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IMPRESSIONS - IP Updates

 

IP Laws In Canada Are Changing

The Federal Government is transforming the system of patents, trademarks, copyrights, designs, and other forms of intellectual property (IP). The government agency in charge, the Canadian IP Office, or CIPO, has spent many years getting ready to implement the changes.

In this article, we highlight some of the major reforms, with links for further reading, and provide some initial recommendations as well. We caution that the details of the changes to Canadian practice, and hence our recommendations, are subject to change. Please contact us for advice tailored to your situation and be sure to subscribe to our mailing list for future updates.

Trademark Reform in Canada

In the first major reform since 1953, the trademark legislation has been overhauled to implement international treaties that Canada has signed, among other changes.

  • The term of registration (or renewal) of a registered trademark has been reduced to 10 years, from 15 years.
  • Registrations have been expanded to cover distinctive colour marks and sound marks.
  • Fees have been hiked, depending on the number of categories of goods or services associated with a trademark application, which categories must be identified.
  • Registration procedures have been simplified; chief among these, and quite controversially because of the “check” on registrations they provided, "statements of use” have been eliminated.
  • Multi-national applications can be filed through the World IP Office, or WIPO, using a procedure called the “Madrid System”.

The reforms are not expected to be in place until 2018, so brand owners have an opportunity to take advantage of the current rules. For example:

  • Brand owners may wish to file Canadian trademark applications before the new rules are in place in 2018 or so, taking advantage of the current low fees, and the “first-to-file” examination practice, among other favourable rules.*
  • However, those looking to file multi-national applications might wish to wait until the Madrid System is open to Canadian-based trademark owners.

We expect that adding Canada to the Madrid System will cause a higher volume of inbound trademark applications into Canada, resulting in more conflicts; the current opposition rate of about 2% - which rate has been falling over the years - will rise in all likelihood. In contrast, the opposition rate in Europe is about 13%. Notably, the reforms in Canada include two new grounds of opposition.

* At present, trademark applicants may register their marks in Canada on the basis of a foreign registration and foreign use of the trademark - this filing basis has been deleted. As well, a procedure to establish distinctiveness based on a foreign registration has been eliminated.

Patent Reform in Canada

The law governing patents is also being amended, in part to comply with the Patent Law Treaty that Canada signed back in 2001.

  • The amendments provide relief against certain problems that may arise during patent application filing and examination procedures. For example, non-payment of the government fee upon filing a patent application will not deny the applicant a filing date so long as the fee is paid, together with a $150 late fee, by a deadline prescribed in a subsequently issued notice of non-payment. In another example, the current 12-month deadline for filing a Canadian patent application claiming priority to an earlier filed “priority application” will be extended by up to two months, as long as any delay in filing after the 12-month deadline was unintentional. Further, missing parts of an as-filed patent application may be submitted later under certain circumstances.
  • Annual payments to maintain patent applications may be submitted using low-cost service providers, or others, rather than IP counsel.
  • A new $400 fee will apply for filing amendments after allowance, eliminating the current practice of abandoning and then reinstating an application to have the amendments considered. 
  • The 42 month extended period for national phase entry - a unique feature of Canadian practice - will be maintained; CIPO’s fee proposal did not address changing this practice. 
  • Reinstatement of an abandoned patent application will become more complicated. Presently, an abandoned patent application may be reinstated within 12 months of the abandonment by completing whatever action should have been taken to avoid the abandonment and submitting a straightforward reinstatement request with a reinstatement fee. Under the amendments, it will additionally be required to state reasons for failing to take action to avoid the abandonment, and to establish that the failure occurred in spite of due care.

The changes on the patent side are modest compared to trademarks, but in various respects introduce flexibility and user-friendliness. They are expected to be in place in 2017 or 2018.

Design Reform in Canada

Design patents, or industrial designs as they are called in Canada, will also benefit from new rules that implement the Hague Agreement, another international treaty. Canada is expected to join the Hague System of WIPO in the coming months and years, following a promise made within CETA, discussed below.  

