As with previous years, Canada has been placed on the U.S. 2011
Priority Watch List of countries for which there are concerns
regarding the protection and enforcement of intellectual property
rights1. Canada has been perceived by the U.S.
government as being weak on IP enforcement, particularly regarding
anti-piracy and anti-counterfeiting measures. However, a number of
developments over the past year demonstrate that Canada is
challenging these perceptions and that its continued presence on
the Priority Watch List should become a thing of the
Anti-Counterfeiting and Anti-Piracy
In an anti-counterfeiting decision released by the Federal Court
of Canada on June 27, 2011, the plaintiffs (Louis Vuitton and
Burberry) were awarded damages totalling almost CAD$2.5 Million.
This is believed to be the largest damages award in a Canadian
anti-counterfeiting case.2 Notably, in its decision, the
Court acknowledged the "...egregious and outrageous nature of
activities involving counterfeit goods" and supported the view
that intellectual property infringement "...constitutes a very
serious offence, more serious than a theft of some other material
or property because it strikes at the heart of what differentiates
a progressive, creative society from one that is not." It will
be interesting to observe whether this decision signals a shift by
Canadian courts towards higher damage awards in anti-counterfeiting
actions going forward.
More recently, Canada signed the Anti-Counterfeiting Trade
Agreement ("ACTA") on September 30th,
2011.3 The objectives of ACTA are to standardize the
rules of IP enforcement in order to combat counterfeiting and
Patentability of Business Method Patents
While the Canadian Intellectual Property Office
("CIPO") tried to exclude business method patents from
patentability in 2009, the Federal Court found that any such
exclusion was contrary to the Canadian Patent
Act.4 According to the Court, there is no exclusion
for "business methods" which are otherwise patentable.
The Federal Court, in very strong language, went on to say that
"... the questionable interpretation of legal authorities in
support of the Commissioner's approach to assessing subject
matters underline the policy driven nature of her decision."
While CIPO appealed the Federal Court's decision, it was
thought that the appointment of a new Commissioner of Patents,
Sylvain Laporte5, was an indication of a shift in CIPO
policy, such as its approach to restricting patentable subject
matter. Notably, however, the Commissioner released a revised
examination guidance document to examiners on August 1, 2011 that
appears to restate CIPO's initial position.6 While
the Federal Court of Appeal has not yet released its ruling, the
appeal decision may clarify whether business method patents are
patentable in Canada.
Fourth Time Lucky?
On September 29, 2011, the Copyright Modernization Act
(Bill C-11) was introduced by the Canadian government.7
Bill C-11 is Canada's fourth attempt since 2005 to amend the
Copyright Act. It has been suggested that Bill C-11 could
pass before Christmas.
Among the amendments, Bill C-11 will (a) provide protection for
technological protection measures that companies use to secure
content; (b) establish new exclusive rights including the right to
make sound recordings available on the internet; (c) create new
"personal use" exceptions, including the movement of
content across formats; and (d) clarify the role of Internet
Service Providers ("ISPs") with respect to copyright
infringement by limiting their liability and requiring them to
forward notices of alleged copyright infringement to subscribers
and to retain the records necessary to determine the
The election of a stable majority federal government in May 2011
should help address some of the concerns regarding Canada's IP
enforcement regime. In the past, minority governments have been
unable to pass IP reforms as elections were called before any
proposed IP amendments could be finalized. The current majority
government has indicated that addressing IP issues will be one of
its legislative priorities.8 To that end, amendment of
the Copyright Act by way of Bill C-11 is finally expected
to come to fruition.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).