Patently remarkable: Ottawa

The Canadian government’s intervention in a U.S. patent infringement case involving Waterloo, Ont.-based Research in Motion Inc, (RIM) has triggered a great deal of interest among legal experts, who say it’s the first time Ottawa has officially voiced its opinion in such cases.

“It’s almost unheard of…,” is how one lawyer put it.

The case had originally concluded with the U.S. district court awarding NTP Inc., a Virginia-based patent holding company, $53.7 million and ordering RIM to pay 8.6 per cent of royalties on sales of its Blackberry handheld devices in the U.S. Also, an injunction was placed against RIM’s Blackberry system that would prevent the company from making, selling and servicing the increasingly popular devices south of the border.

RIM argued that part of the infringement charge laid against it by NTP involved RIM’s delay and routing systems that are based in Canada, meaning that U.S. patent laws should not apply. RIM appealed the case but lost and has applied for it to be re-heard.

Enter Ottawa, with the opinion that the court’s decision could have significant impact on many of this country’s business sectors.

The feds filed what is known as an amicus curia brief to the U.S. Court of appeals on January 13, which stated the Government of Canada “has a strong interest in the protection of intellectual property rights and in fostering the innovation that forms the basis of, and is promoted by, such rights.”

A lawyer familiar with such issues raised his eyebrows at the cross-border move. The Candian Chamber is interested…in ensuring comity and balanced treatment in the laws affecting commerce between Canada…and the United StatesCanadian Chamber of Commerce briefText

“It is almost unheard of for the Government of Canada to intervene in cases outside the country,” said Simon Chester, a partner with the law firm Heenan Blaikie in Toronto. But he added the government would not have “pulled out the stops to get a submission together” if it did not think there were significant implications. The Canadian Chamber of Commerce and the Information Technology Association of Canada have also intervened in this case, and other amicus briefs are expected to be filed in the near future.

The Canadian Chamber’s brief urges “comity and balanced treatment” in the laws affecting commerce between Canada and the United States.

Noting that Canadian businesses are increasingly global in their commercial dealings, the brief raises the issue of “extraterritorial application of U.S. patent laws” that hold a Canadian business liable for activities occurring at least partially within Canada. It seeks “certainty concerning the extraterritoriality of U.S. patents” so Canadian companies can “plan their businesses and design their technology accordingly.”

It also notes that prior to this case, the law was abundantly clear – the patent statute would not support a claim of infringement for actions occurring at least partially outside of the United States unless Congress clearly and certainly signals its intent to do so.

Ottawa apparently has the same concern: the implications of U.S. patent laws being applied outside that country’s borders

According to Chester, Ottawa is also concerned about how Canadian businesses in other sectors might be affected if the U.S. court’s ruling were accepted by other courts. These sectors, he said, include the high tech and biotech sectors and any other area where patents are critically important.



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