IP Year in Review 2016 - An Honourary IP Osgoode Year!

IP Year in Review 2016 - An Honourary IP Osgoode Year!

As we get busy in 2017, it is always useful to reflect back to 2016 to see developments in the IP world that will set the stage for many ongoing changes that are already taking place in 2017. As usual, I have also included some IP Osgoode highlights (see the end of what I tried to make as brief a piece as possible!).


2016 gave us plenty to talk about, even without any groundbreaking Supreme Court of Canada copyright decisions. The cases discussed below represent some of this year’s notable copyright law issues; they predominantly involve fair dealing. With a Copyright Act review scheduled by the federal government in 2017, fair dealing is a topic we expect to continue being discussed next year and onwards.

Fair Dealing and Fair Use

In February, the Copyright Board of Canada issued its decision on fair dealing and educational copying in K-12 schools. The Board granted tariffs—per student, of $2.46 for 2010-2012 and $2.41 for 2013-2015—significantly lower than the $15 per student requested by Access Copyright. The Board held that 97.2% of copying from books, 98.1% from newspapers, and 98.5% from periodicals qualified as fair. Even beyond any potential appeal here, Access Copyright’s litigation saga persists in their suit against York University. A decision is still pending in that infringement action where the issue is whether York's use of material in Access Copyright's repertoire constitutes fair dealing under the "education" exception.

Fair dealing was also at the heart of the Federal Court’s recent decision in Blacklocks Reporter v Canada. Blacklocks is a pay-walled online news site. It sued the federal government for distributing their articles internally to various departments and personnel. Although the articles were legally obtained by a paying subscriber, Blacklocks argued that distributing them to non-subscribers violated its copyright. In response, the government questioned Blacklocks’ business practices—like its use of the access to information system to trace government subscriber’s use of the site, and alleged copyright trolling. November’s Federal Court ruling held that the government’s distribution of Blacklocks’ articles qualified as fair dealing. As IP Osgoode's own Professor D'Agostino noted, the decision affirmed well-established fair dealing jurisprudence, emphasizing that user rights must not be interpreted restrictively (the Court noted, however, that their decision should not be taken as an endorsement of paywall breach by either subscribers or non-subscribers.)

Fair use was also a matter of interest in the United States in 2016. In January, the US Government’s Internet Policy Task Force released a White Paper on Remixes, First Sale, and Statutory Damages. The Task Force concluded it was unnecessary to change the US Copyright Act to govern remixes and the first sale doctrine. Instead, it recommended how to improve licensing procedures for stakeholders while helping those stakeholders understand fair use determinations and online transactions involving creative works. The US Patent and Trademark Office highlighted that “[i]n making its recommendations, the Task Force was mindful of the needs to protect copyrights effectively while also promoting innovation on the internet.” Balancing stakeholders’ and user’s rights continues to be a major concern as streaming services and digital technology pervade the music industry.

Novel Copyright Issues in Canada

2016 saw novel responses to Canada’s notice-and-notice regime. In April, Voltage Pictures launched a reverse class action lawsuit. The suit alleges copyright infringement by numerous illegal downloaders of five different films for which Voltage has copyright. Voltage brought their claim against an indeterminate class of defendants represented by a single anonymous John Doe. Voltage successfully obtained a “Norwich” order from the Federal Court compelling Rogers—John Doe’s ISP—to divulge his identity according to stipulations set out in prior relevant caselaw. Whether such a reverse class action is certifiable, and thus a potentially effective strategy to pursue abundant peer-to-peer-based infringement claims, remains to be seen. Similar attempts in the US to combat peer-to-peer downloading have been unsuccessful. Stakeholders and commentators will undoubtedly be interested in how this case progresses in 2017.

Two novel copyright issues arose in the Albertan case of Geophysical Service Incorporated (GSI). GSI conducts marine seismic surveys and compiles and licenses the data for use in oil and gas exploration. Canadian legislation allows data to be expropriated after 5 years for public use (and therefore enter the public domain). The first issue was whether GSI’s seismic data and information qualified as an original work. If the data was original, the second issue was whether government expropriation of GSI’s copyright constituted a legitimate exercise of government power; or put another way, can the Canadian copyright term for traditional works (life of the author plus 50 years) be legislatively modified outside the Copyright Act? Regarding the originality issue, the Alberta court found that both the raw data and the processed data collected and sold by GSI qualified as original because its creation and collection involved skilled human intervention. On the second issue, the court found the expropriation legislation was legitimate, as the 5 to 15 year confidentiality period properly balanced public’s interest in early exploration with GSI’s interest as a rights-holder.

