Canada
May, 2008
Source:
Ag-West Bio Inc.
Bio-Bulletin Voume 3 issue 3
On April 17th, over 30
participants attended a seminar on the protection and
commercialization of biotechnology. Gowlings Life Sciences
Industry Group and Ag-West Bio
Inc.. hosted the morning event supporting the development of
life science organizations in Saskatchewan.
Gowlings’ Konrad Sechley spoke on patents, stating, “Complex
products are covered by potentially hundreds or thousands of
patents.” Each component or piece of technology can be covered
by many patents. Many options for patenting exist, including:
cross-licensing, patent pools, open source, Fair Reasonable Ad
Non-Discriminatory (FRAND) terms, and designing around
technology. Sechley warned, “The creep of technology in the lab
must be dealt with and might require licenses.” Especially in
university settings, materials may be shared among researchers
between labs and researchers and students may not be aware of
contract obligations. Biological Open Source (BiOS) is a
framework that enables sharing of patented and non-patented
technology by those who agree to the agreed principles. However,
new patentable advances return to BiOS. Sechley recommended that
designing around patented technology may be the strongest
position for most players in the biotechnology sector.
Judy Erratt continued the morning’s session with a presentation
on intellectual property (IP) due diligence
audits. IP audits are helpful in ensuring that a company is
managing and exploiting its IP in the most effective
manner as well as managing the risk of infringing third party
rights.
Thorough due diligence reviews include a listing of inventory,
inventorship, ownership, strength of portfolio and freedom to
operate. Erratt reminded the participants that “in Canada, an
inventor is generally considered to be
the person who conceives the invention and puts it into
practice.” Naming incorrect inventors may invalidate a patent
application.
The next session focused on changes to American and Canadian
patent rules. In the US, requests for continued examination have
increased 10-fold in the last five years and appeals have
doubled between 2006 and 2007. The result is that the United
States Patent and Trademark Office has several options to manage
the application process. Decisions are still pending. In Canada,
Judy Erratt recommended that even small organizations or
universities file under the rules for large entities to ensure
issues, such as the inability to transfer or license any right
in the invention to an entity that employs 50+ employees, are
avoided in the future. On the topic of stem cells, in June 2006,
the Canadian Patent Office issued a practice note that animals
from any stage of development from fertilized eggs on are
“higher life forms” and not patentable. However, this is
contrary to recent Supreme Court ruling and the findings will
have influence on future stem cell policy. A one-year pilot
project to accelerate applications between Canada and the US
began in January of this year and may be extended if successful.
Gowling’s Ottawa partner, Jane Clark, completed the morning with
a discussion of key copyright issues. Owners and authors have
rights; whoever creates the work is the copyright owner unless
that person is an employee working in the course of his/her
employment. Signed assignments are recommended for contractors.
Another issue surrounds moral rights. Authors, even employees,
have moral rights, including a right to be associated, a right
to remain anonymous and a right to the integrity of the work.
The third major issue of copyright is the distinction between
existing and future works. Agreements must be signed by the
author, dated and witnessed. Clark also noted that attempts to
reform Canada’s copyright practices have held up.
Gowlings specializes in business law, intellectual property and
advocacy. This year, company representatives are visiting
several Canadian centres, sharing legal advice on IP. |
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