Canadian i4i, Inc wins abroad, but is there any protection at home?

Toronto based firm i4i, Inc. has been getting a fair bit of press lately as the tiny firm that took on Microsoft Corp. and succeeded in winning an injunction against sales of certain versions of Microsoft Word software in the United States as well as a US$290-million award for damages, willful infringement and prejudgment interest.

See, for example, Financial Post’s article entitled Canadian firm’s lawsuit halts some Microsoft Word sales in U.S. or the Globe and Mail’s Canadian firm gets patent win over Microsoft

i4i, Inc.’s press release regarding its win can be found on its website here (pdf) and shows that the verdict was issued on May 20, 2009 for infringement of U.S. patent number 5,787,449 issued by the USPTO in 1998.

i4i patent

Surprisingly, however, there was no mention of any corresponding Canadian patent in i4i’s press release. There was also no indication as to whether there would be any legal proceedings here in Canada against Microsoft Corp.

A quick check at the Canadian Intellectual Property Office shows that this is likely because i4i, Inc’s corresponding Canadian patent (CA 2,150,765), which issued in 2000, lapsed in 2004 for failure to pay the 2003 and 2004 annual maintenance fees.

Even at today’s rates, these fees would have been insignificant in light of a multi-million dollar award – i.e. only $200 for both 2003 and 2004. All together, from 2003 to 2009, the annual maintenance fees for those seven years for CA 2,150,765 would have been a mere $825 (at the “small entity” rate).

A final check at the Canadian Intellectual Property Office, for patents issued to either i4i, Inc., Infrastructure for Information Inc. or where Michel Vulpe is the inventor does not reveal anything more other than lapsed CA 2,150,765. So it does not appear that this original Canadian patent might have been dropped in favour of some other divisional or subsequent application.

So I don’t think we will see similar litigation by i4i, Inc. against Microsoft Corp. at home here in Canada and sales of MS Word should be able to continue here without any patent infringement concern.

That’s too bad, it would have been interesting to see how the Canadian courts would have determined the issues of validity and infringement on the Canadian side of things. The Canadian patent actually issued with what appears to be broader claims as compared to the U.S. patent (at least claim 1 in the Canadian case looked broader at first glance).

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