Canada: U.S.-Mexico-Canada Agreement: Business Insights On Intellectual Property Issues

On September 30, 2018, Canada, the United States and Mexico reached an agreement on what is essentially a revised NAFTA. The new agreement will be renamed the United States-Mexico-Canada Agreement (USMCA). For preliminary insights on the USMCA, please see our previous publication. The text of the agreement is currently undergoing a legal review for accuracy, clarity, and consistency. This note focuses on the intellectual property issues in Chapter 20, the provisions of which are not expected to change substantively.

General Information and Key Changes

While the majority of the intellectual property chapter is consistent with the current Canadian intellectual property regime and the anticipated new trademark regime that will likely come into force in early 2019, Canada will be required under the USMCA to make a number of significant changes to its intellectual property laws. The key changes include:

  • Increasing data protection for biologic drugs from eight years to ten years;
  • Providing for a patent term adjustment for delays at the patent office in issuing patents;
  • Increasing copyright protection by 20 years, from life of the author plus 50 years to life of the author plus 70 years.

What Do the Intellectual Property Provisions of the USMCA Mean to Businesses?

Patents

Patent TermAdjustment

The USMCA will require Canada to provide to patent owners an adjustment to their patent term to compensate for unreasonable delays at the patent office in issuing the patent. The adjustment is meant to compensate for such delays, although the treaty text does not mention a minimum or maximum term for such an adjustment.

An unreasonable delay is defined to include a delay in issuance of the patent of more than five years from the date of filing or three years from request for examination of the application, whichever is later.

Parties are allowed to exclude periods of time that do not occur during processing or examination, and periods of time that are not directly attributable to the granting authority, as well as periods of time that are attributable to the patent applicant.

This adjustment period is not limited by industry or patent classification. As a result, it should be available to all patentees in Canada.

This patent term adjustment will apply to all patent applications filed after the date of entry into force of the Agreement, or two years after the signing, whichever is later for that Party. Thus, it will not apply to all pending patents. Furthermore, Canada will have 4.5 years from the date the agreement enters into force to implement these provisions. As a result, it may be some time before we know more precisely how Canada will give effect to these adjustments.

Data Protection for Biologic Drugs

The USMCA will also require Canada to increase data protection for new pharmaceutical products that are or contain a biologic. The new period will be ten years from the date of first marketing approval of the product in Canada.

A "biologic" is defined as "a product that is produced using biotechnology processes and that is, or alternatively, contains, a virus, therapeutic serum, toxin, antitoxin, vaccine, blood, blood component or derivative, allergenic product, protein or analogous product, for use in human beings for the prevention, treatment, or cure of a disease or condition".

The text appears to provide a transition provision with a limited exemption to the new ten year data protection period. To fall within this exemption:

  • the third party (biosimilar) request must be made by March 23, 2020;
  • Canada must already have other biosimilars approved in the same class, and they must have been approved on the basis of a third party comparison to the confidential information submitted or the marketing approval itself; and
  • those previous approvals must have been made prior to the date the Agreement enters into force in Canada.

Essentially, it seems that if a biosimilar manufacturer files its submission prior to March 23, 2020 and another biosimilar in the same class is or was approved prior to the date the Agreement enters into force in Canada, the current eight year data protection will apply, rather than the new ten year period.

Canada has until five years after the date the Agreement enters into force to implement this obligation. However, based on a cross-cutting provision on the application of the chapter to existing subject matter, it appears that these provisions should apply to biologics that have already been approved and whose data protection period has not expired, subject to the exception noted.

Copyright

Terms of CopyrightProtection

The USMCA will require Canada to increase the length of copyright protection in a work by 20 years, from life of the author plus 50 years to life of the author plus 70 years. The rights for performances and sound recordings will need to be extended by five years, from 70 to 75 years.

The change in protection terms may provide significant economic benefits to copyright owners, particularly if there is significant value in the copyrighted material. On the other hand, it may increase costs of business for users intending to use soon-to-be expired copyrighted materials.

The timing of this change will be particularly interesting with respect to copyrighted materials that will be expiring in the next few years, as Canada will have a 2.5 year period to implement this obligation following the date of entry into force of the USMCA. If copyright expires before the changes come into effect, it appears that the expired materials will remain in the public domain.

Criminal Remedies forRights Management Information

The USMCA requires both civil remedies and criminal procedures and penalties to be applied for (1) circumventing technological protection measures (TPM) and (2) altering or removing Rights Management Information (RMI) without the owner's consent.

Currently, the Copyright Act provides both civil and criminal implications for circumventing TPMs but only civil remedies for altering or removing RMI. The potential criminal consequences can act as a deterrent against alteration and removal of RMIs for commercial gains, which would likely benefit copyright owners including the media and photographers.

Trademarks

Expected Changes: The USMCA requires the Parties to ratify or accede to a number of international trademark treaties, such as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and the Singapore Treaty on the Law of Trademarks. Canada has been working on modernizing its trademark system to ratify these treaties and the new regime is currently anticipated to come into force in early 2019.

Other Potential Changes: The USMCA also addresses protection of "collective marks" (marks for members of an associate or collective) and "well-known marks". Whether future legislative changes will be required will likely depend on Canada's position on how these marks could be protected under the upcoming new regime.

Geographical Indications

Current Regime: Geographical indications (GI) are already protected under the current trademark regime in Canada with respect to wines, spirits, and a number of food and agricultural products. The existing regime appears to be consistent with the requirements set out in the USMCA, including the existence of administrative procedures for protecting GIs and for any interested person to oppose or cancel a geographical indication.

Enforcement of Intellectual Property Rights

Existing Measures: The USMCA contains provisions pertaining to the enforcement of IP rights and border control measures. It appears that the current regime is largely in compliance with the USMCA, including provisions that relate to the power of the judicial authorities or other competent authorities in handling counterfeit trademark goods or pirated copyright goods.

In Transit Goods: Currently, the Canada Border Services Agency (CBSA) has the authority to detain suspected goods on their own accord without the need for an IP rights owner to report suspected import or export of infringing goods. The USMCA requires that for imports and exports, the competent authorities will have the power to initiate border measures against goods that are in transit and admitted into or exiting from a free trade zone or a bonded warehouse. This will provide brand owners and copyright owners with another potential avenue for enforcement in Canada.

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

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

Authors
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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