Changes in IP Rules Affecting Transactions and Day-to-Day Operations

November 26, 2019
By Noel Courage

The past few years have seen many changes in IP. Some of it is driven by treaty implementation. Other changes are driven by government initiatives that try to modernize and strengthen IP, or improve fairness. The result has been that IP practices appear to have become more complex across the board.  

The Toronto Computer Lawyer’s Group (“TCLG”) is having a lunch seminar on this issue November 27, 2019, called “Impact of Amendments to IP Legislation on IP in Transactions and Day-to-Day Operations” (click here for details). The speakers are Anna Stosis of TD Bank Group, Victor Krichker of Bereskin & Parr LLP and Tony Turco of  Blakes (the author of this article is the moderator). The Chair of TCLG, Conrad Lee of McCarthys, says, “The seminar is intended to shed some light on the practical implications of recent changes to IP practices and to discuss some operational changes that a business may want to implement in response to such changes.”

Patent practitioners are dealing with new rules intended to harmonize and streamline patent processes. As a benefit to patent applicants, it is now easier to meet filing date requirements, and patent rights will typically not go abandoned without written advance notice from the Canadian Patent Office. The basic examination process will stay the same, though many deadlines to take action have been revised. Litigation is greatly more complicated now that the court can peruse the file history of negotiations between the applicant and patent office, called file wrapper estoppel (ie. anything you, the patent owner, say can be used against you in interpreting the patent claims). There are also new transactional issues, such as that a patent owner’s licensing commitments on a standard essential patent may bind future patent owners. Medicines can potentially have a longer patent term (called a Certificate of Supplementary Protection), which means more money can be recouped from commercialization. The speciality pharma patent litigation system was also overhauled (ie. the court cases called “NOC Proceedings”).

For trademarks, a massive change was eliminating the requirement to use a trademark prior to registration. In an interesting modernization, completely new types of trademarks are now registrable, such as scent, taste, texture, colour alone, and even moving images. Canada now has a class-based system for categorizing trademarks (based on the “Nice Agreement”), in line with many other countries. Anna Sosis of TD advises, “It is good practice to understand future expansion plans of your client's business and proactively register trademarks in all relevant jurisdictions.” Canada also implemented the Madrid Protocol, which opens the door to file an international trademark application that can be registered in over 100 countries. While the Madrid system can be cost effective, it is not without risk, since a successful challenge to the trademark in the country of initial registration can affect the international rights.

In the copyright arena, a big potential change will occur if the US-Canada-Mexico free trade agreement is implemented. The term of copyright protection will go from the life of author plus 50 years to the life of author plus 70 years. There have also been significant recent court decisions on copyright infringement and crown copyright.

The Designs Office implemented a treaty (Hague Agreement) that permits filing of a single application that can protect rights in over 70 member countries. There are risks to this system, compared to filing in individual countries, but it does provide the potential for increased efficiency and cost savings. The Designs Office has also made its requirements for design drawings more flexible (colour and more drawing styles now accepted). The Office has also opened the door to filing designs on animations. The term of protection for a registered design has also increased.

It’s never a dull moment in IP lately, so the TCLG panel will have plenty to review in its seminar.

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