Canada: Contrasts And Distinctions: Canadian Patent Law Developments In 2018

Last Updated: January 29 2019
Article by David Schwartz and Walter Chan

2018 served up a smorgasbord of disparate patent law developments in Canada. Most notably, ratification of a new trade agreement negotiated amongst Canada, the United States and Mexico would require introduction of a patent term extension system and lengthening of data protection for biologics. Entirely separate from this, the second federal budget bill for the year introduced a series of amendments to the Patent Act, dealing with diverse matters such as licensing commitments on standard-essential patents and the role of the prosecution history in claim construction. Late in the year, a wholly revised version of the Patent Rules was published for public consultation, largely geared toward implementing the Patent Law Treaty in Canada, an initiative having its genesis in the second federal budget bill of 2014.

This article provides our readers with a summary of highlights from 2018, including links to our previous articles. In addition we have prepared a separate summary of notable patent decisions from the Canadian courts from last year, which you can read here.

"NAFTA 2.0"

The renegotiation of the North American Free Trade Agreement last year received a great deal of press in Canada. While originally described domestically by the US-driven abbreviation "USMCA," the Canadian government has since adopted the more mellifluous acronym "CUSMA."

Patent Term Adjustment - If ratified, CUSMA would require amendment of the Canadian Patent Act to provide patent term adjustment to account for Patent Office delay in issuing patents.

Data Protection for Biologics - Although not a patent issue per se, a closely related expansion of IP rights is the requirement for extension of the data protection term for biologics from the current eight years to ten.

While agreement on CUSMA has been reached in principle, it must still be ratified by all three countries.

In Canada, the steps required for ratification and implementation of CUSMA include tabling of the treaty in Parliament for 21 sitting days; preparing an Order in Council by Cabinet authorizing the Minister of Foreign Affairs to sign an Instrument of Ratification; and passing of a bill implementing the treaty by Parliament.

The United States administration must submit a list of changes to US law needed to accommodate passage of CUSMA within 60 days of signing it, or by January 30. It then must submit to Congress the final text of the implementing legislation and a Statement of Administrative Action 30 days before the bill is formally introduced. Meanwhile, the International Trade Commission must report to the President and Congress on the economic impact of the trade agreement within 105 days of the signing of the agreement. Progress on this has been delayed by the ongoing US government shutdown. Once the implementing legislation is introduced in Congress, the House and the Senate will have 90 days to approve it by simple majority vote.

In Mexico, CUSMA is subject to ratification by simple majority vote in the Senate. In addition, Annex 23-A to CUSMA imposes obligations on Mexico to implement reforms to its labour laws. Such reforms have been tabled in Mexico's Congress, but Congress is not expected to consider them until February.

Until then, the current NAFTA remains in force. Any party may withdraw from NAFTA upon giving six months' notice, which President Trump has suggested he may do in order to put pressure on Congress to implement CUSMA more quickly.

More on CUSMA is provided in our article USMCA v NAFTA: What's changed and what it means for IP in Canada.

Budget Implementation Act, 2018, No. 2

Each year, the federal government typically enacts one or two omnibus acts, implementing provisions of the federal budget tabled in Parliament in the spring. The second budget bill of 2018, enacted as the Budget Implementation Act, 2018, No. 2, made a number of significant changes to the Patent Act:

  • Standard Essential Patents - Licensing commitments on standard-essential patents now bind subsequent patent owners.
  • Prosecution Histories - Prosecution histories are now admissible in evidence to construe patent claims.
  • Experimental Use - An experimental use exception to infringement has been codified.
  • Prior User Rights - The scope of prior user rights has been expanded.
  • Demand Letters - Regulation-making authority concerning the requirements for "demand" (cease and desist) letters has been established.

These are particularly interesting changes in that they seem to be driven by the domestic agenda, as they are not required for compliance with a trade agreement or in connection with ratification of an international IP treaty.

See our articles Five important changes to the Canadian Patent Act and New Bill C-86 introduces many more changes to IP laws for more details.

New Patent Rules

A draft of entirely revised Patent Rules was published for public consultation in December. Many of the changes concern compliance with requirements of the Patent Law Treaty, which is to be ratified by Canada. We anticipate that the new Patent Rules might be in force later in 2019, although this is not known with certainty.

Particularly notable changes in the proposed Rules include the following:

  • Late Entry into PCT National Phase - A Patent Cooperation Treaty (PCT) application may enter the Canadian national phase up to 42 months from the earliest priority date. But under the new system, in order to enter the national phase more than 30 months from the priority date, it will be necessary to submit a statement that failure to meet the 30-month deadline was unintentional.
  • Maintenance Fees - The maintenance fee regime will become more complex. Anyone will be able to pay maintenance fees on pending applications. The Patent Office will be required to issue a late notice if a maintenance fee is missed. But reinstatement of an abandoned application will be available only on a "due care" standard, and "third party rights" to practice the invention may arise if maintenance fees are missed. Similar changes will be made to the examination request requirement.
  • Restoration of Priority - Restoration of the right of priority will be available in Canada for the first time. It will be possible to claim priority to an application filed up to 14 months before the Canadian filing date if the failure to meet the 12-month Convention deadline was unintentional.
  • Delayed Requirement for Translation - Submission of an English or French language translation of a foreign language specification and payment of the filing fee will no longer be prerequisites to obtaining a filing date. However, these relaxed rules will not apply to PCT national phase applications.
  • Certified Copy of Priority Document - It will be necessary to submit a certified copy of the priority document, unless made available through a specified digital library, or submitted during the international phase of a PCT application.
  • 24/7/365 Filing - Under the new Rules, it will be possible to obtain a filing date on weekends, holidays and other days the Patent Office is closed for business, by filing electronically.
  • Shortened Prosecution Timelines - The term for requesting examination will be shortened to four years, from five. Examiner's Reports will require a response within four months rather than six. The final fee will be due four months rather than six months from the notice of allowance.

Our article Canada's new Patent Rules: twelve notable changes and tips expands on these and other points.

Conclusion

Further developments in many of these matters can be expected in 2019 and perhaps beyond. The necessary legislative amendments to provide for patent term adjustment and extended data protection for biologics presumably will not advance without ratification of CUSMA. The new Patent Rules appear to be in close to final form, but require final publication in the Canada Gazette Part II before coming into force, so additional changes remain possible. With respect to the Budget Implementation Act, 2018, No. 2, the provisions concerning standard essential patents, experimental use, and demand letters all are subject to further elaboration through regulations, yet to be made.

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.

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
David Schwartz
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
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
 
Email Address
Company Name
Password
Confirm Password
Position
Industry
Mondaq Newsalert
Select Topics
Select Regions
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