E-TIPS

The US District Court for the Eastern District of Virginia has granted a preliminary injunction in Smithkline Beecham Corporation et al v Jon W Dudas et al (which was consolidated with Triantyfyllos Tafas v John Dudas), enjoining the USPTO from implementing its new patent application rules on claims and continuations (New Rules).

Several major commercial copyright owners have collaborated to create a set of principles aimed at tackling the problem of copyright infringement by user-uploaded and user-generated audio and video content (UGC services). The collaborators include Disney, CBS, NBC Universal, Fox Entertainment, Viacom and Microsoft. Notably absent from the group are Google, owner of YouTube, the biggest player in the UGC services area, and Yahoo! However, another large player, MySpace, did sign on.

The University of British Columbia (UBC) is challenging a finding of the BC Information & Privacy Commissioner under the BC Freedom of Information and Protection of Privacy Act (FIPPA) in a case involving spyware used to track an employee's computer use in the workplace.

On October 1, 2007, new Trade-marks Regulations came into effect in Canada, changing certain time limits in opposition proceedings. Under the new Regulations, applications which are advertised after October 1 will see the time period for filing the counterstatement increased from one to two months and for filing evidence from one to four months.

The USPTO has issued new detailed guidelines for assessing obviousness of inventions. The guidelines were adopted following the 2007 US Supreme Court decision in KSR International Co v Teleflex Inc (82 USPQ2d 1385) (see E-tips® Vol 5, No 22 May 9, 2007 "US Supreme Court Rules on Issue of Obviousness in Patent Law").

The Federal Court, in its recent decision in Pfizer Canada Inc et al v The Minister of Health et al [2007 FC 898], has extended the extraterritorial reach of Canadian patent law. The case involves an application brought by Pfizer Canada Inc (Pfizer) under the Patented Medicine (Notice of Compliance) Regulations to prevent the Minister of Health from issuing a Notice of Compliance to Ranbaxy Laboratories Limited (Ranbaxy) for the anti-cholesterol drug atorvastatin calcium (Lipitor®).

California Governor Arnold Schwarzenegger signed into law Bill SB 362 prohibiting the forced implantation of radio frequency identification devices (RFID) in humans. This follows similar legislation enacted in Wisconsin and North Dakota. RFID chips are frequently used to identify missing pets, track livestock, or in "wave-and-pay" cards such as Shell easyPay or Esso Speedpass.

On application by Ticketmaster LLC (Ticketmaster), US District Court Judge Audrey Collins of the Central District of California issued a temporary injunction against software company RMG Technologies Inc (RMG) that prevents RMG from creating and selling automated software programs able to purchase massive quantities of tickets through Ticketmaster web sites. Ticketmaster asserts that the injunction also prohibits RMG from using information obtained from Ticketmaster web sites to create software that can bypass Ticketmaster's copy protection and web site regulation systems.

The Canadian Patent Office has changed its requirements for sequence listings, and now mandates that sequence listings be in the same format as under the Patent Cooperation Treaty (PCT). If the PCT standard changes, the Canadian standard will also change to conform automatically.

The Canadian Patent Office has clarified the rules regarding a "small entity", that is, an entity with less than 50 employees, which has not licensed or given as security its rights to the patent in question. The Patent Office is confirming the entity status of all patentees and applicants by requiring that any fees paid at a small entity rate after June 2, 2007 be accompanied by a small entity declaration, if one is not already on file. A failure to submit a small entity declaration in this circumstance may lead to abandonment.

In November 2006, the Minister of National Revenue (MNR) applied for and obtained an order (Order) from the Federal Court of Canada (Court), without notice to the respondents, against two affiliated companies, eBay Canada Limited and eBay CS Vancouver (collectively, eBay), owned ultimately by an offshore corporation, eBay Inc.

Two recent decisions in the US Court of Appeals for the Federal Circuit (Court), In re Stephen Comiskey and In re Petrus Nuijten, have restricted the availability of patents for processes by requiring that the processes be tied to otherwise patentable subject matter. Stephen Comiskey appealed the rejection of his claims related to an arbitration method.

The US House of Representatives has passed the Food and Drug Administration Amendments Act of 2007 (Act), which was signed into law by the President on September 27, 2007 (for a discussion of the version of the bill previously passed by the US Senate, see the earlier article in E-TIPS®, "US Congress Moves to Expand FDA Powers in Monitoring Drug Safety" Vol 5, No 24, June 6, 2007).

New Zealand's Police Act was enacted in 1958 and the government realized that it needed to be updated to meet contemporary policing challenges. As a result, the New Zealand government launched an 18-month long review of the Police Act (statute) and sought public consultation as part of the review.

On October 4, 2007, a US federal jury ordered Ms Jammie Thomas to pay $222,000 to copyright owners for making copyrighted music available online, the first such suit to result in a verdict.

On September 19, 2007, the Commissioner of Patents granted a Canadian generic pharmaceutical company, Apotex Inc (Apotex), an authorization to manufacture certain anti-retroviral pharmaceuticals for the treatment of HIV/AIDS for export to Rwanda. The companies holding patents in respect of these pharmaceuticals consented to Apotex's application. This is the first authorization under Canada's Access to Medicines Regime (CAMR).

Europe's top court, the European Court of Justice (ECJ), has clarified that the shape of a product cannot constitute a trade-mark. G-Star International BV (G-Star) had successfully registered two trade-marks on the shape, stitching and cuts of some of its jeans. Benetton Group SpA (Benetton) allegedly sold jeans that infringed G-Star's marks. When G-Star sued for infringement, Benetton counter-claimed to have the trade-marks cancelled. The dispute made its way through local courts to the Dutch Supreme Court, which then requested the ECJ to clarify the law regarding shape marks.

© 2007, Deeth Williams Wall LLP. All Rights Reserved. By: Amy-Lynne Williams INTRODUCTION If you have ever downloaded a 99¢ song from iTunes.com or used a transit payment card to take the subway to work, you are player in the new world of electronic micropayments. The term "micropayments" usually refers to small payments, of a few cents to about $10.00.

Part One © 2007, Deeth Williams Wall LLP. All Rights Reserved. By: Amy-Lynne Williams Outsourcing is not new – it used to be variously called data processing management, facilities management and service bureau processing. Regardless of what it is called, basically it involves a customer giving responsibility to an outsourcer for the operation and maintenance of all or part of the customer's IT operations or the operation of a business unit.

© 2007, Deeth Williams Wall LLP. All Rights Reserved. By: Amy-Lynne Williams and Michael Erdle INTRODUCTION Today, when we speak about outsourcing, we could be talking about domestic outsourcing, near-shore outsourcing, off-shore outsourcing or global outsourcing. Global outsourcing is different from offshore outsourcing.