Canada: When The Dust Settles: An Update On Changes To Canadian IP Legislation

Canada is in the midst of a substantial overhaul of its intellectual property statutes and regulations that will have wide-ranging implications for patent, industrial design, trade-mark and copyright law as well as procedure. This Update summarizes the most important revisions that have already been implemented and those that are expected to be implemented within the next few years.

PATENTS

The most substantial amendments to the Canadian Patent Act in almost 20 years will significantly impact Canadian patent practice.

Patent Law Treaty

The Patent Act was amended in 2014 to conform to the Patent Law Treaty (PLT). The PLT is a multilateral treaty concluded in 2000 to which Canada is a signatory, but which Canada has not yet ratified. The amendments are not yet in force and are not likely to be in effect until sometime in 2016. While the changes required to conform to the PLT are numerous, those of particular note include:

  • Measuring the one-year grace period within which a Canadian patent application has to be filed after a disclosure by the inventor against the claim date (if earlier than the filing date in Canada), thus allowing an inventor to take advantage of its priority claim for this purpose
  • In some circumstances, an ability to restore a priority right if a subsequent application is filed within two months after the priority period's expiration
  • An ability to add material contained in a priority document after filing a Canadian patent application
  • A requirement for the Canadian Intellectual Property Office (CIPO) to give notice of a missed fee payment prior to abandonment
  • A CIPO ability to remove the recordal of a title transfer
  • Inclusion of the "due care" requirement for reinstating an abandoned application under certain circumstances
  • A prohibition on invalidating a patent based on an administrative defect occurring during the application process

CETA

The text of the Canada-European Union Comprehensive Economic and Trade Agreement (CETA) that was released in 2014 included provisions that will require Canada to amend its patent legislation and regulations by adding:

  • A patent term restoration provision for patentees whose drug approvals are delayed during the regulatory process
  • A right of a patentee to an appeal of a decision under the Patented Medicines (Notice of Compliance) Regulations

The patent term restoration provision, when implemented by Canada, will be granted upon request by the patentee — or its successor-in-title — provided that marketing approval has been granted, the product has not already been the subject of a patent term restoration and the marketing approval is the first as a pharmaceutical product. Any term extension will begin at the end of the usual term of the patent.

The CETA has not yet been finalized and will need to be followed by legislation to enact its provisions into Canadian law. This is expected in 2016.

INDUSTRIAL DESIGNS

The Industrial Design Act was amended in 2014 to facilitate Canada's adherence to the Hague AgreementConcerning the International Registration of Industrial Designs (Hague Agreement). The Hague Agreement allows an applicant to file a single international application with the World Intellectual Property Office to protect its designs in multiple regions, including the United States, the European Union, Japan and South Korea, with a minimum of formalities and costs. An international application may include up to 100 different designs belonging to the same classification. The amendments are not yet in force and are not likely to be in effect until sometime in 2016.

The following amendments to the Industrial Design Act are intended to mirror practices under the Hague Agreement.

Priority Claims

Currently, a Canadian industrial design application may claim priority from another design application that has been filed earlier in a foreign country. This priority claim currently does not link the originality of the design to the date of the earlier-filed application; instead, the originality is assessed based on the filing date of the Canadian application.

The amendments would allow a Canadian application to claim priority from an earlier-filed Canadian application or an application filed in another country. Furthermore, under the amendments the priority claim would link the originality of the design to the date of the earlier-filed application.

Novelty Test

The current statute defines the novelty of a design as requiring that it not be "identical with or does not so closely resemble any other design already registered as to be confounded therewith."

The amendments would replace this language with a test that more closely tracks the language in the test for patent novelty and specify that a design is novel if a "same design, or a design not differing substantially from [the design in the application]" has not been disclosed before the priority date of the application by another person and has not been disclosed by the applicant more than 12 months before the priority date of the application.

Term of Protection

The amendments would extend the current 10-year term to a term that would end on the later of the end of 10 years from the date of registration of the design or the end of 15 years after the filing date of the application.

Design Representation

Under the amendments applicants will have more flexibility in the way aspects of designs, such as colour, may be represented.

TRADE-MARKS

Canada has effected the most substantial amendments to its trade-mark legislation in more than 100 years. It is currently anticipated that these amendments will come into force in late 2016.

Adoption of Madrid Protocol, Singapore Treaty and Nice Classification

The federal government's justification for most of the amendments has been its desire for Canada to adopt the Madrid Protocol, Singapore Treaty and Nice Agreement. Some of the more controversial amendments (such as the elimination of the requirement for use prior to registration of a mark) are, however, not required by any of the foregoing treaties. Most of the amendments, which were made by two different statutes, are not yet in force and are not likely to be effective until 2016.

