The United States, Mexico and Canada recently signed the Protocol of Amendment to the Agreement between the United States of America, the United Mexican States and Canada (USMCA). If ratified, the amended USMCA will replace the North American Free Trade Agreement and require a number of changes to Canada's IP laws. Many requirements of the original USMCA have already been met by recent changes in Canadian IP legislation, but more amendments will be required to implement the USMCA.
Canada has now reached the end of its journey to implement the Patent Law Treaty, with new Patent Rules and associated amendments to the Patent Act recently coming into force. To help ease the transition, this article summarises the more significant changes to Canadian patent practice and procedure that are now in effect.
An updated Manual of Patent Office Practice (MOPOP) was recently published, explaining Patent Office administrative and examination practice effective from 30 October 2019. The updated MOPOP provides important information as to how the Patent Office will handle certain aspects of patent practice under the Patent Act and Patent Rules. Most significantly, the updated MOPOP provides details concerning (among other things) the new requirement for the submission of certified copies of priority documents.
Two requirements under the new Patent Rules warrant particular attention for new Canadian patent applications and national phase entries: the Patent Cooperation Treaty national phase entry deadline and the requirement for certified copies of priority documents. Applicants should plan now to ensure that applications under the new rules enter the Canadian national phase within 30 months of the earliest priority date.
The government recently published the final version of the new Patent Rules in Part II of the Canada Gazette. The new rules and associated amendments to the Patent Act will come into force on 30 October 2019. In order to safely and effectively prosecute Canadian patent applications under the new Patent Rules, there are a number of recommendations of which practitioners should be aware.
Canada recently introduced the Budget Implementation Act 2, which brought about several changes to the Patent Act affecting the scope of protection available under Canadian patents. Included in the changes was the addition of a new provision providing an exception from infringement for experimental use of patented technologies. The new provision applies to any action or proceeding that was not finally disposed of as of 13 December 2018.
In a step towards ratifying the United States-Mexico-Canada Agreement (USMCA), the government recently introduced Bill C-100, entitled "An Act to implement the Agreement between Canada, the United States of America and the United Mexican States", in Parliament. If ratified, the USMCA will replace the North American Free Trade Agreement and will require several changes to Canada's IP laws.
The Budget Implementation Act 2 has brought about several changes to the Patent Act that affect the scope of protection available under Canadian patents, including a revision of Section 56, which concerns the rights of prior users of patented technologies. However, as many of the Section 56 amendments will require judicial interpretation, the true scope of prior user rights under the revised provision may be unknown for some time.
A number of patent decisions were taken by the Canadian courts in 2018, including one concerning a relatively rare interlocutory injunction and several others decided on the merits. Damages totalling C$7,915,000 were awarded in one case based on lost profits and reasonable royalties, as well as compound interest, but the justice refused to award punitive damages. Several of the decisions remain under appeal.
Canada saw a range of disparate patent law developments in 2018, including the renegotiation of the North American Free Trade Agreement. Separate from this, the second federal budget bill for 2018 introduced a series of amendments to the Patent Act, which concern diverse matters such as licensing commitments on standard-essential patents and the role of the prosecution history in claim construction.
The Budget Implementation Act 2018, which recently received royal assent, introduced important changes to the Patent Act that will affect the scope of protection available under Canadian patents. Effective immediately, the amendments concern licensing commitments in respect of standard-essential patents, prosecution histories in claim construction, the experimental use of patented inventions, the scope of prior user rights and written demand requirements.
The government recently released its proposed new Patent Rules in the Canada Gazette. This is one of the last steps necessary for implementing the significant changes to Canada's patent law which are expected to come into force in 2019. Many of the changes intend to implement the Patent Law Treaty and help to minimise the risk of loss of rights, while others will reduce the rights of patent applicants and patentees.
The government recently introduced Bill C-86. The changes introduced by the bill are in addition to the many amendments to the Trademarks Act and Patent Act yet to be brought into force. These changes represent continuing efforts by the government to update and modernise Canada's IP legislation and ensure that it is compliant with Canada's international obligations.
After more than one year of negotiations, Canada recently reached a new free trade agreement with Mexico and the United States. Among other things, the US-Mexico-Canada Agreement has updated the North American Free Trade Agreement's IP chapter in order to modify the landscape for pharmaceuticals and for patent, copyright and trademark owners. While Canada is already compliant with many of the new agreement's provisions, a number of the changes may have an impact on its IP laws.
The government recently opened a public consultation on proposed amendments to the Patent Rules. The changes relate principally to pending amendments to the Patent Act that are intended to bring it into compliance with the Patent Law Treaty. A number of significant changes to Canadian patent practice will result if the proposed rules come into force in their present form.
The Canadian Intellectual Property Office (CIPO) recently issued its IP Canada Report 2016, which discusses trends in IP use domestically and by Canadians abroad. The report is based on an analysis of CIPO's internal data and data collected by the World Intellectual Property Organisation. It highlights the close relationship between the Canadian and US economies, as well as recent trends in Canadian patents, trademarks and industrial designs.
