Canada’s International Trade Tribunal has halted Ottawa’s awarding of a contract for an earthquake warning system pending an investigation of a Vancouver company’s complaint about use of patented earthquake alert technology.
The company involved is the one whose technology controls traffic in the Lower Mainland’s Massey Tunnel should there be an earthquake higher than a magnitude of 5 on the Richter Scale.
Ottawa put out feelers for companies to supply earthquake early warning systems and support earlier this year. The system would cover all provinces and territories under a four-year contract.
However, in a complaint to the tribunal, Weir-Jones Engineering Ltd./Weir-Jones Engineering Consultants Ltd. claimed the proposal call came after federal representatives met with them and got details of their intellectual property around the ShakeAlert and ShakeAlarm systems.
“They were in our office before the RFP came out,” Andrew Weir-Jones said. “Not a single person reached out to us to get a licence or permission.”
The process was halted October 5. Natural Resources Canada said in an October 28 statement the government would be responding to the tribunal complaint.
“The tribunal issued an order postponing the award of any contract as a result of the request for Proposals (RFP), but this does not require that the RFP be cancelled,” the statement said. “As a result, the RFP has not been withdrawn from Buy and Sell (the federal procurement site)”
Weir-Jones said one problem with Ottawa’s request was that it referred the United States Geological Survey (USGS) ShakeAlert system.
The USGS owns another U.S. trademark registration for the mark ShakeAlert and operates an earthquake early warning system under that name in the U.S. However, USGS has agreed not to take steps to infringe Weir-Jones’ trademark or to licence or permit others to use the trademark in Canada, the complaint to the tribunal said.
Weir-Jones Engineering owns that intellectual property in Canada and has a trademark on it in the U.S, he said.
And, Weir-Jones said, officials in Ottawa were told in December the technology is protected in Canada.
“America’s only allowed to use it for non-profit and public services,” he said. “We own it.”
The Weir-Jones Engineering complaint said the systems requested by Public Works and Government Services Canada would likely fall within the scope of the company’s intellectual property and be in breach of its patents.
Weir-Jones Engineering is seeking a new solicitation from Ottawa for the designated contract and that any contract winner be required to licence the Weir-Jones intellectual property to be used. Or, the company wants Ottawa to obtain from it a licence to use the intellectual property and patented methods for the designated contract.
“Weir-Jones is only looking to preserve and protect its intellectual property,” Weir-Jones Engineering lawyer Rebecca Morse said in a September 30 letter to Natural Resources Canada’s Canadian Hazards Information Service director Dr. David McCormack and Earthquake Early Warning program manager Henry Seywerd.
Information about the United States Geological Service (USGS) and its ShakeAlert system is available on the USGS website. Canada references its intention to use the USGS system in the RFP.
Asked who has the trademark or related intellectual property rights in Canada and the United States, the USGS said in a statement, “The USGS does not have a statement to provide regarding this pending legal matter.”