Canadian Patent & Trademarks Update: Bill C-86

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:

  1. 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.
  2. 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.
  3. 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.
  4. 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.
  5. 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:

  1. Addition of bad faith as a basis for opposition to a trademark registration.
  2. The Bill also provides additional powers to the Registrar including an ability to remove official marks owned by entities that are no longer existent.
  3. 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.

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