Brion Raffoul will be closed on October 14, 2019 for Canadian Thanksgiving. The Canadian Intellectual Property Office is also closed, so any patent or industrial design deadlines falling on October 12 to 14, 2019 are extended to October 15, 2019.
By: Liz Gray
A fantasy novel set in Toronto is the centre of a trademark controversy. The cover of James Bow’s new book, The Night Girl, features shadowy fantastical figures running along a rooftop with the iconic CN Tower on their left. The image of the CN Tower was obtained from a stock photo site under a Creative Commons license.
But, to the surprise of Bow and the book’s publishers, the CN Tower’s owner is alleging that the cover violates their trademark. According to representatives of Canada Lands Company Ltd. (CLCL), the Crown corporation that manages the CN Tower, every image of the CN Tower is protected as a trademark. They are asking that the cover be redesigned for subsequent print runs, but Bow and his publishers are pushing back.
A lawyer for Bow is asking CLCL to drop the matter. Ren Bucholz points out that ‘confusion’ is the basic yardstick for trademark infringement, and that The Night Girl is a fantasy novel “featuring a strong female protagonist who helps trolls and goblins succeed in the human world through her work at an employment agency”, rather than a guidebook or map. It is unlikely, according to Bucholz, that anyone would see this cover and think that CLCL believes the CN Tower to be overrun with trolls.
The matter is still ongoing, but one thing is clear: stock photo licenses might not always tell the full story.
Natalie Raffoul joined a long list of exceptional speakers, including Michelle Obama and Chris Hadfield, at the Elevate Toronto Tech Festival today. The Elevate Tech Fest showcases the best of the Canadian innovation ecosystem. Natalie shared the stage with Carole Piovesan of INQ Data Law for the panel « Why Your AI Company Will Fail Without the Right IP Plan » moderated by Sean Silcoff of the Globe and Mail. Natalie spoke about IP trends and legal risks in artificial intelligence and machine learning, providing a IP lawyer and patent agent’s unique perspective on protecting AI assets.
The Millionaires Lawyer: From Startup to Payout Podcast launched their newest episode entitled « Natalie Raffoul – Patent and Trademark Queen ». If you have any questions regarding IP strategy, check out this podcast!
Natalie goes through some of the misconceptions surrounding patenting, especially in the high tech and software space. She also goes through how start-ups and small businesses can avoid some of the major pitfalls with protecting their IP. This is a can’t miss podcast for any start-ups and small businesses interested in protecting their IP.
Listen to The Millionaires Lawyer: From Startup to Payout Podcast online on all major platforms:
The firm would like to congratulate Stacey Dunn for passing the 2019 Canadian Patent Agent Qualification Examinations to become a Registered Canadian Patent Agent. Stacey has a background in molecular genetics and specializes in the life sciences. Stacey is also a lawyer in Ontario and actively supports our legal practice in the area of IP licensing and enforcement.
Brion Raffoul is a premier Canadian IP boutique providing clients with a full range of patent, design, and trademark procurement services, as well as legal advice in the field of IP. We take time to know our clients and are committed to providing excellent quality service in a timely manner. If you have any questions about intellectual property, please feel free to reach out to any of our professionals.
By: Stacey Dunn
Getting a job in law school can be daunting – there are relatively few summer job positions compared to the mass number of student applicants. If you know you want to specialize in IP, this ratio is even less in your favour. Here are five tips to help get through the Ottawa IP summer recruitment process:
I. Do Your Homework
Research, Research, Research – this point CANNOT be stressed enough. There are three general areas of research you should be doing: research the firm, research the interviewers, and research recent and current summer and articling students.