With a review of the Copyright Act just around the corner, 2017 will be a fascinating year for copyright in Canada. In November the Standing Senate Committee on Banking, Trade and Commerce issued its report on the operations and practices of the Copyright Board of Canada. The committee concluded that a thorough examination of the Copyright Board’s mandate, practices and resources should be included in the review of the Copyright Act. The committee’s recommendation was applauded by Music Canada and helps set the stage for the upcoming review of the Copyright Act. If you have any comments on the Copyright Act that you would like to see considered for the review, we would love to hear from you!

Global Copyright Trends

Technology’s continuing global impact on creation and consumption has resulted in some interesting North American copyright law trends. Nonetheless many traditional questions remain, like what constitutes infringement in pop music or between two different forms of content. Canada and the US are not unique in this regard. Global copyright issues arose in 2016 concerning matters technologically novel (Netherlands and Sweden—whether hyperlinking to unlicensed content constitutes communication; Germany—is YouTube liable by hosting copyright infringing content on behalf of third parties) and familiar (India—photocopying for educational use; Germany—parody). Copyright marches on, whether on familiar or unfamiliar ground, and we look forward to what 2017 has in store.



Trademarks and THC

With the legalization of marijuana happening state-by-state in the United States and anticipated in Canada, there is increasing movement in the industry to protect trademarks. In the US, the Trademark Trial and Appeal Board has been rejecting applications on the grounds that marijuana sales are still illegal according to federal law. That has not stopped Snoop Dogg from applying for a trademark for LEAFS BY SNOOP for a variety of marijuana-adjacent products like hemp seeds and lighters. Maple Leaf Sports and Entertainment (MLSE) opposes those applications on the grounds that that both the non-standard plural of the word mark and the appearance of the design mark will create confusion with the Toronto Maple Leafs’ trademarks and logos. In Canada, the publishers of High Times magazine successfully sued for damages from a Toronto head shop that infringed their trademarks. This is a different suit from the one that resulted in jail time for the owners of another head shop that was infringing High Times’ marks in 2015.

Trademarks and Treats

2016 saw trademark issues in the snack food industry as well. The Ontario Superior Court considered a grey marketing case between Mars Canada and Bemco, a group of companies importing and selling the American versions of Mars’ products in Canada. Bemco argued that a previous settlement agreement that required them to stop the grey market imports was in restraint of trade, but the court found the restraint justified given the public interest in encouraging settlement agreements, the statutory right of a trademark owner to defend their interests, and the lack of appropriate labelling on the grey market imports.

More candy-bars were featured in the courts. Nestlé has suffered a series of recent setbacks in their efforts to protect the three-dimensional shape of the KitKat bar as a trademark. Last year, the Court of Justice of the European Union upheld a UK Intellectual Property Office decision rejecting the trademark. In January, Nestlé again failed to protect the 3D shape in the UK, this time in front of the UK High Court. The EU Intellectual Property Office had accepted a registration for the shape, but in December the General Court of the European Union sent the file back for reconsideration based on evidence that the shape was not distinctive in a number of EU member countries.

Trademarks and Trump

Given how Donald Trump dominated the news in 2016, and that much of his business model is based around licensing the Trump name, it is not surprising to see it pop up in trademark lawsuits. Toronto’s Trump Tower was developed by Talon International, which licensed the Trump brand for use with the property. Purchasers claimed that they were misled by sales documents that included estimated rates of return based on the success of other Trump-branded properties. The Plaintiffs argued that "[b]y licensing the Trump brand to Talon, Trump misrepresented that Talon had the experience to properly build the Trump Hotel and sell the Hotel Units in a competent, professional manner". The Ontario Superior Court disagreed, finding that “there is no support in law for the proposition that if the licensee of a brand is egregiously negligent, then the licensor of the brand is responsible for the negligence.” However, as The Fashion Law Blog noted, section 50 of the Trade-marks Act establishes that use of a licensed trademark creates the presumption that the character or quality of goods and services are under the control of the mark’s owner, an issue that did not arise in the court’s judgement.

