interference has lessened the possibility of a The panel can decline to award the patent to either party.

Moreover, the decision may be appealed to the US Court of Appeals for the Federal Circuit. Recently, for the interference proceedings, though the patent board trial judge has yet to rule on them. So, while the dispute may have moved from the lab to the courts, it is far from over for the institutions or their scientists.

Big money anxiety

Though the Broad Institute has made the technology to the research community, a lot of money remains at stake in the control of these patents, especially for founded to develop the technology. Interference proceedings are , making them unusual for academic institutions. While the technology is , commercialization is another matter altogether.

The commercial applications of this technology mean that more than just academic institutions are taking notice. As , CRISPR-related companies are already making significant investments in the technology. For instance, (founded by both Zhang and Doudna) has planned a $100 million IPO. Other biologics firms, such as CRISPR Therapeutics, Intellia and Caribou Biosciences (which has raised nearly $90 million) are partnering with large pharmaceutical companies.

All of this raises questions about the benefits and drawbacks regarding the ownership of science, especially when there may be so much to be gained for peoples’ health. Researchers and start-ups alike appear to have every intention of of the technology, but the uncertainty engendered by the does little to advance the science.

CRISPR clearly has the potential to be a game-changing medical technology, but clearly even ground-breaking discoveries have to wade through the legal muck sometimes.

Recent updates

The Patent Trial and Appeal Board on several motions on March 17, from both Berkeley and Broad. Broad will be able to argue that there was no interference because of the specificity of its patents as to eukaryotic cells, while Berkeley will not be able to argue malfeasance on Zhang's part at this time but will be allowed to argue for a reworded count. These early rulings are not determinative and serve to show how unpredictable the outcome is at this stage.

Sebastian Beck-Watt and Daniel Quainoo are IPilogue Editors and JD Candidates at Osgoode Hall Law School.

The post More Money, More Problems: The Science, the Law, and the Fight over CRISPR Patents appeared first on IPOsgoode.

True, Canada's recently enacted exception for 'Non-commercial User-Generated Content' ( Copyright Act) allows dissemination of derivative works yet admonishes that:

[T]he use of, or the authorization to disseminate, the new work or other subject-matter is done solely for non-commercial purposes.

However, as Teresa Scassa notes in her chapter “” in , section 29.21(1)(a) does not stop disseminators from capitalizing on the creative output by fans.

Furthermore, according to the recent annual release by the International Federation of the Phonographic Industry (IFPI) of their , UGC fan music videos are generating more money for the copyright owning recording industry than official music videos.^[1] This can in part be explained by the increased interest in the works by growth of the fan base not as passive consumers but rather by actively engaging with the copyright protected works. Allowing the audience to feel as though they can contribute by participating in the creative process is a powerful tool that a few large industries have only recently caught on to. Moreover, the more popular a work (even a derivative one) becomes, either via pay-per-click or page views, the more income generating ad revenue is earned. More ads viewed equates to greater revenue for the advertisers and hence greater justification for those companies to want to continue to purchase more online ad space on the intermediary’s website. Some intermediaries that have become known for their vast dissemination of UGC works have established these profit sharing incentives regarding works that bring in a lot of internet traffic, especially for those that go viral.

According to the IFPI report “YouTube is the biggest single access point to music for consumers internationally, with one billion users worldwide”.^[2] On YouTube, Google searches for videos which incorporate copyright protected songs. They then inform the record companies of this video. But, rather than US takedown notices interfering with the rights of UGC creators, copyright owners of pre-existing works find that it is more advantageous and profitable to get a piece of the action by monetizing the work. The record companies, instead of trying to have the videos taken down, appear to be licensing the video and then making “ad dollars” from the number of views. It is from this process that record companies are making more money from the UGC than the official music record. In so doing, copyright owners likely do not feel as threatened by the popularization of any derivatives from their works while UGC creators are kept from contravening subsection 29.21(1)(a) of the Copyright Act or having to argue fair dealing/use.

There is a pragmatic realization that demonizing and increasing restrictiveness of copyright law against users who appropriate the works of others, be it solely for enjoyment of the work or to make use of it in a UGC context, ; less content gets distributed among the public (which has negative societal effects) and there is less respect for the legitimacy of copyright holders leading to even more appropriation which cannot realistically be stopped.

Furthermore, the popularity that comes from fandom and UGC communities also informs the larger consuming public of what original content is trending among fellow community members and can act as advertising for the copyright owner.

It appears that this symbiotic relationship between users who want to express themselves personally and the copyright owners (and intermediaries who stand to gain from providing a forum in which users may have access to the fresh or at least alternative perspectives that UGC has to offer) promotes the purported purpose of copyright - to incentivize creativity.

While this can be a positive business model, benefiting all parties concerned, I would like to note a concern which arises. The Copyright Act legislatively permits, as part of a recognized greater social good, UGC creators to appropriate and use works of others in whole or in part when making solely non-commercial derivative works. Although some may describe these UGC creators as “amateur” in a pejorative way, in many cases these amateurs, while consuming society’s cultural works, produce high quality mash-ups, remixes and a host of other derivative works, copyrightable in their own right but typically not greeted with the respectable title of “author”. However, when a UGC work is being uploaded, the uploader agrees to the non-negotiable click-wrap contract (which stipulates that unless they own all elements with the work being uploaded the uploader is not entitled to enable revenue-generating ads). Should this necessarily give the copyright owner of the existing work the right to muscle-in or impose their influence by obstructing the viewers’ ability to fully enjoy the presentation of the UGC work without attention-distracting ads in or around the work? Furthermore, if the UGC generates huge hits, benefiting the host site and advertisers, it raises the question as to whether the UGC creator should be expected to forego any such benefits in order to avoid the risk of liability. I realize that the current system is a licence-based economic model contractually formulated to support the dissemination of UGC derivative works which may otherwise be taken down, and thus is arguably still a better alternative. However, in utilizing this business model, there should still be respect of the UGC work and its author when placing any ads. The Online Etymology Dictionary defines “amateur” as:

1784, "one who has a taste for (something)," from French amateur "lover of," from Latin amatorem (nominative amator) "lover," agent noun from amatus, past participle of amare "to love". Meaning "dabbler" (as opposed to professional) is from 1786.

If we consider it from its origins, doing something for the love of doing it would be a seemingly appropriate context for the rationale of the UGC exception. On the other hand, would it be fair to deny amateur creators the ability to gain any profit from the skill and judgment of their original (albeit derivative) work while permitting others to free ride on the commercial value of their works? This goes to whether Parliament’s restrictively phrased ‘solely non-commercial’ is appropriate in light of the way users actually engage with works and whether an appropriate balance of interests is achieved.

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