What is a Statement of Claim?

In short, someone is suing you. A statement of claim, prescribed by Form 14A in Ontario, should state the claims (complaints about you), the relief sought (what the plaintiff wants), and concise statements of material facts (the gist) on which the plaintiff relies on for his/her claims. You must file a defence within a very short period of time, usually 20 days, so do not ignore a statement of claim if you are served with one.

Glenn Carbol
Partner, Innovate LLP

Who or What is CIPO?

In Canada, CIPO refers to the Canadian Intellectual Property Office (http://www.cipo.ic.gc.ca). It handles the registration of various types of intellectual property and maintains searchable online databases of this information.

CIPO is also a job title in some organizations, meaning Chief Intellectual Property Officer. This person is typically different than the CIO (Chief Information Officer). The CIPO is usually not a lawyer but often a patent agent. Their job function is to make sure the organization's IP is up to date, watch for expiry dates and handle licensing agreements relating to the IP. The CIO on the other handle is usually an informational technology (IT) specialist that looks after IT contracts, infrastructure, websites, domain names, etc.

Glenn Carbol
Partner, Innovate LLP

Litigation is a Good Thing

First, I have been absent from the blogosphere for some time. The reason for this is that I have been busy helping clients with litigation matters. It is because of my recent experiences that I thought it was time for someone to point out the good things about litigation.

Why litigate?

The civil courts are busier than ever. Many people believe our society has become more litigious. I believe it has, but why? If our court system was dysfunctional or did not produce results no-one would use it. The reason why I believe our courts are busy is because our system works: it resolves disputes. In fact, they do a better job than non-litigation methods.

Benefits of Litigation:

• Fair: Litigation is governed by Rules of Civil Procedure and lawyers are responsible to the Law Society. When compared to the wild west of demanding whatever a party feels like and not being answerable to anyone, litigation offers a high level of procedural fairness. Litigation helps level the playing field, for both sides.

• Loser Pays: In Canada, courts operate on the loser pays principle. This generally means the “losing” party pays the legal costs of the “winning” party. This helps minimize lawsuits without merit.

• Public: Settlements out of court almost always contain confidentiality clauses, whereas litigation is public. Consequently, out of court settlements often favour the party who is not afraid of the dispute going public; a high premium is paid by the party who wishes to keep the dispute quiet. Litigating the matter can reduce settlement amounts.

• Transparency: Because of the discovery process (an exchange of all relevant information between parties) litigation offers a high degree of transparency. The more transparent the process the more likely it is you will get a fair outcome.

• Time: Litigation takes time and this is not a bad thing. Time allows for reflection and gives the parties an opportunity to cool down. In addition, legal fees are spent over the life of a case, not all at once, and by the time the case is decided or settled your company may have more money to pay a judgment or settlement amount.

• Settlement Offers: You can still make offers to settle during most of the litigation process. However, your offer and any offer you receive from the other party, if not accepted, will be used by the judge to determine costs. In other words, settlement offers mean more once litigation has commenced.

• Appeal: You can appeal a court decision, whereas you are not going to appeal your out of court settlement

• Common Law vs The Almighty Dollar: A judge basis his/her decision on statutory law and previous court decisions. An out of court settlement is based on a balance between what one party is willing to pay and what the other party is willing to accept regardless of the law (the matter is reduced to a dollar amount).

• ADR still Occurs: Most jurisdictions impose mandatory ADR after litigation begins anyways.

• Facts: Litigation involves an exchange of actual information (for the most part) as opposed to puffery and threats.

In short, we hear a lot about the evils of litigation but rarely stop to consider its positive elements. If you are in a dispute and would like to know your options regarding litigation I would be happy to share my thoughts on the matter with you.

Glenn Carbol
Partner, Innovate LLP

Google’s Data Wardriving

“Google said on Friday that its fleet of cars responsible for photographing streets around the world had for several years collected personal information sent by consumers over wireless networks.” (Source: http://www.nytimes.com/2010/05/20/business/global/20google.html)

I must admit I find this more interesting from an IT standpoint than from a legal one. To actually collect wireless data the cars themselves must have had Wi-Fi scanners (a normal Wi-Fi card is enough) onboard and the necessary software to download the data. It would be an uphill battle for Google to argue the data was collected by mistake or as a by-product. Some forethought (mens rea) went into designing, building and carrying out this task.

Where The New York Times article I sourced above did not delve deep enough in my opinion was to ask if Google was decrypting the data. Focusing on the collection of data is not as important as descrambling it.

Most of us are old enough to remember the days when we got all the cable TV signals sent to our TV but the ones we did not pay for were scrambled. We could record the scrambled channels with our VCR but it was far more useful to have a gray market cable box descrambler.

