Canada: Draft Updated IP Guidelines And MOU With CIPO Are Latest Signs Of Competition Bureau’s Renewed Interest In IP Rights

Last Updated: April 16 2014
Article by Jonathan Bitran and Dominic Thérien

Most Read Contributor in Canada, September 2018

On April 2, 2014, the Competition Bureau (Bureau) released for comment draft updated Intellectual Property Enforcement Guidelines (IPEGs), which are intended to replace the prior iteration released in 2000. On the same day, the Bureau entered into a memorandum of understanding (MOU) with the Canadian Intellectual Property Office (CIPO). These announcements follow indications from the Bureau that it is now focusing on the interface between intellectual property (IP) law and competition law, especially in the pharmaceutical sector.

Draft Updated IPEGs

The draft updated IPEGs mainly reflect the amendments to the Competition Act (Act) that have been made since the previous version was released in 2000. The conceptual framework therefore remains the same as that of the old IPEGs. The Bureau views IP law and competition law as complementary for the promotion of efficient markets. The circumstances in which the Bureau will intervene to address anti-competitive conduct associated with the exercise of IP rights fall into two categories:

  • If the conduct at issue involves "something more" than the mere exercise of IP rights, the Bureau will apply the general provisions of the Act (e.g., criminal conspiracy under section 45, abuse of dominance under section 79, and agreements between competitors that prevent or lessen competition under section 90.1). The Bureau considers that any arrangement or agreement between independent entities involving the transfer or licensing of IP rights, or allowing for the use or enforcement of IP rights, constitutes "something more" than the mere exercise of IP rights. As an example of its advocacy, the Bureau cites its intervention before the Federal Court of Appeal (FCA) in Apotex Inc. v. Eli Lilly and Co.,1 where the FCA agreed with the Bureau's submissions that the assignment of a patent under the Patent Act could still constitute an illegal criminal conspiracy under the Act.
  • Where competition concerns arise from the "mere exercise" of an IP right, typically the refusal to license IP, the Bureau will analyse the conduct under section 32 of the Act, which allows the Attorney General to seek an order to prevent an undue restraint of trade or lessening of competition, including ordering the licensing of the IP right. The IPEGs indicate that the Bureau will use these special remedies only in very rare circumstances.

The draft updated IPEGs are open for public consultation until June 2, 2014.


The MOU mandates closer cooperation, consultation and information sharing between the Bureau and CIPO for matters that straddle IP and competition law. For example, the MOU brings the two agencies closer together by creating an employee exchange program and setting up meetings between senior management of the agencies. Moreover, the MOU favours referrals of competition concerns arising from IP rights from CIPO to the Bureau.

Bureau's Focus on Pharmaceutical IP

These developments follow an increased focus by the Bureau on the pharmaceutical industry, both in terms of enforcement and advocacy initiatives, including a workshop held in November 2013 on this sector. More specifically, the Bureau has expressed concerns with respect to "pay-for-delay" settlements and patent life cycle management, such as "product hopping."

Pay-for-delay (or "reverse payment") settlements occur when, as part of a patent litigation, a brand manufacturer enters into a settlement with a generic company that involves a payment to the generic manufacturer and the generic delaying its entry into the market. Such settlements have been under close scrutiny by antitrust authorities in the United States (including the Supreme Court's recent Actavis decision) and Europe. The Bureau has reviewed some pay-for-delay settlements in the context of advisory opinions to pharmaceutical companies,2 but has not yet undertaken enforcement action in this area.

Product hopping (or "product switching") refers to the development of a new formulation of a drug by a brand manufacturer and subsequent attempts to shift consumption from the original drug to the new formulation, thus preventing effective generic competition for the original patented brand drug. The Bureau has an ongoing investigation under the abuse of dominance provisions concerning alleged "product hopping" by a brand manufacturer of prescription ophthalmic solutions.


The Bureau will consider comments received on the draft updated guidelines in order to conduct a more substantive review of its IPEGs later this year. Given the Bureau's willingness to address the complex issues raised by the intersection of IP law and competition law, interested parties should consider participating in the consultation process. We will continue to report on the IPEGs review process, as well as on the Bureau's enforcement action and advocacy initiatives with respect to IP rights.


1 2005 FCA 361
2 OECD, Global Forum on Competition, "Competition Issues in the Distribution of Pharmaceuticals", Contribution from Canada (Competition Bureau), January 16, 2014, available here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions