Canada: Looking Back On 2015 In Canadian IP Law And Practice

With 2015 behind us and a new year ahead, we have selected our top 10 highlights from Canadian IP law and practice in the past year.

1. The Supreme Court of Canada affirms the principle of technological neutrality in Canadian Copyright law

The much anticipated decision in CBC v SODRAC, 2015 SCC 57, was issued by the Supreme Court of Canada on November 26, 2015. We first discussed this decision in our November 30, 2015 IP Update.

In affirming that even incidental copies of a work made to facilitate broadcasting will engage the reproduction right and require a license, the Court emphasized the role of the core principle of technological neutrality in statutory interpretation under the Copyright Act.

The principle of technological neutrality recognizes that, absent parliamentary intent to the contrary, the Act should not be interpreted or applied to favour or discriminate against any particular form of technology, and is a means for protecting the proper balance between users and right holders in a digital environment.

With this most recent copyright decision, the Supreme Court continues to refine the principle of technological neutrality as an important one in Canadian copyright doctrine.

2. Canada concludes negotiations on the TPP

On November 5, 2015, Canada and the other eleven members of the Trans-Pacific Partnership released the text of a deal to set common standards on a wide variety of issues relating to trade, including Intellectual Property.

While many of the IP provisions of the text are, for Canada, a reiteration of existing treaty obligations under IP treaties, such as TRIPS, and other trade deals, such as CETA, implementation of TPP will require some changes in Canadian domestic law including:

  • Patent Term Adjustment for Patent Office delays: Allowing the term of a patent to be adjusted to compensate for unreasonable delays during processing or examination;
  • Patent Term Restoration for Pharmaceutical Product Marketing Approval delays: Compensating for the "unreasonable curtailment of the effective patent term as a result of the marketing approval process" by providing a patent term adjustment; and
  • Copyright Term Extension: Extending protection from life of the author plus 50 years to life plus 70 years.

More detail on the draft TPP text and its possible impacts can be found in our November 6, 2015 IP Update.

Canada's 42nd General Election was held on October 19, 2015 and resulted in a change in government. The incoming government of Prime Minister Trudeau has promised a "full and open public debate" on the agreement and so the TPP remains a topic to watch for in 2016.

3. Patent & trademark agent privilege coming to Canada

Amendments to the Patent Act and Trademarks Act providing a statutory privilege for confidential communications with patent and trademark agents received Royal Assent on June 23, 2015. These changes were part of a package of amendments discussed in our May 8, 2015 IP Update.

The statutory privilege provisions will come into force on June 23, 2016. The privilege however will extend retroactively to communications made prior to the date the legislation comes into force, provided the communication is still confidential as of that date. Privilege will not, however, apply in respect of an action or proceeding commenced before the date the provisions come into force. 

4. Canadian trademarks office began allowing voluntary Nice classification

Although Canada has not yet formally implemented the Nice Agreement, as of September 28, 2015, the Canadian Trademarks Office began allowing voluntarily classification of goods and services according to Nice.

Despite this voluntary initiative, however, filing fees remain the same regardless of the number of classes in an application. As such, this may represent a window of opportunity in which multi-class applications may be filed without payment of per-class fees considered likely once Nice classification becomes mandatory at the time of filing.

5. Patent office releases new guidance on diagnostic method and medical use claims

The Patent Office issued revised examination guidance for medical use claims and diagnostic method claims in March and June, respectively.

Regarding medical uses, in response to a decision of the Federal Court, the revised Patent Office guidance makes clear that fixed dosages and fixed dosage regimens do not point to professional skill and judgement. In addition, the Office no longer considers patient sub-populations or administration sites to point to professional skill or judgement. Discussed in more detail in our March 20, 2015 IP Update, the guidance provides welcome clarification on the examination of medical use claims.

Regarding diagnostic method claims, the Office released new guidance for examination adopting a problem and solution approach to analyzing the patentability of the subject-matter of diagnostic method claims. More detail on the Office's approach is given in our July 2, 2015 IP Update.

