Syllabus 2020

Course Syllabus (Spring Term 2020):

Intellectual Property Law (LAW 422.001 & LAW 570C-001)

Course Description:

This course provides students with an introduction to the legal regimes governing the protection of intellectual property. The course will cover the following specific areas of intellectual property law: copyright, trademarks, and patents. In addition, students will be introduced to the common law actions of passing off and breach of confidence, international intellectual property law, and industrial design.


Jon Festinger, Q.C.

Office: (604) 568-9192

Cell: (604) 837-6426


3 credits

Class location and times:

Allard Hall

Fridays from 1:30-4:20pm in Rm 105 (Spring Term)

Class make-up time is scheduled for Tuesdays from 12:30-2pm

Office hours:

By appointment.  Email questions are welcome.


Your exam will take place during the April examination period.

You have the option of handwriting your exams or using the computerized exam software, ExamSoft. Detailed information on the use of ExamSoft can be found on the Allard School of Law website at:

Our exam will be an open book exam. There are no restrictions on the notes or materials that you may bring into the exam.



There is one required casebook for this course, namely: Greg Hagen, Cameron Hutchison, David Lametti, Graham Reynolds, Teresa Scassa, Margaret Ann Wilkinson, Canadian Intellectual Property Law: Cases and Materials, 2nd ed. (Toronto: Emond Montgomery, 2018)

 This casebook is available for purchase at the UBC Bookstore. The same edition was used in the Allard IP course for the last two years. Used copies may be available. I may supplement this casebook with additional materials throughout the year.

An additional text that you might find helpful is: David Vaver, Intellectual Property Law, 2nd ed. (Toronto: Irwin Law Inc, 2011). It is not mandatory to purchase this additional text, which is available in the Law Library reference room.

Open Course Website: TBA

Examination Accommodations and Deferrals:

Students requesting an examination accommodation or deferral should obtain from and submit forms to the Assistant Dean, Students, who will coordinate with the Chair of the Examinations Committee. Individual faculty may not grant examination accommodations.

Accommodating Students with Disabilities:

Students requiring accommodations on exams or assignments pursuant to a disability, or requiring arrangements for classroom assistance pursuant to a disability, should contact the Centre for Accessibility, located in Brock Hall. The Centre for Accessibility will assess all accommodation requests and make all accommodation decisions. Instructors are not permitted to assess or adjudicate individual students’ requests for accommodation.

Email communication/Connect:

During the term I may send emails out to the entire class. These emails will be sent through the Faculty Service Centre to the email addresses that students have registered with the Student Service Centre website (SSC). Please read these emails. Students will be deemed to have received course information sent by email.

A classroom space has also been set up on Canvas. I will be uploading the lists of required reading material and additional resources to this classroom space. I may also upload other information and resources, including the class syllabus.

Academic Misconduct/Plagiarism:

All Allard School of Law students are subject to the University’s rules on Academic Misconduct (,54,111,959), and are expected to act with academic integrity at all times. Students should be especially aware of the University’s rules in relation to plagiarism. If you plagiarize, you may be subject to penalties set out in the UBC calendar for academic misconduct: (,54,111,960)

If you would like to learn more about academic misconduct, visit the UBC Library’s website on academic integrity ( Examples of academic misconduct can also be found in the UBC Annual Report on Student Discipline (

UBC subscribes to a service called TurnItIn which is a website that checks for the originality of material. This is a password-protected site that is increasingly used in North American universities. TurnItIn may be used to verify the originality of your work. The information provided here and further details about TurnItIn can be found online at:

Schedule of classes and readings:

L# Date Topic Materials/Comments
1. Friday, Jan 10, 2020 Introduction None
2. Friday, Jan 17, 2020 Copyright: Overview; what is copyrightable? CB: 1-11, 18-48
3. Friday, Jan 24, 2020 Copyright: Rights of copyright owners CB: 59-92, 98-132, 147, 157-159 (not including D. Collective Administration of Rights)
4. Friday, Jan 31, 2020 Copyright: Users’ rights CB: 162-165, 165-167, 170-216 (until H. Exception Related…)
5. Friday, Feb 7, 2020 Copyright: Enforcement of rights, remedies &

Copyright: Review

CB: 229 (until Nintendo of America v. King), 246-251, 255, 262-272
6. Friday, Feb 14, 2020 Trademarks: Passing off. CB: 317-327 (including the introduction to 1. Goodwill or Reputation and a. Secondary Meaning), 333-344 (including the introduction to b. The Geographic Ambit of Goodwill), 354-355 (including the introduction to c. Shared Goodwill), 362-384, 409-426 (including the introduction to 3. Damages), 437-439
Friday, Feb 21, 2020 No class Reading week
Friday, Feb 28, 2020 Class cancelled  – rescheduled as Class 12 Jon away (@ Leicester Law)
7 Friday, March 6, 2020 Trademarks: Introduction, what is a trademark; the concept of use; registration process; ownership, transfer, licensing; deregistration. CB: 439-475, 480, 488-507
8 Friday, March 13, 2020 Trademarks: Confusion; infringement and remedies &

Trademarks: Review.

CB: 507, 510-577
9 Friday, March 20, 2020 Patents: overview, patentable subject matter, application process, claims construction, file wrapper estoppel, various prosecution topics CB: 633-638  (up to B. An Example Patent), 643-654 (until Canada (Attorney General v., Inc), 667 (until Apotex, Inc.), 676 (until Lawson),  683-703, 770-782, 804-822, 825-826.
10 Friday March 27, 2020 Patents: methods of medical treatment, requirements of patentability (utility);  requirements of patentability  (novelty, non-obviousness);  miscellaneous patent topics. CB: 727-734 (until 5. Forms of Energy), 734-751, 755-770, 782-798 (until VII. Claims Construction),  804, 823-825


Please also read paras. 26 – 63 of AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36.

11 Friday, April 3, 2020 Patents: remedies for patent infringement; miscellaneous other patent litigation topics (Guest Lecturer: Roch Ripley of Gowlings – Jon joining remotely from QMUL Law) CB:  828-31, 836-end.


Please also read White, Burgess v. Abbott 2015 SCC 23

12 TBA 1.     Patents review

2.     Exam review

Sample Exam (April 2018 exam)