Canadian Patent Updates

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:

  1. 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.
  2. 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.
  3. “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.
  4. 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”.
  5. 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.

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