December 2017 Sections Update

  • December 01, 2017

Intellectual Property & Technology Law Section: Year in Review

On February 10, the Section discussed the high failure rates of software development projects and how more often than not, these projects experience adversities such as delays, ballooning costs and defective work product. David Crane, Partner, McCarthy Tétrault LLP (Vancouver), provided an overview of key risks and issues with respect to software development agreements and how they can be addressed through innovative approaches and effective contractual mechanisms. It included an examination of the increasingly popular “agile” software development methodology, including its advantages and disadvantages and how an agreement for agile software development requires a specialized contractual approach.

The technologies and skillsets of today’s visual effects houses has brought us a dazzling array of cinematic possibilities: We’ve seen Jeff Bridges return as his 30-year-old self (Tron Legacy), and Brad Pitt age in reverse (The Curious Case of Benjamin Button). More recently, Peter Cushing and the late Carrie Fisher returned from the grave to reprise rolls they originally played 40 years ago (Star Wars: Rogue One). On May 2, Ronan Reinart, Bell Alliance, discussed these exciting technological advances and how they present a number of legal and ethical issues, and how the nature of digital image-making technologies has surpassed what was envisioned by originators of copyright laws.

On June 26, Christopher Sweeney, Partner, Knobbe Martens, Seattle, presented on biotech patents and strategies for securing and maximizing protection in the US, elaborating on recent developments in the area of patent eligibility subject matter across the border. Christopher elaborated on section 101 of the Patent Act, which defines patent-eligible subject matter to be “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof.” However, he noted that even if a discovery falls within these categories, courts have held that laws of nature, natural phenomena, and abstract ideas are not patent-eligible. The rationale behind these judicially recognized exceptions is that certain knowledge should be free for everyone to use. Therefore, while discoveries that are considered laws of nature, natural phenomena, or abstract ideas are themselves not patent-eligible, methods and products employing these discoveries to perform a real-world function are patent-eligible. So, even though recent developments in patent law have made it more difficult to secure patent protection for certain technologies within the life sciences, there are still ways to make such inventions patent-eligible. 

Christopher guided members through the changing legal landscape in the US to show how patent applications and claims may be drafted to maximize the likelihood of securing commercially valuable patents. He also advised on the importance of method claims for pharmaceutical inventions and the options available for patent stacking and maximizing patent terms (especially in light of FDA delay).

On November 24, the Section hosted Tingxi Huo of Chofn Intellectual Property in Beijing, China, to discuss tips and traps companies should be aware of as they prepare to do business in China. Having been involved in applications for trademark registration, opposition, re-examination, investigation in infringement, litigation and strategic planning for enterprise trademark since 1998, Mr. Huo has delivered IP agency service to world-renowned enterprises like Nokia, Sony and Casio, and brought this experience to CBABC members.

Intellectual Property & Technology Law Save-the-Dates 2018

The CBABC Intellectual Property & Technology Section kicked off the 2017-2018 term with its annual social event on November 5, 2017 at the Lions Pub in Vancouver, where members had an opportunity to network and meet one another in a relaxed social environment. If you missed this opportunity, members will have a second chance to connect during a spring social event to wrap up the term. Details will be announced in the new year. 

The Section will be hosting Kieran Moore, IP counsel for Lululemon, who oversees Lululemon’s intellectual property protection. Kieran sets Lululemon’s strategic directions, identifies IP with designers, developers and inventors, and co-ordinates patent, trademark and other IP protection and disputes. In March of 2018, Kieran will speak to best practices for working with in-house counsel. 

Additional luncheon events will be announced in 2018.

Meet the Section Executive Intellectual Property & Technology Law

The Section is chaired by Stephanie Melnychuk (pictured), an associate and registered patent and trademark agent at Oyen Wiggs Green & Mutala LLP. Stephanie brings extensive experience as Co-Chair, Vice-Chair, and Member-at-Large positions in previous terms. Pablo Tseng, an associate and registered patent agent at McMillan LLP, is Vice-Chair, and has previously served as the Section Secretary, Legislative Liaison, and Registration Officer. Amanda Wheat, an associate and registered trademark agent at Richards Buell Sutton, is the Section Treasurer, volunteering in this position since 2014. Mat Brechtel, an associate and registered trademark agent at Norton Rose Fulbright Canada LLP, is the Legislative Liaison, who joined the ranks of the Section Executive this past term as the Registration Officer. In her inaugural year, Yui Fei, an associate at Richards Buell Sutton, is volunteering as the Section Secretary. Also in her inaugural year, Member-at-Large, Christina Kwok, joins us from Oyen Wiggs Green & Mutala LLP.