Tuesday, February 22, 2011

Who is paying your maintenance fees?

In Canada, an applicant applying for a patent must pay maintenance fees to the government, even when no patent has yet been granted. The first maintenance fee is due 2 years after the patent application is filed, and continues for the life of the patent and/or patent application.

However, just because maintenance fees are due to the government does not mean that anyone can pay them. In Unicorp v. Canada, 2011 FCA 55, a law firm tried to pay the maintenance fee for an patent, but as it was not the appointed agent for patent in question, the payments were refunded and were not applied to the patent. The patent was subsequently deemed to be irrevocably abandoned due to a failure to pay the required maintenance fee. The Federal Court of Appeal affirmed that the patent was irrevocably abandoned due to a failure to pay fees.

It's thus important to remember that while remembering to pay maintenance fees are important, it is just as important to ensure that the person or entity paying the maintenance fee is the appointed agent, or is otherwise an authorized correspondent to the patent or patent application in question. In patent law, having money and paying it to the government isn't enough; who pays the money is just as important.

Wednesday, February 09, 2011

Kik's defence to RIM's infringement lawsuit

Late last year, RIM sued Kik Interactive Inc., the maker of the popular cross-platform instant messaging client Kik Messenger, alleging breach of confidentiality, trademark infringement, and patent infringement. At the same time, RIM also removed Kik Messenger from BlackBerry App World.

It's been a long time coming, as we were expecting Kik's statement of defence to be filed with the court at the end of December. Finally, on Monday Feb 7, 2011 (well after the 30 day deadline for Canadian defendants), Kik filed their defence and counterclaim after the Court granted them an extension of time.

I had a look at Kik's Statement of Defence and Counterclaim today (available here, 7MB PDF).

Kik denies that it was developing a cross-platform instant messaging client in secret or had access to RIM's BBM confidential documents, denies that it's infringing on RIM's trademarks or patents, and found prior art (EP093213, JP10013881, Outlook 2000, and a whole list of documents in Schedules A & B) which Kik alleges makes RIM's asserted patents invalid.

Kik theorizes that as a result of the "overnight success of Kik Messenger", "senior executives at RIM caused RIM to embark on a campaign to destroy or seriously harm Kik, including unilaterally terminating the various agreements between Kik and RIM, suspending and then removing Kik Messenger from BlackBerry App World and commencing this lawsuit, including a meritless patent infringement claim which RIM knew had no realistic chance of success."

Kik portrays the suit as a classic case of Goliath picking on the poor small startup: "RIM employed a 'bully' like strategy, while Kik attempted to appease RIM...".

Interestingly, in the statement of defence Kik asserted that Ted, the CEO of Kik, did not have access to the BlackBerry Messenger (BBM) source code while he worked at RIM's BBM team as a Project Coordinator. Kik also denies that Ted had access to RIM's development plans, market research, and other internal reports related to BBM while working as part of RIM's BBM team, as RIM had alleged in its statement of claim. It'll be very interesting to see exactly what documents Ted had access to or potentially had access to while working as part of RIM's BBM team, and whether any of them led to his decision to develop a cross-platform instant messaging client in late 2009.

As with most lawsuits, the truth will come out during discovery and at trial, and will probably fall somewhere in between the allegations made in RIM's statement of claim and Kik's statement of defence.