Changes to Intellectual Property Laws
October 31, 2018
The Government of Canada is proposing legislative changes to intellectual property (IP) laws and the Copyright Board’s legislative framework to better encourage innovation, attract investment, and support an efficient and fair economy in response to Budget 2018 commitments. These amendments were introduced as part of the Budget Implementation Act, 2018, No. 2.
Process: To make the Board’s decision-making processes more efficient, decision-making frameworks would be streamlined, an overarching mandate and decision-making criteria would be established, and case management would be formalized.
Timelines: To provide the Board with functional timelines, tariffs would be filed earlier and be established for longer terms, publication and opposition requirements would be updated, and the Governor in Council would have the regulatory power to set decision-making deadlines.
Efficiency: More collectives and users would be allowed to enter into direct agreements and seek support from the Board only as necessary.
Learn more: Factsheet: Copyright Board Reform
Notice and Notice
Settlement demands: To protect consumers while ensuring that the Notice and Notice regime remains effective in discouraging infringement, the Copyright Act would be amended to clarify that notices that include settlement offers or payment demands do not comply with Canada’s copyright Notice and Notice regime.
Demand letters: To discourage the sending of deceptive or unsubstantiated demand letters, there would be minimum requirements and standards for the use of patent demand letters. Businesses that receive vague and/or deceptive demand letters that do not meet the minimum requirements could bring action in Canadian court and seek damages from the sender.
Patent history estoppel: To prevent patent owners from making inconsistent statements in court cases, statements made by the patent applicant during the patent examination would be admissible as evidence.
Research exception: To clarify the scope of the research that is exempt from patent infringement, the Patent Act would be amended to specify that it is not an infringement to conduct research on the subject matter of a patent.
Prior use rights: Modify the prior use rights for patents so that a business is not required to cease its operations if a patent is filed that covers its existing operations.
Standard essential patents: Ensure that subsequent owners of a standard essential patent must honour licensing commitments made by previous owners of the same patent.
IP licences in bankruptcy: To ensure that treatment of IP licences is consistent and that licensees can continue to rely on their licences in liquidation proceedings, intellectual property licences would no longer be unilaterally revoked from licensees who are in good standing.
Use: To prevent the abusive use of the trademark regime, such as applying for registration with the sole intention of seeking remuneration from the legitimate owner of the trademark, new grounds of opposition and invalidity for bad faith registration would be created and use would be required to enforce a trademark within the first three years after registration.
Opposition procedures: To improve the efficiency and effectiveness of registration proceedings, the Registrar would be authorized to award costs for abusive practices during proceedings. Additional evidence would also no longer be automatically admitted on appeal of the Registrar’s decisions, a change that would be balanced with the ability for parties to obtain confidentiality orders when they file commercially sensitive evidence.
Official marks: To prevent official marks that are owned by entities that no longer exist or are not public authorities from creating obstacles to trademark registration, the Registrar will be empowered to withdraw them from the database.
Other: Other amendments would be made to the Trade-marks Act to clarify references to filing dates, ensure that trademark renewal fees appropriately correspond to the new system, allow registrants to pay only the renewal fee applicable for the class of goods or services registered, and clarify the scope of the content of divisional applications after advertisement.
Governance framework for IP agents: To ensure that the professional and ethical standards of IP agents are maintained, a College of Patent and Trademark Agents would be established. This college would be responsible for the formalization of a code of conduct and disciplinary process. This college would be self-regulating and governed by members of the profession and the public.
Agent-client privilege in Access to Information Act and Privacy Act: To ensure that the agent privilege is treated no differently than solicitor-client privilege with respect to these acts and prevent the disclosure of privileged intellectual property information, an exception for agent-client privileged information would be added to the Privacy Act and the Access to Information Act.
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