The Canadian Intellectual Property Office recently proposed fee changes resulting from amendments to the Canadian Trademarks Act and Patent Act. The amendments include the merging of the application and registration fees for trademarks, the implementation of the Nice Classification and Madrid Protocol, an increase in the renewal fee for trademarks and the exclusion of sequence listings in electronic form from final patent fee calculations.
The Canadian Intellectual Property Office (CIPO) has adopted a practice whereby, on entry of a Patent Cooperation Treaty application into the Canadian national phase, CIPO will obtain the sequence listing directly from the World Intellectual Property Organisation if it was filed as part of the international application in electronic form. This should simplify national phase entry in Canada.
The Federal Budget 2015 has proposed significant changes to various aspects of Canada's IP system. Among other things, the government has proposed to provide clients with a statutory privilege for confidential communications with their IP agents, and to give the Canadian Intellectual Property Office the ability to extend key deadlines in cases of force majeure events.
Bill C-18, entitled the Agricultural Growth Act, has now received royal assent. The bill amends several statutes in order to implement various measures relating to agriculture and makes significant amendments to the Plant Breeders' Rights Act, bringing it into conformity with the requirements of the 1991 Act of the International Convention for the Protection of New Varieties of Plants.
The text of the Comprehensive Economic and Trade Agreement (CETA) between Canada and Europe was recently released. Chapter 22 addresses intellectual property, stating that CETA's objectives are to facilitate the production and commercialisation of innovative and creative products and the provision of services, and to achieve an adequate and effective level of protection and enforcement of IP rights.
If enacted, Bill C-18 – now pending in the Canadian Parliament – will amend several statutes in order to implement various measures relating to agriculture. The bill makes significant amendments to the Plant Breeders' Rights Act, including changes to the novelty requirement and the duration and scope of breeders' rights, as well as exceptions from and exhaustion of those rights.
The Canadian government has simultaneously tabled five IP law treaties in Parliament to harmonise Canada's patent, trademark and industrial design regimes with many of its most important trading partners around the world. It is expected that numerous amendments will need to be made to Canada's IP statutes to implement these treaties.
The Canadian government recently tabled a report with further details concerning the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union. CETA's provisions relating to intellectual property will, among other things, affect an innovator's right of appeal and extend the protection available to pharmaceutical products protected by eligible patents.
The US Supreme Court recently issued its opinion in Association for Molecular Pathology v Myriad Genetics, Inc concerning the patentability of human genes. Myriad will not only be of interest to Canadians with respect to their IP rights in the United States, but may also provide important clues for future developments – or prospects to be avoided – in Canada.
The Rules Amending the Patent Rules have come into force. Section 28 of the Patent Rules has been amended to introduce a procedure for accelerating the prosecution of Canadian patent applications relating to environmental (ie, 'green') technologies. The existing special order procedure has been maintained.
In a recent Federal Court decision a patent was considered invalid for failure to respond in good faith to an examiner's requisition. The court referenced Section 73 of the Patent Act, which states that "application for a patent in Canada shall be deemed to be abandoned if the applicant does not … reply in good faith to any requisition made by an examiner in connection with an examination".
Proposed amendments to the Patent Rules were recently published for public comment in Part I of the Canada Gazette. Although many of the proposed amendments are essentially editorial in nature, they concern at least one matter of substance: the requirement for a 'declaration of entitlement' in a Canadian patent application.
A number of rules and regulations governing intellectual property in Canada have recently been amended. The most significant of these changes deal with amendments to the Patent Rules. The key changes affect, among other things, the regime for paying small entity government fees.
A 'Markush' claim recites a group of elements in the very specific form "wherein R is selected from the group consisting of A, B, C and D". Although Markush claims originated in the United States, their use is permitted in Canadian patent practice. However, a recent case suggests that it may be advantageous to avoid them with a view to benefiting from Section 27(5) of the Patent Act.
Amendments to the Canadian Patent Rules, which took effect on March 30 2004, have simplified the manner in which sequence listings are handled in the Canadian national phase of Patent Cooperation Treaty applications, and have partially resolved a significant problem in the Patent Rules.
An anomaly in the Canadian Patent Rules is likely to be corrected by the next amendments to the rules. In the meantime, it is incumbent on applicants entering the national phase in Canada to alert their Canadian agent to the presence of nucleotide or amino acid sequences in the international application.
The Federal Court of Appeal recently delivered its judgment in Percy Schmeiser v Monsanto Canada Inc. The judgment, affirming that of the Trial Division of the Federal Court, is an important early indication of how biotechnology patents will be interpreted by the Canadian courts, particularly patents concerning plant biotechnology.
The Canadian Biotechnology Advisory Committee has issued a report on the patenting of higher life forms to the Biotechnology Ministerial Coordinating Committee. The report contains 13 recommendations, including proposals that would result in significant amendments to the Patent Act.