Trump was also the subject of a noteworthy, but somewhat inexplicable, trademark decision in China. A trademark for TRUMP construction services that he had previously failed to invalidate in 2006 was invalidated shortly after the US presidential election, allowing him to go ahead and register TRUMP real estate services in China.

Trademarks and Trends

“Influencers” on social media continued creating personal brands in 2016 and sought to protect their intellectual property. In Toronto, Yorkdale Mall’s Fashion Santa, played by model Paul Mason, made a huge splash on Instagram in 2014 and 2015. Then both Yorkdale and Mason attempted to assert ownership of the character, Yorkdale through applying for trademarks for Fashion Santa and Mason by attempting to register copyright in the character. In 2016, a new Fashion Santa, Adam Martin, debuted at Yorkdale, and it is likely that legal dispute will continue.

Kylie Jenner ended up in a battle with Kylie Minogue over trademark registrations when Minogue opposed Jenner’s application for trademarks based on their shared name. Other applicants attracted public and Internet scorn over attempts to register generic phrases. Cautionary examples include the Fine Brothers, who attempted to trademark REACT videos, and Sony who applied for protection for LET’S PLAY.

Turning to the world of sports, there were a couple of notable trademark happenings in 2016 aside from MLSE’s dispute with Snoop Dogg. The NHL’s Las Vegas expansion franchise will be named the Golden Knights. It will not, however, be the Golden Knights (TM), as the USPTO ruled that the mark was too close to the existing registered mark of the College of Saint Rose Golden Knights.

Playoff baseball brought the Cleveland Indians to the Rogers Center and to the Ontario Superior Court when Douglas Cardinal applied for an injunction preventing the broadcast of the team’s name and logo on human rights grounds. The injunction was denied largely because the plaintiff could not demonstrate irreparable harm, particularly given that Cleveland has played hundreds of games in Toronto in years past yet the application was only made at the last minute before the playoff series began.

Trademarks and Travel

The travel industry also saw a number of trademark disputes in 2016. Canada’s Air Miles International opposed Cathay Pacific’s application to register Asia Miles in Canada for their own loyalty program. The Trade Mark Opposition Board rejected the new registration and Cathay Pacific appealed. They included new evidence in the appeal, so the judgement offers a careful analysis of the standard of review in cases where new evidence is brought before the court. Ultimately, the court found that the TMOB’s decision was both reasonable and correct and upheld it.

Wenger and Travelway are luggage-makers who own and use design marks that feature crosses. Travelway’s registered marks feature an S in the center of the cross, but they had begun using versions of the logo where the S was either difficult to see or missing entirely, prompting Wenger to file an infringement and passing off action. Unfortunately for Wenger, the Federal Court found that their own marks were not distinctive or likely to indicate a particular source to consumers, making it difficult to find any likelihood of confusion caused by the changes to the Travelway logos.

In the US, the National Park Service has temporarily changed the names of some historic buildings in Yosemite National Park as a result of a trademark dispute between the NPS and outgoing Yosemite concessionaire Delaware North. The dispute is primarily about valuation of the marks Delaware North offered to allow the NPS to continue to use the marks while the dispute was ongoing, but NPS changed the names anyway, resulting in predictable outrage.

Promote Iceland, Iceland-the-country’s tourism and trade promotion organization attempted to register INSPIRED BY ICELAND for a variety of purposes, which was opposed by Iceland-the-supermarket. In retaliation, Iceland-the-country filed a cancellation action against Iceland-the-store’s trademark ICELAND.

Trademarks and Transitions

In Canada, the Trademarks Office began to issue courtesy notices to owners of Canadian trademark registrations that require renewal in 2018 in anticipation of the upcoming changes to trademarks law in Canada. Canada is set to adopt the Nice Classification system for trademarks, and these notices invite owners to voluntarily classify their registered goods and services under the system. Once the system comes into force, likely in 2018 or later, classification will be required by law.

Finally, changes to the Trade-marks Act extending statutory privilege to trademark agents went into effect on June 24, 2016. So if any of the other trademark happenings in 2016 are a cause for legal concern, you can now discuss them confidentially with your trademark agent and rest assured that the communications will be protected.