To set the record straight on how weak the standard Wi-Fi 128-Bit WEP encryption is, please read this from Microsoft: (http://www.microsoft.com/windowsxp/using/networking/security/wireless.mspx) I quote, "skilled attackers can still crack 128-bit WEP in a few hours or less, giving them access to your network. Can wireless encryption be 'cracked'? The short answer is, 'Yes.' Any encryption can be cracked. An individual with knowledge of computers and networking, and who is willing to spend a few hours researching free 'hacking' tools, can crack encryption in a few hours (or less)."

In other words, Google would not have to do much to download your broadcasted data, read it, and also access your network, if it wanted. That is the elephant in the room: Why collect it if you are not going to read it?

As an ex-IT professional, former president of an Internet Service Provider, and now technology lawyer, I can tell you with some certainty that your data is not secure; full-stop. Do most of us care? No.

Glenn Carbol
Partner, Innovate LLP

Starting Your Own Firm After Articling

Innovate LLP in co-operation with Phoenix Legal Inc. invites you to listen to the tale of three articling students who started their own firm after being called to the Ontario Bar. Bring your questions, as the talk will be short to allow plenty of time for an open and frank discussion about the process, risks and rewards.

6:00 - 8:00 PM
May 31, 2010

MaRS Centre
101 College Street

Main Reception Area
(behind & to the right of security desk)

Knowledge Management

Knowledge management (KM) is a fundamental business process for every company, especially companies that focus exclusively on the creation and generation of intellectual property.

A professional services company, such as a law firm, is just such an entity.

Managing new work product, multiple versions of work product, metadata associated with work product, and near simultaneous collaboration on work product are actually well known problems.

The clearest solutions, in my opinion, come from the software and technology industries. Version control, build control, multiple targets, sophisticated management of groups of changes that can be applied or rolled back, these are the issues faced daily by programmers and engineers.

The key to having a sustainable vision to KM is developing and deploying KM solutions that "evolve". That is, you must design from day one a KM system that suits your present and near future needs, while always understanding that you will grow past your present solution and require a new one.

Avoid vendor lock in, don't get mired in proprietary systems, focus on data liberation and data portability, don't take shortcuts or bury your head in the sand. Also, don't trust what a vendor advertises or tells you, do the homework and actually try getting your data out! If it's not in a easy and open computer usable format, it's worthless.

The KM system we deploy at Innovate LLP was designed from the ground up to account for these issues. Using our experience with managing build flows for multiple target platforms with multiple target operating systems does help in the design process. The reality is that your solution doesn't have to be complicated and it doesn't have to require specialized software.

Presently, we deploy Google Apps for email and calender; Xero for accounting; and Dropbox for document management. The KM aspect is handled in the way we organize our client matters and internal documents. Dropbox takes care of the automatic synchronization with basic version control of all our documents across all our computers in near realtime, limited only by bandwidth. This eliminates error prone processes of emailing documents back and forth, etc.

Discipline and usage is enforced by the relevance and simpleness of the system, and of course by a KM administrator. The KM administrator is responsible for leading by example and always focusing on "evolving" the solution to ensure the team wants to use the KM system because they are constantly reaping the rewards of the KM system and processes.

Currently, we had the great opportunity to add a new partner. Since all our processes and systems were designed to handle, more than one user, it was very simple to add him to our organizational infrastructure.

You may argue that we have a limited problem domain due to the number of users. However, we are also dealing with a modest budget, as are all KM and IT departments in all organizations. We are already researching new tools and learning to understand what the specialized legal and IP management systems have to offer. With growth comes the potential for pain, evolving the KM infrastructure just ahead of the growth allows your organization to focus on developing, selling and delivering.

If you have any comments or opinions, I would be happy to hear them.

Enjoy,

Felix

E-Learning for Canadian Judges, Lawyers, and Court Administrators

Congratulations to Glenn Carbol who was chosen by the Canadian Centre for Court Technology (CCCT) to lead a working group on e-learning.

The e-learning working group (EWG) is developing a series of how-to guides for providing e-learning to judges, court administrators, representatives of the Government (Justice), and lawyers. The guides will focus on suggesting the ideal types of content suited to distance learning and identifying delivery methods as well as technologies to deliver that content.

The CCCT is an exciting initiative that reflects collaboration amongst all justice sector participants to develop and implement a vision for technology that will enhance access to justice in Canada.

If you are interesting in contributing please contact Glenn for more information.

Centre for Social Innovation - IP Presentation

Click the following link for the slides to the Intellectual Property for All Organizations presentation.

Take care,

Felix

Introduction to Intellectual Property for Nonprofits

Join Felix Tang, Lawyer and Engineer with Innovate LLP for this session.

