Canada: Pharmaceutical Patent Rights Get A Boost In Canada Under CETA-Driven Legislation

Last Updated: November 18 2016
Article by Jennifer Ledwell

After years of negotiations, the Comprehensive Economic and Trade Agreement (CETA) between Canada and Europe was finally approved by all 28 European Union member states on October 28, 2016, and was signed promptly thereafter by Canadian Prime Minister Justin Trudeau on October 30, 2016. This historic agreement promises, inter alia, to bring important changes to intellectual property protection for pharmaceutical patentees in Canada – such as patent term extension and an end to dual litigation – which will bring Canada more in line with European practice.

On October 31, 2016 – the day after Prime Minister Trudeau signed CETA – the Canadian Government introduced Bill C-30 in Parliament, An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures (text available online). Introducing Bill C-30 is the first step towards implementing CETA in Canadian law and, as such, it proposes several changes to the Canadian Patent Act and Food and Drug Act as they pertain to protection of innovative pharmaceuticals.

Patent term extension

Canada is currently the only G7 country that does not provide some form of patent term restoration or extension to restore part of the life of a patent consumed by clinical trials and delays due to bureaucratic approval processes. However, under CETA, Canada has agreed to provide up to two years of additional (sui generis) protection for eligible pharmaceutical patents. This is a welcome change for pharmaceutical innovators in Canada, although the cap of the period of additional protection in the EU remains higher, at five years.

Bill C-30 proposes to amend the Canadian Patent Act to introduce a Supplementary Protection Certificate (SPC) system similar to the European SPC system. Eligible drugs are defined broadly to include human and veterinary drugs. However, SPCs are not available for all patents. Eligible patents will have to pertain to a "medicinal ingredient" or a "combination of medicinal ingredients", and only one patent can be the subject of an SPC. Where there are multiple patents, Bill C-30 provides rules for determining which patent is eligible.

Rights of appeal and a possibility to end dual litigation

Currently, Canada has a system that allows for two legal proceedings (dual litigation) between the same parties relating the same drug and patent: (i) a proceeding under the Patented Medicines (Notice of Compliance) Regulations (PM(NOC) Regulations) which link the patent regime to regulatory approval by Health Canada; and (ii) a patent infringement or impeachment action.

Both innovators and generics are unhappy with the current system, although for different reasons.

Under the current PM(NOC) Regulations, pharmaceutical innovators do not have an effective right of appeal. When a PM(NOC) decision in favour of the generic is rendered, a generic is typically issued a Notice of Compliance (ie marketing approval) by Health Canada very shortly thereafter and an appeal becomes moot. Conversely, a generic can appeal an PM(NOC) decision that finds in favour of the innovator, even if the patent has expired. This situation has long been a sore spot for innovators.

On the other hand, under the current regulations, a PM(NOC) decision is only a summary proceeding that does not provide a final determination of validity, and thus a decision in favour of the generic does not prevent an innovator from suing for patent infringement under the Patent Act. The result is the possibility of "dual litigation". Generics have complained that this situation is unfair, as it creates unpredictability for them.

Canada has made a general commitment under CETA to ensure that both innovators and generics are afforded "equivalent and effective rights of appeal", which gives scope for Canada to end the practice of dual litigation.

Under Bill C-30, it appears that the PM(NOC) system would survive but in an amended form that would effectively replace the current summary PM(NOC) proceedings with full patent infringement and validity actions that would result in a final determination on infringement and validity issues. Changing PM(NOC) proceedings to full actions should obviate the objections that both innovators and generics have with the current system.

Data protection

Canada rejected the EU's request to provide 10 years of data protection for innovative drugs, but agreed to lock in the current Canadian practice of providing eight years of market exclusivity. Bill C-30 would not change that outcome, but it does propose to amend the Food and Drugs Act (which governs data protection, amongst other things) to provide regulation-making authority to Health Canada to implement Canadian obligations under international agreements with respect to any food, drug, cosmetic or device. This may have implications for how other trade agreements are implemented in Canada.

Next steps

Bill C-30 has only received a first reading in the House of Commons, and it is expected to go through additional readings in the House and the Senate before passing into law and coming into force. There may be some edits to the Bill along the way, but it is unlikely that the substance of it will change significantly. The Bill will probably not be passed by Parliament until 2017 or later, and it is expected amendments to the PM(NOC) Regulations will follow. Thus, it will probably be several years before the full effect of CETA is seen on pharmaceutical patent protection, but these are promising developments that pharmaceutical patentees will want to take into account now, when developing their business strategies for patenting and marketing new drugs in Canada. 

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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.