(1) Research the Firm
Make sure you understand the firm you are applying at. Many firms have a specific culture and values and it’s important that you agree with the direction the firm is going in. Afterall, many summer positions lead to articling and then to an associate position. Make sure that firm is where you want to spend the next few years. You’ll hear a lot about whether or not a student has a good “fit” with a firm – however, it’s equally as important that you think the firm is a good “fit” with you. For example, some firms track billable hours and your performance metrics are largely based on the number of billable hours you have a year. Other firms do not track billable hours and charge on a fixed fee basis. Billable hours vs fixed fee can have a significant impact on your work-life balance. It’s important that you make the right choice for your lifestyle.
(2) Research the Interviewers
You should always know who you will be interviewing with. If you were not informed when scheduling the interview, ask! This will show that you’re are interested and proactive. Make sure you memorize, at the very least, each person’s name, position, and scientific background. Also, consider asking your interviewers questions about their scientific/engineering background. Afterall, many IP summer jobs are in patent prosecution or patent litigation. The interviewers will be interested in your scientific or engineering prowess. You can impress them by asking them specific scientific questions related to their background. When researching your interviewers, look into papers or articles they’ve previously written. Regardless of whether the articles are about IP or science, asking them specific questions about their own expertise will surely impress them!
(3) Research Recent and Current Summer and Articling Students
Look into previous students at the firm. There is nothing worse than interviewing a candidate who asks generic questions, like “what type of tasks will I be working on” or “what is a typical day like for a student”. While these may be valid questions, your questions should be tailored to the organization. For example, instead of asking “what type of tasks will I be working on”, ask “I noticed on your website that X (a recent student or articling student) has a similar scientific/engineering background as I do. What types of daily tasks do they work on and would I be expected to do similar tasks?”
II. Reach Out to Someone at the Firm Before Applying
To show interest in the firm, it’s always a good idea to reach out to a student or young associate at the firm to ask if you can take them out for coffee or do a phone “informational” interview (i.e., to ask them questions about their job and about the firm in general). The summer is a perfect time to do this (i.e., before the recruitment process starts – there are rules about contacting students during the recruitment process). Do your research on all the potential people you could ask and choose someone that you have a connection with – no matter how small. Did you do your undergrad at the same school? Do they have the same technical background? Did they attend the same law school? Are they from the same city? All you need is a small connection to show you did your research when cold calling or sending them an email.
III. Be Willing to Travel
This is the time to invest in your career. You may not have much money to travel at this point but traveling to attend an interview can make or break getting a summer job. For example, I was specifically told once that the only reason I did not get a job was because I did not travel to the city for the second interview (the second interview was conducted via Skype™). This was after the recruiter told me that it was “no problem” that I couldn’t travel to that city. Lesson learned.
IV. Know Your Own Skills
This may seem like a given – you wrote your resume and should obviously know your skills and experience. However, you’d be shocked at how many interviewees stumble at questions about their own skills. Reviewing your own resume and having a clear list in your head of the skills you learned with each experience can also help boost your confidence during the interview. Furthermore, always review your previous scientific or technical projects – it is not uncommon for questions about previous projects to come up in an interview. Not knowing the answer to a scientific question about your own previous research projects is fatal to getting that job.
V. Don’t Underestimate Small Firms
If you really want a summer IP position, don’t limit your applications to the big firms. Smaller IP boutiques are great training grounds because students don’t get pigeonholed into a specific role. Generally, at a large firm, you’re placed in a specific technical group and that is the type of work you’ll be doing all summer. At a smaller firm, you will get exposure to several different technical areas and potentially different areas of IP. Resulting not only in a more interesting summer, but better overall training that will result in you being a more rounded and knowledgeable lawyer.
Another advantage of a small firm is that you generally have more hands-on training. At a big firm, it’s easy for students to get lost in the shuffle. At a smaller firm, you often have direct training from partners and advanced associates. Furthermore, working at a smaller firm gives you more visibility to stand out. Combine that with significantly less competition and you have a much higher chance of getting hired.