2016 brought about several pivotal patent law developments spurred by trade treaties and patent disputes.

Canada and the European Trade Union sign CETA Free Trade Deal

On October 30 Canada and the European Union (“EU”) signed the long-awaited Comprehensive Economic Trade Agreement (“CETA”) at the EU-Canada Summit.

CETA will impose several new obligations on Canada, one of which is the stipulation that it abide by the Patent Law Treaty, to which it is a signatory but has yet to ratify despite tabling it in January of 2014. While the aim of the Patent Law Treaty is to harmonize and streamline patent procedures, it also imposes new burdens on patent offices, like the duty to promptly notify applicants of missing reference drawings. CETA will also set protective measures for data submitted in the patenting process, such as an 8-year protection period for pharmaceutical data filed with regulators.

Bill C-30: Proposed Amendments to the Patent Act

The Canadian government has swiftly moved to begin implementing CETA requirements, publishing amendments to the PM(NOC) Regulations under the Patent Act just days after signing the treaty.

Bill C-30 would allow for Certificates of Supplementary Protection (“CSP”) to be available which extend patent protections while the patentee’s drug product has pending regulatory approval. In practice, the maximum for pharmaceutical patent extension in Canada would be set at 2-years, instead of the EU’s standard of a 5-year extension. By setting shorter patent extension maximums for pharmaceuticals, Canada’s generic drug producing industry will have less of a wait before entering their more affordable products into the Canadian market after the initial 20-year drug patent expires. However, some groups, such as the Canadian Generic Pharmaceutical Association, still believe that the 2-year maximum is too long and will have negative effects on the large Canadian generic pharmaceutical market.

Bill C-30 would also enable the Governor in Council to enact regulation that affect the construction, use, or sale of patented inventions by modifying s. 55.2(4) of the Patent Act. For example, s. 55.2(4)(c) enables the Federal Court to suspend or revoke a notice of compliance (“NOC”) in order to allow an appeal, that otherwise would be invalid due to the NOC, to be brought before the Federal Court of Appeal. Furthermore, s. 55.2(4)(j) empowers the Governor in Council to enact regulation covering appeals from unsuccessful PM(NOC) applications, allowing for new innovator protections through appeals.

Perhaps most importantly, Bill C-30 proposes procedural changes by calling for the current regime of summary proceedings in patent litigation to be replaced with final determinations through full actions. Consequently, this would prevent subsequent actions by either the innovator or litigator and would concomitantly increase the pressure on the participants in patent infringement or validity disputes to succeed.

Currently, Bill C-30 is undergoing its second reading and has been referred to the Standing Committee of International Trade.

Patent Agent Privilege Recognized

One of the few patent developments not brought about by our new trade agreement with the EU is the proposed statutory privilege that would apply to certain communications between patent agents and their clients. Solicitor-client privilege which prevents the use of communicated information from being brought as evidence in court has been widely recognized in Canadian common law. However, this protection has not always been found to extend to a lawyer who is also acting as a patent agent if the communications under scrutiny were made where the lawyer was acting strictly as a patent agent.

On June 24 amendments to the Patent Act came into force which extended the same protections found in Canadian law for solicitor-client privileged communications to communication between patent agents and their clients. That is, communications between the two parties will not be viewed as compellable evidence in court. For the patent agent-client communications to be considered privileged, three criteria must be met: the communication is between a registered patent agent and client, the communication was intended to be confidential, and the communication was done to protect an invention. These amendments are also retroactive in nature, any communications that meet the three criteria now found in s. 16.1 (1) of the Patent Act regardless of when the communications took place would now be considered privileged.

The statutory amendments which came into force on June 24 also extend privilege to communications with patent agents based outside of Canada. S. 16.1 (4) of the Patent Act finds privilege where: the foreign patent agent is authorized in her/his respective country, the agent’s country recognizes privilege in the communications, the communication was intended to be confidential, and the communication was done to protect an invention.

Promise Doctrine Argued before the Supreme Court of Canada

The promise doctrine once again found controversy in Canadian courts in 2016 when it became the lynchpin issue in a longstanding pharmaceutical patent dispute. The promise doctrine is a patent utility standard which requires an inventor, in applying for a patent, to prove some form of application, a demonstration or sound prediction of the utility of the invention, and evidence supporting a factual foundation for its proposed utility.

