Canada: IP Budget 2018 – Changes To Canada's IP Laws

On October 29th, 2018, Canada's federal government tabled an omnibus budget implementation bill, entitled the Budget Implementation Act, 2018, No.2 (the "Budget Implementation Act"). At over 800 pages long, it amends dozens of existing federal laws, creates various new government departments, and includes new statutes in their entirety. Specifically, Division 7 of the Budget Implementation Act is entitled Intellectual Property Strategy, and contains many provisions relating to Canada's patent, copyright and trademark regime.

Outlined below is a brief review of the proposed changes to Canada's intellectual property regime contained within the Budget Implementation Act.

Changes to the Patent Regime

As outlined by the summary provided by the Minister of Finance, subdivision A of Division 7 of Part 4 of the Budget Implementation Act amends the Patent Act in order to:

(a) provide a regulation-making authority for the establishment of requirements for written demands relating to patents;

All written demands regarding a patented invention received by a person in Canada will have to comply with requirements to be prescribed by the Governor in Council. Failure to comply with the prescribed requirements may result in the Federal Court granting various types of relief, including punitive damages.

(b) specify that an act committed for the purpose of experimentation relating to the subject matter of a patent is not an infringement of the patent and that licencing commitments that bind the owner of a standard-essential patent or the holder of a certificate of supplementary protection that sets out such a patent bind any subsequent owners or holders;

With respect to experimentation, the bill amends the provision defining an act committed for the purpose of experimentation relating to the subject matter of a patent, held not to be an infringement of the patent. More specifically, the amendment removes the requirement that the experimentation must be done for non-commercial use.

A standard-essential patent is typically directed to technology which has to comply with a technical or industry standard (like Bluetooth for example). The proposal gives the Governor in Council power to regulate these terms.

(c) expand the rights of a person in respect of a claim in a patent who meets the prior user exemptions of s. 56 of the Patent Act;

The section of the Patent Act governing the prior user exemption is proposed to be expanded. The notable changes are:

  1. Prior use will encompass both an "act that would otherwise constitute an infringement" and "serious and effective preparations" to commit the act, but the prior use must have been in "good faith" and the prior user must not have been able "to commit the act only because they obtained knowledge of the subject-matter ... from the applicant";
  2. If the prior use is carried out by a business, the prior user right can be transferred;
  3. Detailed provisions address use or sale of an article and use of a service.

(d) ensure that patent prosecution file histories may be admissible into evidence for certain purposes;

The proposed amendments will allow any written communication or part of such a communication to be admitted into evidence to rebut any representation made by the patentee in an action.

(e) clarify when a late fee must be paid in respect of divisional applications as well as when the confidentiality period begins in the case where a request for priority is deemed never to have been made.

Of particular interest is whether the cease and desist letter restrictions are challengeable under the Charter of Rights as a restriction on freedom of expression.

The implementation of file wrapper estoppel could be a big game changer as well – representations made in patent prosecution will now potentially affect validity of a patent where prior to this amendment, they would not.

Changes to the Copyright Regime

The Copyright Act is also to be amended in order to specify that certain information is not permitted to be included within a notice under the notice-and-notice regime and to provide for a regulation-making power to prohibit further types of information from being included within such a notice.

"Prohibited content" that may not be included in claimed infringement notices would include:

  1. offers to settle;
  2. demands for payment or personal information; or
  3. hyperlinks to externally hosted offers to settle or demands for payment or personal information (and additional prohibited content may later be set by regulation).

These proposed amendments to the notice-and-notice regime further provide that ISPs' obligations only arise in respect of claimed infringement notices that comply with the new content restrictions, including the obligations to forward notices of claimed infringement and retain records on the implicated subscribers. Additionally, the existing protections for providers of information location tools have been revised to ensure that they only apply with respect to compliant notices of claimed infringement.

Again, interesting to see if this restriction can survive a Charter challenge to freedom of expression.

The Budget Implementation Act also makes amendments in an attempt to modernize the legislative framework relating to the Copyright Board so as to improve the timeliness and clarity of its proceedings and decision-making processes.

Changes to the Trade-marks Regime

The Trade-marks Act is to be amended in order to, among other things:

  1. add bad faith as a ground of opposition to the registration of a trade-mark and for the invalidation of a trade-mark registration;
  2. prevent the owner of a registered trade-mark from obtaining relief for acts done contrary to section 19, 20 or 22 of that Act during the first three years after the trade-mark is registered unless the trade-mark was in use in Canada during that period or special circumstances exist that excuse the absence of use;
  3. clarify that the prohibitions in subparagraph 9(1)‍(n)‍(iii) and section 11 of that Act do not apply with respect to a badge, crest, emblem or mark that was the subject of a public notice of adoption and use as an official mark if the entity that made the request for the public notice is not a public authority or no longer exists; and
  4. modernize the conduct of various proceedings before the Registrar of Trade-marks, including by providing the Registrar with additional powers in such proceedings.

Part (a) above is an attempt to avoid the trademark troll problem caused by the elimination of the use requirement on filing a trademark. This is going to be of about exactly zero use in preventing the troll problem, given the timing of Section 45 proceedings.

The Creation of the College of Patent Agents and Trade-mark Agents

As outlined by the summary provided by the Minister of Finance, subdivision D of Division 7 of Part 4 enacts the College of Patent Agents and Trade-mark Agents Act, which establishes the College of Patent Agents and Trade-mark Agents, which is to be responsible for the regulation of patent agents and trade-mark agents in the public interest. That Act, among other things:

  1. requires that individuals obtain a licence in order to act as patent agents or trade-mark agents and that licensees comply with a code of professional conduct;
  2. authorizes the College's Investigations Committee to receive complaints and conduct investigations into whether a licensee has committed professional misconduct or was incompetent;
  3. authorizes the College's Discipline Committee to impose disciplinary measures if it decides that a licensee has committed professional misconduct or was incompetent; and
  4. creates new offences of claiming to be a patent agent or trade-mark agent and unauthorized representation before the Patent Office or the Office of the Registrar of Trade-marks.

That Subdivision also makes consequential amendments to certain Acts.

Changes to the Access to Information Act related to IP

Subdivision F of Division 7 of Part 4 amends the Access to Information Act and the Privacy Act to provide that the head of a government institution may refuse to disclose, under either of those Acts, information that is subject to the privilege set out in section 16.1 of the Patent Act or section 51.13 of the Trade-marks Act.

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