6. Amendments to Canada's Trademarks Act unlikely to be implemented before 2018

On June 19, 2015, significant amendments to the Canadian Trademarks Act, intended to put Canada in a position to adhere to major international trademark treaties, including the Madrid Protocol, the Nice Agreement and the Singapore Treaty, received Royal Assent. As first discussed in our March 31, 2014 IP Update, the changes to the Trademarks Act promise major change to Canadian trademark practice.

Though early indications were that the amendments would come into force quickly, we learned in 2015 that implementation has been delayed. As reported in our October 22, 2015 IP Update, we have been most recently advised that the changes will not be fully implemented until at least the beginning of 2018.

We will continue to monitor for and report on signs from government as to when these significant changes may be implemented.

7. Prosecution history of Canadian patents and applications made available online

In June, the Canadian Patent Office put online an update to the Canadian Patents Database (CPD) that made the prosecution history of all open to public inspection patent applications and granted patents available online.

The development means that Canada now has an online dossier access system similar to those provided by foreign Patent Offices. In addition to easing public access to the patent prosecution histories, the system may also ease the preparation of foreign Patent Prosecution Highway (PPH) requests based on allowed Canadian claims.

8. "Non-infringing alternative" acknowledged by the Federal Court of Appeal in the assessment of damages for patent infringement

In a judgement on June 23, 2015, Canada's Federal Court of Appeal held that the availability of a non-infringing alterative could be a mitigating factor in awarding damages for patent infringement.

Drawing on US and UK jurisprudence, the Court set out a new legal test for determining the relevance of a non-infringing alternative based on the facts of a given case:

a) Is the alleged non-infringing alternative a true substitute and thus a real alternative?

b) Is the alleged non-infringing alternative a true alternative in the sense of being economically viable?

c) At the time of infringement, did the infringer have a sufficient supply of the non-infringing alternative to replace the non-infringing sales? Or rather, could the infringer have sold the non-infringing alternative? To satisfy this step, the alleged alternative must have been actually available to replace the infringing sales as they were made.

d) Would the infringer actually have sold the non-infringing alternative?

As discussed in more detail in our August 6, 2015 IP Update, the decision is arguably a departure from past Canadian jurisprudence that had rejected the relevance of a non-infringing alternative in the assessment of damages for patent infringement.

9. Amendments to the Plant Breeders' Rights Act and Canada's adoption of the International Union for the Protection of New Varieties of Plants (UPOV 1991)

Amendments to the Plant Breeders' Rights Act and other statutes made under the Agricultural Growth Act came into force on March 12, 2015. The amendments to the Plant Breeders' Rights Act were discussed in our May 26, 2014 IP Update, with the most significant of these discussed in greater detail in our February 26, 2015 IP Update.

These amendments to the Plant Breeders' Rights Act bring Canada in line with trading partners that have adopted the 1991 revision of the Convention of the International Union for the Protection of New Varieties of Plants (UPOV 1991). Following the coming-into-force of the changes, the Government of Canada deposited its instrument of ratification with UPOV, bringing the treaty into force in Canada on July 19, 2015.

10. Competition Bureau releases draft guidelines addressing patent assertion entities and industry standard patents

On June 9, 2015 the Competition Bureau released for comment an update to its draft Intellectual Property Enforcement Guidelines. The changes focus on providing guidance on the application of the Bureau's analytical framework in respect of specific activities, including the making of representations in the context of asserting patents, and conduct involving standard essential patents (SEPs). We discussed these changes in detail in our June 18, 2015 IP Update.

These changes may help parties to understand the Competition Bureau's approach to competition law enforcement in relation to patent assertion and SEPs. A comment period for the updates closed August 10, 2015. Responses received in the consultation are available online. We will monitor further Competition Bureau activity in the upcoming year in relation to the draft guidelines and intellectual property enforcement more generally.

Concluding remarks

All told, 2015 was another dynamic year in Canadian IP law and practice. We look forward to the same in 2016 and will continue to provide timely information and updates on Canadian IP law via IP Update and on Canadian life science IP and regulatory law developments via Rx IP Update. Keep your New Year's resolution to be up-to-date on Canadian IP law by subscribing to both.

For further information regarding Canada's IP laws, please contact us.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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