Elimination of Use Requirement

A touchstone of the Canadian trade-mark system for more than a century has been the requirement that an applicant use a trade-mark before it can obtain a registration for the mark in Canada. Under the changes that have been made to the Trade-marks Act, an applicant will no longer be required to specify a basis of registration in its application (such as use in Canada, proposed use in Canada or registration in its country of origin combined with use of the mark in a country). Instead, an applicant will be able to file an application and obtain a registration as long as it is using or proposing to use a mark and is entitled to use the mark in Canada. No date of first use will be required and the applicant will never have to actually use the mark before securing the registration. However, a date of first use in Canada will continue to be relevant for the various other purposes in the Trade-marks Act.

Non-Traditional Marks

The Trade-marks Act will now explicitly recognize many categories of non-traditional marks, such as three-dimensional shapes, sounds, scents, tastes and textures.

Nice Classification System

Canada's adoption of the Nice classification system (NCS), which groups goods and services into approximately 50 different classes, will require an applicant to specify the classes within which the goods and services in its application fall. The Registrar of Trademarks will also have the authority to require existing registrants to classify the goods and services in their registrations according to the NCS.

Registration Term

The term of Canadian trade-mark registrations will be reduced from the current 15 years to 10 years.

Divisional Applications

Under the new system applicants will be able to divide trade-mark applications. This feature will be helpful where CIPO has, during prosecution of an application, cited a third party's trade-mark against the application for some, but not all, of the goods or services in the application. In such circumstances, the applicant will be able to file a divisional application for the goods or services that are the subject of the objection and continue prosecution without delaying the registration of its parent application.

Border Measures

The Combating Counterfeit Products Act (CCPA) aims to provide additional protection to trade-mark and copyright owners against infringing and counterfeit goods. Several provisions of the CCPA have already come into force, such as those creating new criminal and civil causes of action under the Copyright Act and Trade-marks Act and those enabling rights holders to take action to prevent counterfeit goods from entering the Canadian market.

The CCPA gives Canadian customs authorities the right — upon their own initiative or on the request of a rights holder — to detain suspected infringing or counterfeit goods. Under these amendments, an owner of a Canadian copyright or trade-mark registration will be able to file a Request for Assistance (RFA) with the Canada Border Services Agency (CBSA).  

The CBSA will then be entitled to take such steps as obtaining information regarding allegedly infringing goods and providing the rights owner with a sample of such goods and information regarding the importation of such goods. There is no fee for filing an RFA application and the enrolment process is expected to take approximately four to six weeks. To date, several dozen RFA applications have already been filed. An RFA application will remain valid for two years.

In order to take advantage of the RFA procedure, a trade-mark owner requires a Canadian registration for its mark. It is therefore very important for trade-mark owners to review their portfolios to ensure that all marks they expect to be targeted by counterfeiters are registered in Canada.

COPYRIGHT

Sound Recordings

The 2015 federal budget bill, the Economic Action Plan 2015 Act No. 1 (Budget) has introduced amendments to Canada's Copyright Act that will extend copyright protection for sound recordings for up to 70 years from first publication.

The proposed extension of the copyright term for sound recordings would be subject to an upper limit of 100 years after the end of the calendar year in which the first fixation of the performance in the sound recording occurs, so long as the sound recording is published before the expiry of the copyright (the current term is 50 years).

The proposed amendments make it clear that they would not revive copyright in a sound recording (or a right to remuneration in respect of a performer's rights) if the copyright had already expired in Canada by the time the legislation comes into force.

Border Measures

As noted above, Canada has recently introduced border measures that will be available to the owner of a copyright registration who has filed an RFA with the CBSA.

AGENT PRIVILEGE

The Budget would create statutory privilege under the Patent Act and the Trade-marks Act that would protect certain confidential communications between clients and their intellectual property agents. Currently, Canadian law does not recognize a "client-agent privilege" to protect such communications from being disclosed, e.g., during the course of litigation. Such a statutory privilege would bring Canada in line with several other countries.

The proposed revisions to the Patent Act provide that a communication is privileged in the same manner as a solicitor-client communication if it is between an individual patent agent and that individual's client, intended to be confidential, and made for the purpose of seeking or giving advice about any matter relating to protecting an invention.

Similarly, the proposed revisions to the Trade-marks Act provide that a communication is privileged in the same manner as a solicitor-client communication if it is between an individual on the register of trade-mark agents and that individual's client, intended to be confidential, and made for the purpose of seeking or giving advice about any matter relating to protection of a trade-mark, geographical indication or certain section 9 marks.

The proposed revisions would also recognize privilege for communications involving foreign patent agents and their clients, provided that their own country recognizes such privilege. Although the legislation creating this statutory privilege has not yet been enacted by Parliament, if and when it comes into force it will apply retroactively to communications that took place prior to the legislation coming into effect.

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.

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