Lastly, if you don’t get that summer position, don’t fret – the majority of law students do not get law related summer jobs. However, it’s always a good idea to call or email each recruiter to ask for feedback on the process. After all, “the only real mistake is the one from which we learn nothing” – Henry Ford.
Brion Raffoul and Leber IP Law enjoyed a great evening at Captive Escape Rooms last night! Escape rooms are a great team building exercise that Brion Raffoul has used in the past. Everyone has to work together in a time crunch situation to escape!
Brion Raffoul was happy to welcome US Patent Attorneys Celia Leber and Dave Robertson to Ottawa and we wish them safe travels home.
“It’s impossible for any organization to have all the best ideas”
~ General Electric, Open Innovation Manifesto
Open Innovation as an R&D strategy may seem counter-intuitive; traditional corporate culture dictates the use of secret R&D labs that operate in an information silo. However, open innovation can offer many competitive advantages, such as complimenting your company’s internal skills and know-how with external knowledge and ideas, lowering R&D costs, and increasing differentiation in the market.
For example, in 2000, the Canadian gold mining company Goldcorp Inc. crowdsourced gold prospecting in an under-performing mine; Goldcorp knew they were sitting on a literal and figurative gold mine but their geologists could not find the main deposits of gold. Goldcorp created a challenge for the general public; they released all Goldcorp’s geological data (going back as far as 1948) and offered $575,000 in prize money to the innovators that could find the elusive gold deposits. At the time, this type of open innovation was contrary to traditional mining practices: Goldcorp was admitting they were unable to find the gold and was releasing all their proprietary data. However, Goldcorp’s challenge led to more than 110 gold deposits that yielded over $6 billion worth of gold.
So, if that doesn’t answer why open innovation is a worthy consideration for any business, consider that patent filings in Canada have not increased significantly in the past ten (10) years. However, this stagnation is not an issue of lack of funding. Indeed, statistics from Industry Canada indicate that Canada is second only to the United States when it comes to venture capitalist funding.
Collaboration between companies and with the public at large should be considered to invigorate innovation in Canada. In another successful example of open innovation, Bombardier held a contest to solicit urban mobility designs. They created a social media open innovation community integrated with live, offline workshops. The contest rules stipulated that the winners must transfer their IP to Bombardier in exchange for a small prize. Bombardier also kept a right of first refusal for a year for all non-winning ideas. By creating a community around innovation, even outside their company, Bombardier created a sense of self-determination and pride in the community, that resulted in innovation pouring into Bombardier. Indeed, Bombardier received input from 2,486 participants from 102 countries that contributed 4,239 designs, 25,979 evaluations, 8,565 comments and 3,445 messages on Bombardier’s proposed urban transportation projects. As a bonus to uncovering a gold mine of innovation, Bombardier customers were very receptive to their more open and customer-orientated brand.
However, it is important to note that “open” innovation does not necessarily mean the innovation is in the public domain; the devil is in the details. IP ownership provisions should be clearly outlined in an agreement between all involved parties. The following questions can be helpful in outlining the preferred ownership details:
- Who will own the IP stemming from the project (foreground IP)?
- What about jointly created IP (joint ownership/management of IP assets should be approached with caution)?
- Consider motivation factor for crowdsourcing when innovators own their IP?
- Does a royalty-free license in perpetuity make sense given the motivations of the IP owner (i.e., the company or the innovator)?
- What IP do the innovators and the company already own (background IP)?
- Who owns the feedback stemming from the project?
- Should a right of first refusal be included for IP that is not exploited during the project?
The bottom line: open innovation can be a great way to invigorate innovation within your company without resorting to a significant increase in R&D funding.
By: Edward Wu
Following the Government’s recent decision to ratify the Patent Law Treaty (PLT), the Orders in Council (OIC) published that the amendments to the Patent Act and Patent Rules under the Economic Action Plan 2014 Act and Economic Action Plan 2015 Act will come into force on October 30, 2019. Furthermore, the new Patent Rules will be published on July 10, 2019, under the Registration Number SOR/ 2019-0251.