April 1, 2010
3:00pm - 4:30pm
Centre for Social Innovation
215 Spadina Avenue, Suite 120

Intellectual property ("IP") is important to every organization both non-profit and for-profit. Learn about how IP can be used to support your organization's mission. IP law provides a legal framework to protect organizational assets through trade-mark protection for brands, patents for inventions, and copyrights in created content.

After a brief introduction to the main types of IP, the focus of the presentation will be on understanding and using trade-mark law to protect an organization's brands, including company, product and campaign names.

To register, visit the event page at CSI: http://socialinnovation.ca/introduction-intellectual-property-for-nonprofits-0

New Partner Joins Firm

Innovate LLP is proud to welcome its newest partner Achmed Sadik. Achmed is a lawyer, patent and trade-mark agent with more than forty years experience. During his extensive career he has worked in the patent departments of IBM Canada and Nortel and was a partner at Bordner Ladner Gervais LLP.

Welcome Achmed,
Felix, Corrinne and Glenn

Entrepreneurship and Extracting Value from IP

Dr. Corrinne Lobe shared her thoughts on key practical IP considerations for entrepreneural ventures and commercialization of IP from the legal perspective, at the IP Osgoode and Hennick Centre conference on Feb 11, 2010.

Click here to view the presentation.

Dr. Corrinne Lobe
Partner
Innovate LLP

Offshore Your Lawyer

Whether you are an entrepreneur or a large mutli-national you will want to seriously consider moving some of your legal work to India. If Rio Tinto and Microsoft did it, so can you.
http://www.cpaglobal.com/media_centre/press_releases/0145/rio_tinto_signs_legal_services; http://www.lawgazette.co.uk/news/microsoft-outsource-general-legal-work-india

As a lawyer who worked for one of Canada’s largest law firms I can tell you there is a lot of legal work that can be easily handled by common law trained lawyers in India. The trick of course is figuring out what you are comfortable with offshoring. The most common tasks that are currently being offshored include: due diligence, document review, litigation documents, and intellectual property management (patents, trademarks, domain names).

Will you save a ton of money by offshoring your legal work to India? Maybe. You can realistically save yourself 20% on your legal bills according to the posted rates I’ve seen. However, you will want to ensure your local lawyer or in-house team is onboard with the idea and won't try to recreate everything that comes back, thus costing you more money in the end. Push-back from local staff is always the largest hurdle in offshoring.

Other issues you will want to consider before deciding to offshore is security, size of job and convenience. Many clients often need a relatively small task completed in a hurry (like yesterday). These types of jobs do not lend themselves well to offshoring. Also, general advice and brainstorming sessions don’t fit the model. The ideal situation for offshoring occurs when there is a defined labour intensive task that can be carved out from the rest of the work product.

In my opinion, offshoring is just another tool in the bag – it may not work in all situations but it is good to have. If you would like more information about offshoring legal work to India, contact me or search the Internet for “LPO” (Legal Process Outsourcing).

Glenn Carbol
Partner, Innovate LLP

WIPO Moving to Paperless Disputes

The World Intellectual Property Organization (WIPO) is moving to a completely paperless method for filing Uniform Domain Name Dispute Resolution Policy (UDRP) complaints. The new system will be the only route to file complaints come March 1, 2010.

Domain name complaints can be filed at WIPO's Arbitration and Mediation Centre. To find out more about the new rules for filing complaints you contact me or visit: www.wipo.int/amc/en/domains/supplemental/eudrp/

Glenn Carbol
Partner, Innovate LLP

Intellectual Property Case Studies

The Canadian Intellectual Property Office (CIPO) has developed, in collaboration with McMaster University, a series of six intellectual property case studies.

The studies aim to raise awareness and understanding of IP among college and university students. You can view the summaries here: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01946.html

Glenn Carbol
Partner, Innovate LLP

How to Search the Canadian Trade-marks Database

Patent and trade-mark lawyers were once again centre stage on CBC's Dragons' Den (Season 5, Episode 4). This time two dragons decided to fund trade-mark litigation. Assuming of course, the trade-mark makes it through due diligence.

Below is a step-by-step guide on how to search for registered trade-marks in Canada and how to find the show's trade-mark in question.

Step 1
Visit CIPO: http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang=eng

Step 2
Enter the words/numbers in the box that says “Enter Search Text”

Step 3
Leave the drop down box as the default “TM Lookup”

Step 4
Click Search

Step 5
Review the results by clicking on them, or if no results are found, try again.

Example
If we enter “Yo Mama” in Step 2, two results are returned. One of the results is an opposition by Richard Abramowicz in 2009 to the proposed use of the trade-mark YO MAMA MATERNITY.

