Worldwide: Key IP Takeaways From The United States-Mexico-Canada Agreement

On September 30, 2018, the United States, Mexico and Canada reached a trade agreement to supersede the North American Free Trade Agreement. The aptly named United States-Mexico-Canada Agreement includes intellectual property provisions covering patents, trademarks, copyright, trade secrets and domain names. USMCA Chapter 20, which contains the intellectual property-related portion of the agreement, is based in part on the abandoned Trans-Pacific Partnership, maintains some NAFTA provisions and includes entirely new ones. Although the agreement awaits ratification in all three countries, the general consensus among intellectual property owners that is it is an improvement over prior trade agreements.

Longer Terms of Protection

One of the most notable aspects of the USMCA intellectual property provisions are longer terms of protection. Under the USMCA, patent holders are entitled to term adjustments when a patent registration is delayed due to circumstances outside the applicant's control, triggered when the patent issues more than three years after an examination request is filed, or more than five years after the application was initially filed. This has been the law in the United States for decades but is new to Canada, which has four and a half years to implement it.

The protection term specifically for biologics — pharmaceuticals synthesized from biological sources — has also been extended. Under the USMCA, the term is 10 years, versus five years under the TPP and eight years in Canada (the United States currently provides 12 years of protection). Biologics were not covered at all under NAFTA, nor are they specifically covered by Mexican law.

Similarly, the USMCA extends the required copyright term in Canada to match the existing U.S. term — the life of the author plus 70 years — up from life of the author plus 50 years. In Mexico, the copyright term is already longer — the life of the author plus 100 years.

Enhanced Enforcement Mechanisms

In addition to longer terms of protection, the USMCA provides for enhanced intellectual property enforcement mechanisms. Taking a page from the Digital Millennium Copyright Act in the United States, the USMCA implements a notice and takedown procedure requiring Internet Service Providers to remove infringing content from their platforms in order to avoid copyright infringement liability. Canada may be exempt from this provision due to certain legislative intricacies. As a result, Canadian ISPs may only be required to notify users of infringement allegations (and will not be required to remove infringing content). Mexico, though, will need to create such a system. The TPP contemplated a similar provision, but NAFTA does not contain any similar provisions.

Further, the USMCA addresses technological protection measures intended to protect copyright content, listing certain types of activities that circumvent such measures, but are nevertheless deemed lawful. The TPP included a similar list, but the USMCA is more narrowly tailored.

In counterfeiting actions, the USMCA requires signatories to impose predetermined damages. (The United States already has statutory damages for counterfeit cases of $1,000 to 200,000 per mark, and up to 10 times that for willful counterfeit use, and provides for stronger rights for taking action at the borders against counterfeit trademark or pirated copyright goods. For example, border officials are authorized to use their own judgment to identify counterfeits (no court order is required) and may unilaterally seize or destroy such counterfeits.)

Trademark and Patent Provisions

The USMCA contains a number of provisions related to trademark protection, most of which are consistent with U.S. law. Canada was already implementing such changes with the new Canadian Trademarks Act that will likely come into force in early 2019. These include: (1) ratifying the Madrid Protocol; (2) adopting a classification system consistent with the Nice system and (3) permitting registration of scent marks. One outstanding requirement that Canada will still need to address is allowing the registration of collective marks (marks used by an association to certify membership or compliance with certain criteria). Mexico has already complied with these requirements.

As with trademarks, the USMCA imposes patent requirements that are already largely consistent with the existing laws in the United States and Canada. For example, the parties must either accede to the international patent agreement known as the Patent Law Treaty, to which the United States is already a member, or adopt procedures consistent with the "objectives" of the Patent Law Treaty. Canada has already amended its domestic laws to comply with the Patent Law Treaty, and those changes are predicted to come into effect in early 2019, but Mexico will have to amend its domestic law to comply with this provision.

Trade Secrets, Domain Names and a Committee on IP Rights

Trade secret protection under the USMCA is similar to NAFTA, and requires that signatories have laws in place to protect trade secrets modeled after Uniform Trademark Secrets Act in the United States. Term limits on trade secret protection are prohibited, as are restrictions discouraging or impeding the voluntary licensing or transfer of trade secrets. Unlike NAFTA and the TPP, the USMCA addresses how trade secrets are handled in litigation, requiring parties to allow submissions under seal to prevent disclosure.

Domain names are likewise covered by the USMCA, which requires the signatories to maintain an online database of domain name registrant contact information, and a domain name dispute mechanism modeled after the Uniform Dispute Resolution Policy, which the United States and Canada already have. The TPP text contained similar provisions, but NAFTA did not.

Finally, in addition to the requirements enumerated in the agreement, the USMCA establishes a Committee on IP Rights, which will be comprised of government officials from each country and tasked with "identify[ing] appropriate opportunities to increase cooperation between the Parties on trade-related intellectual property rights protection and enforcement." Neither NAFTA nor the TPP included a similar provision.

Given that the agreement must pass through each party's ratification procedures, it could be many months or even years before it is in force. Once the USMCA takes effect, it requires that the countries re-evaluate the agreement every six years, and it also contains a 16-year sunset clause, requiring the parties' agreement to extend.

To learn more, see the full text of the agreement and the Trump administration's summary.

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.

Events from this Firm
26 Feb 2019, Other, New York, United States

International Tax Review is delighted to return to NYC for our 2nd annual Women in Tax Forum. This interactive one-day forum will cover US and global tax and transfer pricing developments and provide a platform for tax professionals and in-house tax practitioners to learn in a collaborative and supportive environment.

6 Mar 2019, Conference, Phoenix, United States

This innovative conference focuses on the practical and cutting-edge issues affecting electronic information, information governance, and data analytics.

8 Mar 2019, Conference, Austin, United States

Join the world’s largest gathering of creative professionals at the 2019 SXSW Conference & Festivals in Austin, Texas from March 8-17.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
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 (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