In the case of AstraZeneca v Apotex (“AstraZeneca”), leave to appeal was granted by the Supreme Court of Canada (“SCC”) on March 10 from the Federal Court of Appeal’s (“FCA”) previous ruling which found AstraZeneca’s contested ‘653 patent for esomeprazole (brand name: Nexium) to be invalid due to its inability to demonstrate or soundly predict its “promised” utility as of its Canadian filing date.

One of the issues in AstraZeneca is the proper interpretation of a clause that mentions compounds with “an improved therapeutic profile such as a lower degree of interindividual variation.” Apotex views this statement as a promise, while AstraZeneca as merely a possible, but not promised, objective of the patented proton pump inhibitors. Consequently, at issue at the SCC is whether the ‘653 patent must live up to the exact utility it promises and how promises and inventive concepts should be interpreted when examining patents, particularly when determining what level of utility is required in order to meet the “useful” requirement for patentability under the Patent Act.

The decision of AstraZeneca has broad implications for pharmaceutical development and patenting since the effectiveness of new pharmaceuticals may provide some semblance of the predicted utility but fall short of fulfilling the promise exactly as stipulated. That is, it is possible that a drug will have a demonstrable therapeutic effect of the same kind as that predicted but not quite to the same degree.

Of note is also the fact that several organizations joined the dispute as intervenors, including the Centre for Intellectual Property Policy, Innovative Medicines Canada, BIOTECanada, and the Canadian Generic Pharmaceutical Association, which speaks to the weight of the SCC’s decision on the promise doctrine and its place in contemporary pharmaceutical patents.

Other Decisions of Note

In September, the FC rejected the arguments by Apotex and Cobalt which asserted invalidity for anticipation of Bayer’s ‘426 patent for the YAZ and YASMIN oral contraceptives containing drospirenone and ethynyl estradiol. S. 28.2 (1) of the Patent Act holds that disclosure of the subject matter of a patent claim invalidates the claim for anticipation if the disclosure was to the public more than one year before the patent application was filed and was available to a skilled person. The FC found that, despite the Phase III clinical trials being launched by Bayer more than one year prior to Bayer’s Canadian patent filing, the Phase III clinical trials were a necessary experimental step in evaluating the oral contraceptive’s efficacy and the availability of the tablets through the trials would not enable a person skilled in the art to reverse engineer the compound. Together, the necessity of public experimentation and the inability of a skilled person to reverse engineer Bayer’s YAZ and YASMIN oral contraceptives allowed the FC to dismiss Apotex’s and Cobalt’s claims of invalidity on the ‘426 patent and supported the infringement claims against them.

October also saw the Federal Court of Appeal’s decision for the Teva Canada v. Novartis Canada dispute over Teva’s generic version of a drug produced by Novartis. At the Federal Court, Teva claimed the ‘951 patent held by Novartis for their drug EXJADE (technical name: deferasirox) was invalid due to inutility, obviousness, and insufficiency. Unsuccessful in its claims at the FC, Teva appealed the decision and argued that the FC erred in its construction of the patent promise and its decision on the utility of the patent. However, the FCA reasserted that, at law, different claims can have different utilities for the same compound. That is, the FCA found that the ‘951 patent promise was consistent with the differentiation in the disclosure and claims made.

In November, Nova Chemical Corporation appealed to the SCC in response to their purported infringement of the Dow Chemical Company’s ‘705 patent on polyethylene copolymers. At the Federal Court, Dow’s statement of claim included the cease, destruction, and award of damages for the manufacture and distribution of allegedly infringing materials. Dow was successful at trial in its patent infringement action against Nova, finding that Nova’s ethylene polymer blend products infringed on the ‘705 patent. Nova’s subsequent appeal to the FCA regarding the construction and validity of the ‘705 patent was unsuccessful because no legal error was demonstrated in the lower court’s decision. Despite the highly technical nature of the copolymers, the FCA ruled that a trial judge may choose to favour certain expert testimonies and factual witnesses over others. The SCC’s decision may influence future use of expert testimonies by shaping the liberty trial judges may take when deciding which experts are valid sources of legal evidence and the weight their testimonies carry in highly technical cases.

