On March 1^st the Conservative government put forward Bill C-56 for first reading. Bill C-56 seeks to amend the Copyright Act and Trade-Marks Act in substantive ways, implementing new civil and criminal penalties and offenses for copyright and trade-mark infringement, and increased border controls.

Bill C-56 is still in an early stage in the legislative process and subject to change (or potential defeat, although this is unlikely as the Conservatives command a significant majority in the house). If ultimately passed in substantially its current form it will result in significant changes to the enforcement of copyrights and trade-marks in Canada.

(Guest post by Betty Wu)

In the last couple weeks, the European Patent Office (EPO) has announced several proposals in relation to patent filing and prosecution with the aim to make its system more accessible and efficient.

One of the proposals aims to increase divisional patent application filings. Having reviewed the statistics of divisional filings upon introduction of Rule 36 EPC, the EPO has taken a proactive step by providing open consultation on its EPO website, inviting user feedbacks on the application of Rule 36 and their desired amendments (if any), in hope to cure the low figures of subsequent divisional filings (i.e. not the first divisional filing).

An interesting recent decision from the BC Supreme Court highlights some of the importance of a patent indemnification clause in licensing agreements.  

The respondent is a software provider, Elastic Path Software Inc, who had licensed their online retail software to the appellant, Coastal Contacts Inc. As part of the software license, Elastic provided Coastal with a patent indemnification clause. That is to say, Elastic agreed that “Elastic Path shall defend or settle any claim made or any suit or proceeding brought against Licensee [Coastal] insofar as such claim, suit or proceeding is based on an allegation that any of the software supplied to Licensee pursuant to this Agreement infringes (directly or indirectly) any patent [...]”

Acquiring IP provides an exclusionary property right, namely the right to prohibit others from engaging in infringing activity. Most IP licence agreements try to convert the licensor's legal right to sue for infringement into a contractual obligation upon the licensee to provide consideration to the licensor (eg a lump sum, ongoing royalty payments, or cross licences to other IP)

I have written a paper addressing some of the questions the licensor should consider in determining whether they should enforce their proprietary or contractual rights, or both, when the license has been breached. The paper has now been published in the Oxford Journal of Intellectual Property Law, and is available at http://jiplp.oxfordjournals.org/content/7/3/176.full.pdf?keytype=ref&ijkey=ARpAzSLKzj41oyN