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11 February 2019
Canada saw a range of disparate patent law developments in 2018. Most notably, the ratification of a new trade agreement negotiated by Canada, the United States and Mexico would require the introduction of a patent term extension system and an extension of data protection for biologics. 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. Late in 2018, a wholly revised version of the Patent Rules was published for public consultation, largely geared toward implementing the Patent Law Treaty in Canada – an initiative which has its genesis in the second federal budget bill of 2014.
This article provides a summary of 2018 highlights.(1)
The renegotiation of the North American Free Trade Agreement (NAFTA) in 2018 received a great deal of press in Canada.(2)
Patent term adjustment
If ratified, the United States-Mexico-Canada Agreement (USMCA) would require the Patent Act to be amended to provide patent term adjustment to account for Patent Office delays in issuing patents.
Data protection for biologics
Although not a patent issue per se, a closely related expansion of IP rights is the requirement for the data protection term for biologics to be extended from the current eight years to 10.
While agreement on the USMCA has been reached in principle, it must still be ratified by all three countries.
In Canada, the steps required for ratification and implementation include:
Until each country ratifies the USMCA, the current NAFTA will remain in force. Any party may withdraw from NAFTA on giving six months' notice, which President Trump has suggested he may do in order to put pressure on Congress to implement the USMCA more quickly (for further details please see "USMCA versus NAFTA: what's changed and what it means for intellectual property in Canada").(3)
Each year the federal government typically enacts one or two omnibus acts, implementing provisions of the federal budget tabled in Parliament in the spring. The second budget bill of 2018, enacted as the Budget Implementation Act 2 2018, made the following significant changes to the Patent Act:
These are particularly interesting changes in that they seem to be driven by the domestic agenda, as they are not required for compliance with a trade agreement or in connection with ratification of an international IP treaty (for further details please see "Five important changes to the Canadian Patent Act no in effect" and "New Bill C-86 introduces many more changes to IP laws").
A draft of entirely revised Patent Rules was published for public consultation in December 2018. Many of the changes concern compliance with requirements of the Patent Law Treaty, which is to be ratified by Canada. The new Patent Rules are expected to come into force later in 2019, although this is not certain.
Particularly notable changes to the proposed rules include the following:
(For further details please see "New Patent Rules: 12 notable changes and tips".)
Further developments in many of these matters can be expected in 2019 and perhaps beyond. The necessary legislative amendments to provide for patent term adjustment and extended data protection for biologics presumably will not advance without ratification of the USMCA. The new Patent Rules appear to be close to final form but require final publication in the Canada Gazette, Part II before coming into force, so additional changes remain possible. With respect to the Budget Implementation Act 2 2018, the provisions concerning standard essential patents, experimental use and demand letters are subject to further elaboration through regulations which have yet to be issued.
For further information on this topic please contact David Schwartz at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (firstname.lastname@example.org). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
Walter Chan, student at law, assisted in the preparation of this article.
(3) For further details please see "Trump poised to make NAFTA ultimatum to congressional Democrats" available here.
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