United States

The United States also saw various developments in patenting, particularly with respect to the patenting of scientific discoveries.

CRISPR Patenting Controversy

2016 saw proceedings start for determining which team of American scientists was the original inventor of the clustered, regularly interspaced short palindromic repeat (CRISPR) gene-editing technique that has been gaining significant momentum and praise among the scientific community in recent years. CRISPR genome editing capitalizes on an adaptive immunity mechanism found naturally in bacteria to introduce new segments of DNA into the genome of an organism. This technique has substantial potential to generate biotechnology inventions and ameliorate disease treatment. It is up to a U.S. Patent and Trademark Office tribunal to determine whether a research team from the University of California Berkeley headed by Dr. Jennifer Doudna or a group led by Dr. Feng Zhang from the Massachusetts Institute of Technology and the Broad Institute based out of Cambridge, Massachusetts was the original inventor.

The CRISPR dispute hinges on Dr. Zhang and the Broad Institute being first to file for patents on the use of CRISPR technology in editing eukaryotic cells (cells, like human cells, which have specialized sub-compartments) and Dr. Doudna who claimed her team developed CRISPR biotechnology which could be used in various cell types (that is, not just eukaryotic cells) before Dr. Zhang had filed for a CRISPR patent. Along with these legal proceedings, concerns have spawned from the scientific community over the implications of patents on scientific research and whether or not such legal disputes will help or harm scientific innovation. On the one hand, strict patenting protocols that limit access to certain laboratory methods can impede scientific discovery. On the other hand, restricting patent claims can prevent further research and development, potential commercialization and investment.

Elsevier Peer Review Methodology and System Patent

Adding to the existing tension in the scientific patenting community, 2016 also saw the medical publishing juggernaut Elsevier patent an online, peer review methodology and system. At its core, the so called “waterfall” system assesses the degree of similarity between the submitted article and the material already in the journal’s database. If there are insufficient similarities and the article is rejected, the “waterfall” system will suggest other journals the article might be published in based upon the similarities noted. Elsevier’s patent demonstrates how the law can influence not only scientific inventions, but also the dissemination of scientific findings.

Venue Act

Lastly, the Venue Equity and Non-Uniformity Elimination Act of 2016 (“Venue Act”) was introduced to address the growing concern patent trolls pose in the American patent system. The Venue Act would clarify where patent actions may occur and prevent abuse of current American patent venue laws which allow lawsuits to extend to wherever a defendant resides or where the defendant has infringed and conducts regular business. The Venue Act was read twice in the Senate of the United States and referred to the Committee on the Judiciary but has yet to be passed.


IP OSGOODE IN 2016 - An Honourable Year!

2016 was a very honourable and proud year for IP Osgoode. The new year commenced with the much anticipated appointment of The Honourable Mr. Marshall Rothstein as a Distinguished Professor at Osgoode Hall Law school and climaxed in the latter half of the year with the induction of Professor David Vaver to the Order of Canada for his leadership in intellectual property law as a scholar and mentor.

We continued hosting successful hackathons. On February 3-5, we hosted the “Orphan Works Licensing Portal Hackathon”, in collaboration with The Copyright and International Trade Policy Branch of the Department of Canadian Heritage and Stanford University's d.school. The hackathon produced and vetted many new ideas within the three days, and some of the more successful concepts were built into initial demos with the potential to be prototyped via ongoing projects. In collaboration with BEST (Bergeron Entrepreneurs in Science & Technology) at the Lassonde School of Engineering, which ultimately awarded prizes, expertise and precious time in their labs for the teams to further develop their prototypes, these projects have the serious ability of being adopted and make a difference in the orphan works system. In addition to the concepts and demos, the hackathon also produced some key insights and directions for future work in improving intellectual property policy generally, and specifically policies around orphan works and the copyright regime.

Hot off the heels of the SCC’s decision in CBC v. SODRAC, Osgoode Hall Law School and the University of Toronto, Faculty of Law co-hosted a symposium entitled UNPACK SODRAC: Technological Change and Copyright Tariffs after CBC v SODRAC (SCC 2015)”. It featured a keynote speech from The Honourable Mr. Marshall Rothstein and leading scholars and practitioners in the field who unpacked the SODRAC ruling and its significance for the future of copyright law in Canada.

