Curriculum & Programs

Instructor(s): Simon Stern, Arij Al Chawaf, Andrew Moeser, Zarya Cynader

Pre-requisites/Co-requisites

Externship Seminar

4 credits; 2.5 hours
2 credits (ungraded) per term

Max Enrol: 4 JD (limited to third year students)

Conditional enrolment - See details on how to register

The Centre for Innovation Law and Policy at the University of Toronto Faculty of Law runs a regular Workshop Series on topics involving the relation between law and technology, such as intellectual property, privacy, defamation, competition law, law and literature, globalization and social justice. The Workshop meets 8 to 10 times throughout the academic year. While the Workshop is open to the public, students wishing to register in the Workshop may do so for academic credit. For the 2015-2016 list of speakers and dates, please click here or go to our Events page.

The topics will be:

(i) Distinctiveness. In EU parlance, the essential function of marks is to ‘indicate trade origin.’ What does this mean? How does it differ from being new, creative or attractive? From whose perspective is it assessed? Is it possible to say when trade marks do function to indicate origin? What kind of evidence is relevant? To what extent are policy considerations relevant? If a mark loses distinctiveness can it be maintained? Should it matter whether the trade mark owner was at fault?

(ii) Functionality. Even if marks are distinctive, many systems preclude protection of marks that are ‘funtional’? Why should we tolerate confusion in such cases? What is meant by functionality? How is it assessed?

(iii) Registration. Many – most – trade mark systems are premised on registration. What are the goals of registration? How does registration work? What are its effects?

(iv) Use. Some systems premise protection on use rather than registration; most systems, even registration systems, allow marks to be revoked absent use. Why is use important? What does it mean? Should protection ever be afforded to marks that are not used? Does a trade mark owner have a right to use?

(v) Territory. Both use based and registration based systems link protection to territory – the territory of use, or that of registration. What are the implications for international marketing? What mechanisms are available to enable traders to secure foreign markets in advance of expansion? What mechanisms prevent opportunistic behaviour?

(vi) Confusion. What is confusion? Why is it thought problematic? From whose perspective is it assessed? What types of confusion might be identified? How can the existence of confusion be proved?

(vii) Dilution, Tarnishment and Free Riding. Some trade mark systems give some mark holders protection other than against confusion. In what other ways may their interests be prejudiced? Are there good reasons for affording protection? How might third party interests be accommodated?

(viii) Third Party Interests. How are third party rights and interests incorporated into the system? What is the relationship with (a) freedom of speech; (b) personal rights eg to use ones name; (c) cultural values? Are these best accommodated by refusing protection, by providing exceptions to rights, or in some other manner?

The principal justification for modern intellectual property rights is the advancement of human welfare. Intellectual property (IP) laws are an important policy tool to facilitate a number of important human rights goals that are central to human flourishing, including access to knowledge and access to medicines. Nonetheless, there remains enduring and deeply divided approaches to IP rights between the developed countries where most conventional innovation occurs, and developing/least-developed countries that historically have been net importers of technology and other knowledge goods. These divergent approaches implicate the structure of the international IP system and reflect deep tensions and ambiguity about the role of IP in promoting access to public goods such as health, education and environmental sustainability. How countries implement IP policies can also affect the human right to development and other public international law norms consistent with improving public welfare while promoting innovation and competition.

This course will examine the intellectual property system in global perspective. It will highlight the rights and obligations of countries under the World Trade Organization’s Agreement on Trade Related Aspects of Intellectual property (TRIPS Agreement); legal issues relating to pharmaceutical patents, trans-border shipments of generic drugs and the Doha Declaration; the WIPO Development Agenda; the relationship between IP and human rights obligations (especially the right to participate in cultural life), and the role of IP in climate change mitigation/green technology transfer efforts. Students will learn about the various pathways for global IP norm-setting, and the geo-political considerations that influence international cooperation on IP issues. Finally, students will study recent international developments that affect the innovation potential of many poor countries, including the recent turn to investment/plurilateral agreements as sources of global IP rights.

The Centre for Innovation Law and Policy at the University of Toronto Faculty of Law runs a regular Workshop Series on topics involving the relation between law and technology, such as intellectual property, privacy, defamation, competition law, law and literature, globalization and social justice. The Workshop meets 8 to 10 times throughout the academic year. While the Workshop is open to the public, students wishing to register in the Workshop may do so for academic credit. Previous workshop guests include Margaret Radin, Wendy Gordon, Jessica Litman, Mark McKenna, Maurizio Borghi, Mark Rose, Yoav Mazeh, Christopher Millard, Barton Beebe, Christopher Sprigman, Ann Bartow, Brett Frischmann, Avi Goldfarb, Margaret Chon, Michael Birnhack, Ignacio DeLeon, Frank Pasquale, David Wall, David Winickoff. For the 2014-2015 list of speakers and dates, please click here or go to our Events page.

The Structural Genomics Consortium is a not-for-profit public-private partnership based at the University of Toronto and Oxford University that engages in pre-competitive basic science research to facilitate and enable the discovery of new medicines. It catalyzes research in new areas of human biology and drug discovery by focusing explicitly on less well-studied areas of the human genome, for example epigenetic signaling pathways.

The SGC accelerates research and drug discovery in these areas by making all of its research output available in the public domain with no restrictions on use and no patent protection, and by creating an open collaborative network of scientists in hundreds of universities around the world and in its nine global pharmaceutical company partners.

To facilitate its various ongoing research projects and to secure its ability to place the results of this research into the public domain to be used freely by others, the SCG is negotiating novel open innovation contracts with various parties within its collaborative ecosystem, including funding agreements with private and public sources of financing; and memorandums of understanding, collaboration agreements, and material transfer agreements with partner research organizations, disease foundations, and scientists.

Students will attend contract negotiations led by experienced intellectual property lawyers; at the direction of the field supervisors and under their supervision, prepare initial and revised drafts of memoranda of understanding, research collaboration agreements, material transfer agreements, and funding agreements that promote the SGS’s open innovation policy; and carry out legal research.

Students will also meet, in a seminar format, with Professors
Stern and Niblett, to discuss readings on patent law and the developing alternatives to conventional patent protection, and with Professor Aled Edwards, who will provide instruction about the background to the SGC initiative and to the open-access movement in medical innovation more generally.