Digital books and ownership rights in the information age

By Osman Ismaili, April 28th, 2020

It is interesting how digital books compare to physical books in this electronic age. The rights users have over physical books have often been likened to the rights we may have over currency. For example, just like we can’t make copies of currency, we can’t make copies of a book protected by copyright – but we can trade a book for something else, loan it to someone, give it away as a gift, or resell it. We can own the physical copy of the book itself, even if we don’t own the right to copy it.

Digital books (aka eBooks) on the other hand seem to present a far more complex set of ownership rights. Not only is it the case that users do not have the ability to do many of the above things with digital content, it may actually be the case that they do not “own” the actual digital book either.

In mid-2019, Microsoft announced that it would cease to provide digital books on the Microsoft Store. In accordance with this move, it also said that it would be deleting user’s existing digital book libraries. While users would be refunded for the purchases they had made, one can’t help but imagine that users would still feel a bit frustrated with this forced sort of refund.

And as history repeats itself, this scenario is no stranger to the law. In 2009 (indeed, a whole decade before the Microsoft matter), Amazon had run into some legal troubles for similarly deleting copies of works by George Orwell from customers’ Kindles. After a teenager sued the company (possibly for having been unable to complete his homework), Amazon settled and promised that it wouldn’t delete content from U.S. users’ devices without their permission.

This blurring of the rights associated with digital content has recently gained even more attention with Macmillan Publishers’ stance on libraries and eBooks. As one of the world’s largest publishing companies, it’s interesting to see Macmillan restricting sales of eBooks libraries in order to prevent them from loaning more than a single copy of a digital book to a single reader at one time. This has resulted in lengthy waiting lists for eBooks at many libraries, something some have called a means to restrict certain classes from obtaining new literature.

The reason Macmillan Publishers is likely able to do this is because digital copies of books actually remain under the ownership of the publishing companies, and are usually only licensed to users, libraries or whoever else. Thus, if a publisher, or even a distributor like Microsoft or Amazon, decides to end the licensing agreement, they can.

As one possible way to circumvent this system, many authors are now choosing to bypass publishing houses altogether, and create exclusively digital content for companies like Amazon directly. This however means that certain works will only be available digitally through certain companies. This may result in people having to obtain a plurality of subscriptions, and has been analogized to requiring subscriptions to Netflix, Hulu, Amazon Prime in order to watch all the shows you love. Perhaps readers will not though, as long as they can still snuggle up at the end of the day to read their favourite works.

If you are wrestling with a digital ownership issue and would like some assistance, please reach out to MBM today and one of our professionals would be happy to assist you.

Importance of Determining Inventorship Prior to Patent Issuance

By Jamal Hakimi, May 12th, 2020

Determining inventorship, prior to patent issuance, can save an applicant the costly procedural and evidentiary burden required for correcting the named inventors post patent issuance. Since Canadian patent law requires that each patent application list the sole inventor(s) of the claimed invention, divisional applications derived from an application having two or more inventors must list only the inventors that contributed to the claimed invention.

Although a patent may still be issued for an application not listing the sole inventor(s) of the claimed invention, the patentee may be required to correct the records of the Patent Office to reflect the sole inventor(s). However, post patent issuance, to correct the records of the Patent Office, the patentee must bring an application to the Federal Court (“Court”). In doing so, the patentee must follow the evidentiary and procedural requirements for removing a named inventor and/or adding an inventor to the named inventors of the issued patent. This was the case in Inguran LLC dba STgenetics v Commissioner of Patents, 2020 FC 338, for which the patentee, STgenetics, brought an application to the Court for an order to remove six of the twelve named inventors from the records of the Patent Office relating to four issued patents.

To obtain the order for removing named inventors, ST genetics had to meet the test outlined in Imperial Oil Resources Ltd v Canada (Attorney General), 2015 FC 1218. The test asks two questions:

      1. Does it appear that one or more of the named inventors have no part in the invention? and

      2. Has an affidavit been provided to satisfy the Court that the remaining inventors are the sole inventors?

In order to meet the test, STgenetics provided affidavits from both inventors determined to have contributed to the issued patents and from non-inventors incorrectly named as inventors. The determined inventors deposed that they contributed to the issued patents, and the non-inventors deposed that they did not contribute to the issued patents.

Based on STgenetics’ evidence, the Court determined that STgenetics met the procedural and evidentiary burden required for removing the names of the non-inventors. Accordingly, the Court ordered the Commissioner of Patents (“Commissioner”) to vary the records of the Patent Office with respect to the inventorship of the issued patents.

Although STgenetics’ application to the Court was successful, the application and the evidentiary burden to satisfy the Court of the relevant jurisprudential tests and procedural requirements could have been avoided had the inventorship been determined prior to the issuance of the patents. STgenetics, could have simply, prior to receiving the notice of allowance, requested the Commissioner to remove the names of the non-inventors and submitting the affidavits. Had STgenetics done so, it could have saved the time and money spent in pursuing the Court application.

Common Patent Misconceptions - Myth #3

By Osman Ismaili, May 26th, 2020

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #3: My idea is too obvious for patenting.

When assessing whether an invention is patentable, broadly speaking, there are three core aspects that must be considered. These aspects are novelty, nonobviousness and utility. In this article, we’ll focus on the second aspect, nonobviousness, which, in essence, means that the invention must possess some sort of “inventive spark”.

Often times, inventors may believe that an invention they have come up with isn’t really inventive. There can be a number of reasons for this thinking. Maybe the inventors have made an improvement to an existing technology, or maybe the invention combines a few known aspects in a new way. Whatever the case may be, inventors should try to maintain an “inventive until proven obvious” stance when faced with a situation like this.

An example of a success story in relation to this is the Haberman® Feeder. After her daughter was born with a cleft palate, Mandy Haberman invented a special bottle for infants that experience difficulties suckling. Haberman obtained patents for the bottle, which was a huge success, as were many of Haberman’s other products.

A key marker of a successful product is the appearance of infringers, which was the case with Haberman’s products. In court, the infringers argued that the patent in question was invalid for obviousness, a very common tactic exercised by infringers when they are cornered. The court found otherwise though and explained the invention was not obvious for a number of reasons, including that fact that even much larger companies in that space had been unable to address the problem it had solved.

Haberman explained to the World Intellectual Property Organization (WIPO), “Because I had patents, I was able to go to court, defend my idea, enforce my patent rights and that meant that I kept my monopoly in the market. This made me a lot of money; if I had not had the patents, I would not have made anything”. She later also initiated legal proceedings to defend her IP rights in the US and Europe, where the validity of her patents was established. Haberman stated that, “As a result of my US patents being declared valid in court, other companies have since requested licenses”.

A key takeaway from the Haberman story is that patents are powerful tools which may be both used to defend one’s rights, as well as asserted against others offensively. However, neither option would be available to an inventor who did not obtain their patent rights. The mindset that one’s invention is too obvious to even attempt patenting can only result in the inability to counter when copycats eventually arise.

If you have created or invented something which you feel may be patentable, please feel free to reach out to MBM for a free consultation.