Like every year, 2018 also saw a change in the Canadian patent landscape. On September 30th, Canada, U.S., and Mexico came to an agreement regarding the re-negotiation of the NAFTA (North American Free Trade Agreement). The agreement called the United States–Mexico–Canada Agreement (USMCA) was signed by United States President Donald Trump, Mexican President Enrique Peña Nieto, and Canadian Prime Minister Justin Trudeau on November 30, 2018 However, none of the 3 countries have yet ratified the USMCA. If the USMCA is ratified and comes in to force, Canada will have time limits varying from 2.5to5 years to meet relevant Intellectual Property requirements. Canadian businesses should be aware of at least the following expected impact of USMCA on Intellectual Property in Canada:
- Drug products that contain a biologic medicinal ingredient will have the term of regulatory data protection increased to 10 years which is currently 8 years.
- Drug products that do not contain a biologic medicinal ingredient will likely not be effected as to term of regulatory data protection as Canada’s existing protection of 8 years appears to satisfy minimum requirements of USMCA.
- “Unreasonable delay” USMCA defines “unreasonable delay” to include at least a delay in the issuance of a patent of more than five years from the date of filing of the application, or three years after a request for examination of the application has been made, whichever is later.) in patent prosecution and issuance will be eligible for patent term adjustment.
- USMCA requires determination of “pre-established damages” for trademark infringement in an amount sufficient to constitute a deterrent to future infringements and to compensate fully the right holder for the harm caused by the infringement”.
- An increase in copyright protection to the life of the author plus 70 years (from the current term of life of the author plus 50 years).
The Intellectual Property provisions of the USMCA count 63 pages long, and will require analysis for years to come to recognize risks and benefits as Canadian legislation and schemes are brought into effect to meet USMCA requirements. However, initial perceptions are that if ratified in its present form, the USMCA will bring positive changes to Canadian Intellectual Property protection and will give greater scope to patentees.
Canada has declared Bill C-86 that includes proposed changes to Patent, Trademark and Copyright legislation. It was tabled in the House of Commons on October 29th, 2018. This can result in significant changes to Canadian Intellectual Property legislation that should be noted by Canadian business.
Proposed changes to the Patent Act include:
- Giving rights to the Governor in Council to control standard essential patents which were related to the technology that requires complying with technical and industrial standards.
- Altered scope of Prior User Rights –prior use to be defined as both an “act that would otherwise constitute an infringement” and “serious and effective preparations” to commit the act and prior user rights to be transferrable if the prior user is a business.
- Changes to provisions for exemption of experimentation from patent infringement – the proposed amendment removes the requirement that the experimentation must be done for non-commercial use.
- Proposed College of Patent Agents and Trade-mark Agents Act that would govern licensing and professional conduct requirements of patent agents or trade-mark agents.
- Proposed consideration of prosecution history or file-wrapper estoppel to bring Canadian patent practice closer to US practice– written communication made during patent prosecution could be considered to interpret meaning of a patent claim or a representation made with regard to a patent in certain court proceedings.
Proposed changes to the Trademarks Act include:
- Addition of bad faith as a basis for opposition to a trademark registration.
- The Bill also provides additional powers to the Registrar including an ability to remove official marks owned by entities that are no longer existent.
- Evidence of use in Canada or special circumstances excusing absence of use of a registered trademark to obtain relief for infringement or depreciation of goodwill. This is applicable only till the third anniversary of the registration.
In the passing year, Canadian patent and other intellectual property legislation has been subject to much and it is important to keep yourself updated for the same. Bill C-86 is an extensive document of over 800 pages in length that will require many years of detailed analysis to determine its impact, but initial perception is that it provides a positive step in efforts to make Canadian intellectual property protection more efficient for Canadian commercial interests.