If we enter “YoMama” in Step 2, three results are returned. Notice that removing a space between the two words made a difference. One of the results is a registered trade-mark by Richard Abramowicz for “YoMama Where”, which according to the database, was expunged (expunged means to erase or strike out) in 2007 for failure to renew. Yes, you must renew registered trade-marks. Common law rights might still exist, but that is a different matter. If you need help with a trade-mark contact our office.

To view his American trade-mark, click here.

Glenn Carbol
Partner, Innovate LLP

Patent Lawyer Lashing on Dragons' Den

Patent lawyers took a lashing last night on CBC's Dragons' Den (Season 5, Episode 3). Did the patent agent (or firm) who allegedly charged two inventors $100,000 for patents deserve the Dragons' wrath? Probably.

Inventors need to educate themselves on the hard costs of filing patents. This means, at the very least, visiting CIPO's website and the USPTO to see what the filing costs are. You will quickly discover that the filing costs make up a very small portion of your bill.

Always remember that as the inventor you have the option to draft and file your own patent.

For your convenience:
Canadian Intellectual Property Office: http://www.cipo.ic.gc.ca

Fees: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00023.html

United States Patent and Trademark Office: http://www.uspto.gov/

Fees: http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm#patapp


Glenn Carbol
Partner, Innovate LLP

The USPTO has On-line Chats? For Free?

Yes and here is a link to the USPTO’s (United States Patent and Trademark Office) on-line chat transcripts: http://www.uspto.gov/inventors/independent/chats/faq/index.jsp

Glenn Carbol
Partner, Innovate LLP

Air Travel and Complaints

As frustrations grow, so will the number of complaints against airlines. If you want to make a complaint about a Canadian airline, these links might be of interest to you:

The Canadian Transportation Agency (CTA) is an independent administrative tribunal of the Government of Canada that operates like a court.

It is responsible for:
* dealing with and resolving disputes related to various aspects of transportation;
* improving access to transportation services; and
* making decisions in air, rail and marine transportation as an economic regulator.

For complaint statistics view: http://www.otc-cta.gc.ca/eng/atc-statistics

Chart relating to air travel complaints investigated about Canadian Carriers (2008-2009) (Source CTA) http://www.otc-cta.gc.ca/doc.php?sid=2049&lang=eng

Categories of air travel complaints against major Canadian Carriers (Source CTA) http://www.otc-cta.gc.ca/doc.php?sid=2053&lang=eng

Air Travel Complaints Annual Reports (Source: CTA)
http://www.otc-cta.gc.ca/doc.php?sid=1062&lang=eng


Glenn Carbol
Partner, Innovate LLP

Convert Your Provincially Incorporated Company in to a Federally Incorporated Company

OBCA to CBCA? Yes, it can be done.

If you want to convert your Ontario corporation, or any other province, into a Federal corporation read Industry Canada’s Articles of Continuance Information Kit: http://www.ic.gc.ca/eic/site/cd-dgc.nsf/eng/cs02720.html

Glenn Carbol
Partner, Innovate LLP

FIPPA and MFIPPA in 4 Steps

Are information requests from provincial organizations useful? Yes and you can do them yourself.

Step 1: Read the Manual (you won’t, so skip this step):
Manual
http://www.accessandprivacy.gov.on.ca/english/manual/index.html

Tip: Read this more Useful Guide from uOttawa-Ecojustice Environmental Law Clinic

Step 2: Find the Institution You Want Information From:
Directory of Institutions - Provincial Ministries and Agencies
http://www.accessandprivacy.gov.on.ca/english/doi/prov.html

Municipalities and Local Boards
http://www.accessandprivacy.gov.on.ca/english/doi/mun.html

Step 3: Find the Coordinator of that Organization:
Ontario’s FIPPA (Freedom of Information and Protection of Privacy Act) and MFIPPA (Municipal) Coordinators
http://www.cfipo.gov.on.ca/mbs/dor/dirrec.nsf/HighUnitNameView?openview

Step 4: Fill out the Request Form with the $5 fee and mail it:
Download Access/Correction Request Form
http://www.accessandprivacy.gov.on.ca/english/download/index.html

Tip: You might be able to save yourself $5 by not making an official FIPPA request; simply ask the institution for the information. “Not all requests for information need to be made under FIPPA/MFIPPA. Information can be provided in response to an oral request or in the absence of a request, where an institution may give access to that information under FIPPA/MFIPPA. The Acts should not be applied to preclude access to information (except personal information) that was available by custom or practice before they came into force.” Source. (http://www.accessandprivacy.gov.on.ca/english/manual/CHAPTER1.htm)

Glenn Carbol
Partner, Innovate LLP