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Summer of Consultations

Almost all aspects of intellectual property law are the subject of public consultations this summer and fall. Intellectual property lawyers and their clients were busy reviewing the upcoming changes, providing important comments and planning for their implementation. There are lots of changes to be aware of for clients building, maintaining or monitoring intellectual property rights.

Patents

A full replacement of the Patent Rules (link) was proposed to implement the Patent Law Treaty which standardizes some procedural requirements of the patent process. The Patent Rules provide the regulatory implementation details for the Patent Act and define most of the procedures for dealing with the patent office, including the filing and processing of patent applications, assigning patents and keeping patents alive. The proposed changes will likely be the most significant in a generation to the patent system. The consultation period closes in early September and the expected implementation date is late 2018 or early 2019. Some of the key changes coming in the new Patent Rules include:

  • changes to the requirements to obtain a filing date when filing a patent application;
  • new deadlines for responding to correspondence from the patent office;
  • new deadlines for the abandonment of patent applications and procedures for reinstating patent applications; and
  • changing how patents may be assigned, how and when patent agents are appointed and who can deal with the patent office.

In parallel with the consultation on the Patent Rules, the CETA Implementation Act will also affect patents by introducing patent term extensions through certificates of supplementary protection (CSPs) for certain pharmaceutical inventions, and an overhauled the patent linkage system. There was a short period of consultation on the Certificate of Supplementary Protection Regulations (link) and amendments to the Patented Medicines (Notice of Compliance) Regulations (link) at the end of July. The CETA changes are expected to come into force this fall.

The regulatory changes are coming as a result of three sets of amendments to the Patent Act that have received royal assent and require implementing regulations before coming into force.

Trademarks

Trademarks are also being overhauled through a series of amendments to the Trademarks Act along with substantial amendments to the implementing Trade-mark Regulations. These changes include substantive changes to implement several international treaties: the Madrid Protocol, the Singapore Treaty and the Nice Agreement, as well as eliminating the requirement to declare use of a trade-mark. While the changes to the Trade-marks Act received royal asset in 2014 and 2015 as part of budget implementation legislation, the complexity of the implementing regulations and technology changes required at the Trademark Office mean that the changes are not expected to come into force until late 2018 or early 2019.

The proposed amendments to the Trade-marks Regulations (link) address, among other things, opposition, section 45 and objection procedures and changes to the fee structure based on the number of ‘classes’ of goods or services associated with the mark. The consultation period was in June and July.

Implementation of the Madrid Treaty will allow applicants to file a single international trademark application which includes rights in multiple countries, including in Canada. The Nice Agreement provides a standardized set of classes of goods and services for trademarks.

The Trademarks Act was also amended this spring as part of CETA implementation to expand the geographic indicator regime in Canada.

Industrial Designs

The Industrial Design Act was also amended in 2014 as part of the Economic Action Plan 2014 Act No. 2, to implement the Hague Agreement simplifying the international filing of industrial designs. Implementing regulations, required before these amendments come into force, were published for consultation in June and July (link).

The amendments are directed to implementing the Hague Agreement Concerning the International Registration of Industrial Designs, standardizing the filing, examination, requests for priority and grant of industrial designs around the world.

Copyright

For copyright, while there have not been any regulatory consultations, on August 9, 2017, the government announced a comprehensive review of the Copyright Board (link). The Copyright Board is tasked with, among other things, fixing tariffs for the use of copyright protected works. The consultation is directed to addressing systemic issues before the Copyright Board, including the length of time for hearings and the issuing of tariff decisions. The consultation period is open until late September.

Also this year, is a review of copyright policy more generally as part of the 5-year review of the Copyright Act. This review is mandated by section 92 of the Copyright Act added in 2012 by the Copyright Modernization Act. The details of that consultation is expected to be announced later this year although many stakeholders are preparing their submissions already.

Conclusion

The breadth of the changes will modernize the intellectual property system in Canada and coordinate procedural aspects with many of Canada’s leading trading partners. Many of the changes flow from international treaties which were finalized decades ago, tabled in the House of Commons in 2014, and implemented into legislation in 2014 and 2015 so for many, the final implemented and coming into force is eagerly, and perhaps in some cases anxiously, awaited.

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