Another hot button issue we tackled was the rapidly evolving FinTech world and its potential to transform every aspect of the financial services business. IP Osgoode together with our founding partner, McCarthy Tétrault LLP hosted a seminar entitled, "Effective IP Strategy to Drive Innovation in the Financial Services Sector". The event featured industry experts, financial services IP executives and IP lawyers who discussed how FinTech companies are changing the business landscape, how financial services institutions are responding, and how to build an effective financial services IP strategy.

The IP Osgoode Speaks series kicked off in 2016 with a dynamic presentation by radio personality, Jerry Agar. This was followed by a talk by Prof. Abraham Drassiower on his new book "What's Wrong with Copying" with commentary by Professors Carys Craig and Bita Amani. We ended the year with a star lineup of highly regarded academics on a range of IP topics. Prof. Christopher's Buccafusco's presentation on "Experiments in IP" explored the nuances that drive creative behaviour in intellectual property markets. Prof. Sivaramjani Thambisetty's talk examined the ambiguities in the patent dialect. Lastly, Prof. Dan Burk's talk focused on his research on the structure and function of the patent text.

IP Osgoode was happy to also support two very high profile events that took place at Osgoode - Prof. Amy Adler's presentation on copyright and the future of art and Dr. Ronald Pearlman's provocative presentation on the ethical and legal implications of the innovative CRISPR genome editing system, which drew a large crowd consisting of experts, academics, and students from multiple disciplinaries and interests.

IP Osgoode's Innovation Clinic was excited to enter into a new partnership with Norton Rose Fulbright LLP. Now in its sixth year of operation, the Innovation Clinic continues to complement Osgoode’s rich history of clinical program offerings by providing students with an opportunity to gain hands-on practical experience and learn about some of the common early stage IP and business related issues facing under-resourced inventors, entrepreneurs and start-up companies. With Norton Rose’s extensive expertise in working with start-up companies Osgoode students volunteering at the Innovation Clinic have gained invaluable experience and practical knowledge under the mentorship and supervision of a team of high calibre lawyers at Norton Rose.

We continued to provide our students with first-rate relevant experiential learning opportunities in IP law and technology through our flagship initiatives, the IPilogue, Innovation Clinic, IP Intensive Program, Canada's IP Writing Challenge, and the Gowling WLG Best Blog in IP Law & Technology Prize. IP Osgoode is also proud to be supporting our students in Osgoode's moots and skills program, namely on the Harold G. Fox IP Moot, the Oxford International IP Moot, and the International Patent Drafting Competition.

We will continue to provide up to date coverage of IP news and events, as well as announcements of all our events and activities on the IPilogue so please check our website iposgoode.ca, subscribe to our weekly e-newsletter, the IPIGRAM, follow us on Twitter (@IPilogue), and connect with us on Facebook and LinkedIn.


Top 10 most read IPilogue articles of 2016

  1. IP Year in Review 2015: A Look Back on the IP Stories That Will Shape 2016
  2. Changes to Ontario’s Health Information Privacy Law Include Breach Notification, Increased Penalties
  3. ‘Made in America’ 2015? The TPP and the Future of Canada’s Digital Economy
  4. The Value of Copyright
  5. Maltz v Witterick facing the facts of copyrgith protection for historial events
  6. This is Why You Have an Editor: Politics, Plagiarism, and Copyright
  7. Tariffbusters: Does the CBC v SODRAC decision debunk the “Mandatory Tariff Theory
  8. QaD tlhIngan pong yab bang chut? Is Klingon protected by copyright law?
  9. More Money, More Problems: The Science, the Law, and the Fight over CRISPR Patents
  10. Batmobile Declared a Character Deserving of Copyright Protection, Finally Invincible


Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from Stephen Cooley (IPilogue Editor & Osgoode JD Candidate) and Jordan Fine (IPilogue Senior Editor & Osgoode JD Candidate) on Copyright, Jacquilynne Schlesier (IPilogue Editor & Osgoode JD Candidate) and Sebastian Beck-Watt (IPilogue Senior Editor & Osgoode JD Candidate) on Trademarks, and Dominic Cerilli (IPilogue Content Editor & Osgoode JD Candidate) and Elena Iosef (IPilogue Senior Editor, IP lawyer & Osgoode graduate) on Patents.