  • Among other changes, the term of protection has been increased to 15 years (calculated from filing) from 10 years (calculated from registration). 
  • The “originality” requirement has been deleted and replaced with a “novelty” requirement.
  • Multiple designs are permitted in a single application. The previous practice of “associating” related design applications, and delaying registration until all associated cases had been examined, has been replaced. 
  • As with patent applications, design applications are published at 18 months after filing. Deferment of publication may be requested. 

Canada’s accession to the Hague Agreement is not expected for many months or years, and the timing of the above changes is not yet certain. Accordingly, the benefits of an international design filed through the World IP Office’s filing service are not likely to be realized for quite some time. Overall, the value proposition of an international design has increased, now that the US, Japan, and Korea have all joined the Hague System in the last two years. In fact, WIPO reports a 41% increase in filings in 2015.

Copyright Reform in Canada

First available in 2015, the Combating Counterfeit Products Act (CCPA) authorizes the Canadian Border Services Agency (CBSA) to detain temporarily commercial shipments of suspected counterfeit goods and to share samples, information and evidence about those shipments with intellectual property owners that have filed a free Request for Assistance (RFA) application with the CBSA. Those owners will be able to use that information to pursue civil remedies in court, such as a permanent seizure or other remedies. The application is available here

In 2016, Canada enacted legislation implementing the Marrakesh Treaty. The treaty provides rights to persons who are visually impaired to access copyrighted works.   

College of Patent and Trademark Agents

The IP Institute of Canada, a trade group representing IP professionals in Canada, voted last month to propose the creation of a College of Patent and Trademark Agents of Canada. This proposal follows on from a two-part consultation conducted by CIPO relating to discipline and governance of agents. The proposed measures accompany the enactment, on June 23, 2016, of statutory privilege protecting communications between IP agents and their clients. 

Future Reforms

Peering further into the future, additional changes to IP legislation are expected:

  • The Canadian-EU Comprehensive Economic and Trade Agreement, or CETA, will enhance protection for pharmaceutical patents, including data protection in respect of undisclosed data provided to obtain marketing approval for a new medicine, and up to five additional years of exclusivity after the expiry of the patent. 
  • The Trans-Pacific Partnership, or TPP, is set to introduce patent term adjustment, a mechanism to increase the term of a patent to compensate for delays in the processing or examination of the application and to change the grace period. On the trademark side, “well-known” marks and geographical indications are set to receive enhanced protection. The term of copyright is set to be increased, to life plus 70 years from 50 years, among other changes.  
  • The office in charge of international patent applications, WIPO, has embarked on a project to allow national phase entries to be made directly from the ePCT portal, driving efficiencies and cost savings for patent owners with international portfolios.

Conclusion

On the surface, the changes to Canada’s IP laws appear to be incremental but in reality, the system is in the midst of a significant transformation. The changes bring both benefits and drawbacks to innovators and brands, SMEs, and IP users as well. The Federal Government will undoubtedly continue to reform the IP laws and, it is hoped, enhance Canada’s record on innovation. 

For further information or advice tailored to your situation, please contact us. We invite you to subscribe for future updates. 

Update (1)

After this article was published, the Federal Government introduced legislation on October 31, 2016 to implement CETA with a promise to have it in place in 2017 (link).

Further reading: 

CIPO Q&A on Patent Reform
CIPO Q&A on Trademark Reform
CIPO Q&A on Design Reform
CIPO Consultation Documents
CIPO Fee Consultation Submissions
CIPO Trademark Consultation Submissions
CIPO Patent Consultation Submissions
CIPO Discipline & Governance of IP Agents Consultation
Text of Bill C-31 (Trademark Reform)
Text of Bill C-43 (Patent and Design Reform)
Text of Bill C-11 (Access to Copyright)
Text of CETA
Text of TPP
WIPO-administered treaties
IPIC Self-Governance Proposal

Yuri Chumak