Innovation Strategy

As part of World IP Day on April 26, 2018, the federal government announced a National IP Strategy to “help Canadian businesses, creators, entrepreneurs and innovators understand, protect and access intellectual property”. The strategy, led by the Minister of Innovation, Science and Economic Development, has a number of initiatives, and $85 million in funding, which will be rolled out over the upcoming months and years. New resources, tools, opportunities and legal changes may be interest to many in innovation oriented businesses.

IP Awareness and Tools

In addition to specific tools, a big focus on the strategy is increasing IP awareness. There is money to support IP legal clinics at law schools and to support entrepreneurs with using their intellectual property to expand into international markets.

The government announced a patent collective pilot project. The idea is that a third party, to be identified through an RFP process, will work with companies to improve intellectual property and obtain access to patents to facilitate the companies’ growth. Patent pools are often used to leverage licensing opportunities and provide defensive assets in the event of patent litigation. The government has committed $30 million to this aspect of the IP strategy.

The Standards Council of Canada will also be involved through encouraging companies to leverage their IP during the standard-setting process, particularly for international standards. Standard essential patents (SEPs), along with patent pools, were the subject of guidance from the Competition Bureau in 2016 in its Intellectual Property Enforcement Guidelines.

The government also announced an IP-specific portal to connect businesses and entrepreneurs with intellectual property owned by governments and academia. The idea is to provide improved access to IP developed by government and universities so that the IP can be more easily licensed or commercialized.

The government announced that it is providing more funding and resources to the Federal Court, which handles most of the intellectual property litigation in Canada. The Copyright Board, which is in the middle of its own review to improve efficiencies, will also see some additional resources.

Legislative Changes

As part of the innovation strategy, a number of upcoming legislative changes were announced. Most significant to practitioners is that the government is planning a College of Patent and Trademark Agents that will regulate the profession. A college for patent and trademark agents has been a long-discussed goal of many in the profession. Currently the Canadian Intellectual Property Office provides a degree of oversight of the profession and operates the entrance examinations regarding to become a patent or trademark agent.

The government also announced that changes are coming to how intellectual property is handled during liquidation proceedings. As part of amendments in 2009 to the Bankruptcy and Insolvency Act (BIA) and the Companies’ Creditors Arrangement Act (CCAA), intellectual property licensees can continue to use IP in certain conditions even if the licensor could otherwise disclaim contracts. According to the announcement, the planned changes will add similar rights to licensees of intellectual property in the course of liquidation proceedings.

Copyright – The government announced that it will focus on the notice-and-notice regime used to address cases of alleged online copyright infringement. In order to address, “a small number of bad actors” who have used the regime to send threatening demands to make settlement payments, the government says changes will be made to clarify that notices with settlement demands do not comply with the notice-and-notice regime.

Trademarks – To address concerns about the removal of a ‘use’ requirement for trademarks, the government announced that it will add a new ‘bad faith’ basis for invalidity that may be used in trademark oppositions and invalidity proceedings. They also said changes will be made to require use of a trademark within three years in order to enforce a trademark.

Patents – Several legislative changes were announced for the Patent Act or Patent Rules. For patent demand letters, the government announced that changes will be made to provide minimum requirements to avoid deceptive letters. The requirements will include identifying patent numbers and the products or activities which are alleged to constitute patent infringement.

Changes were also announced to clarify the research exception to infringement for conducting experiments on the patented technology as well as to the promises made by patent owners who make licensing commitments during standard setting processes. Currently there are statutory exceptions to patent infringement in section 55.2 of the Patent Act for “development and submission of information required under any law” that regulates the manufacture, construction, use or sale of a product as well as for private, non-commercial use for the purpose of experiments that relate to the subject-matter of the patent, although no mention is made of the standard-setting process.

So far, the implementation details, draft amendments, regulations or precise timelines have not been announced. This is the first national IP strategy announced by the Canadian government and many observers see a need to focus on intellectual property as a way to keep Canada competitive globally.

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