The following important changes will be coming into force on October 30, 2019:
42-Month Deadline for National Phase Entries No Longer “As of Right”
The 42-month deadline for Patent Cooperation Treaty (PCT) National Phase entries is no longer “as of right”. To utilize the 12-month extension, Applicants must submit a statement that the failure to meet the regular 30-month deadline was unintentional. Clients should be aware of the shortened period for national entries and make corresponding arrangements.
Requirements of Certified Copies for Priority Documents
After October 30, 2019, certified copies of priority documents must be filed with the Office; however, this requirement does not apply if the priority document is an earlier Canadian Application or, in the case of a national phase entry, where the PCT priority document requirement has already been satisfied. Clients should be aware of this change and make preparations for document certification, if necessary.
Easier to Obtain Filing Dates
International clients can now obtain a filing date without translating the Description because the new Patent Rules will no longer require an English or French Description for obtaining a filing date. The translation of the Description may now follow at a later date.
Furthermore, the new Patent Rules will allow Applicants to obtain a filing date on any day of the year by filing electronically, even on days where the Patent Office is closed for a holiday or the weekend. This important change will allow Applicants to obtain a quick filing date prior to any disclosures being made.
Restoration of Priority Claim
The new Patent Rules provide relief for Applicants that unintentionally miss the deadline for a priority request. The 12-month period for priority claims may be extended to fourteen (14) months if the Applicant submits that the delay was unintentional. However, the Federal Court may revoke the priority request if they later determine that the delay was intentional. Clients should be aware of the limited application of this new right of restoration for priority claims.
Please refer to Brion Raffoul’s previous article for more information regarding the new Patent Act and Patent Rules.
By: Edward Wu
Despite the Toronto Raptors’ historic win last night, they may have some trouble ahead with their, now iconic, logo. Monster Energy is suing the Toronto Raptors over the clawed basketball logo. Documents from the U.S. Patent and Trademark Office’s (USPTO) Trial and Appeal Board (TTAB) show that the two companies have been fighting over the “claw” style logos since 2015. Monster Energy claims that the Raptors’ logo of a clawed-up basketball is too similar to Monster Energy’s claw logo:
Monster Energy’s Logo
Monster’s “claw” logo is of three jagged vertical gashes. The company has used the three gashes since 2002. The Raptors’ old “claw and a basket ball” trademark was filed with the USPTO in 1994 and registered in 2003.
Raptors’ Old Logo
In 2014, the Raptors redesigned the team’s logos and filed US trademark applications for the following:
Raptors’ New Logos
In May 2015, Monster Energy opposed the Raptors’ new US trademark applications. Over the past 4 years, the two companies attempted to settle the case but failed to reach a settlement by 2018, when the case went into discovery.
A recent document shows that Monster Energy filed a motion for partial summary judgement stating that the equitable defense of prior registration that the Raptors asserted is only available when the marks and goods/services in the subject application are essentially the same as the mark and goods/services in a prior registration. Monster Energy argues that the Raptors’ Trademarks are not substantially identical to the prior registration. Namely, the Raptors’ design was changed from independent claws and a basketball to claws within a basketball. Furthermore, one of the new marks added the words “TORONTO RAPTORS”, which is not found in the old mark. Monster also states that the Raptors described the new marks in very different ways, and they intended to create new marks for evolving the aging Raptors brand. The TTAB has yet to decide the outcome of the motion.
The trademark fight extends to the Raptors’ home court, Canada. Monster Energy opposed the Raptors’ Canadian trademark application for the “TORONTO RAPTORS” logo in December 2016. Interestingly, the Raptors successfully registered their new logo without the “TORONTO RAPTORS” on March 10, 2017 with the Canadian Intellectual Property office (CIPO).
Monster Energy may try to bring down the Raptors’ trademarks, but nothing can take away from last night’s win!