IP Overhaul

In the past year, legislation in all areas of intellectual property was amended or is in the process of being amended: the Trade-marks Act was amended twice; anti-counterfeiting amendments were made to the Copyright Act and several sections of the Copyright Modernization Act came into force; both the Patent Act and Industrial Design Act were amended to implement the treaties; and amendments to the Plant Breeders’ Rights Act are in the final stages of parliament. I discuss these changes in an article published today.

The article is published in SLAW as one of my regular columns and reproduced below:

Overhaul of Intellectual Property Legislation

In a series of initiatives, legislation addressing intellectual property is being amended. The Patent Act, the Trade-marks Act, the Copyright Act, the Industrial Design Act and the Plant Breeders’ Rights Act have been amended or are about to be amended. While most of the changes are procedural rather than substantive, the changes will likely have a lasting effect on Canada’s role in the international intellectual property system.

Many of the changes effect the filing requirements in Canada to standardize or integrate the process with international systems. For example, for trademarks, the Madrid Protocol allows an international trademark application to be filed which has certain effects in Canada. Similarly, for industrial designs, the Hague system permits an international design application to be filed.

Trade-marks Act

The Trade-marks Act (soon to be the Trademarks Act) was amended twice in 2014. First, as part of an omnibus budget bill, Bill C-31 in June and then in December by Bill C-8, the Combating Counterfeit Products Act.

Bill C-31 introduces significant changes to the requirements for filing trademarks in Canada, including with classifications and ‘use’ required in Canada. The changes are directed to implementing the Nice Agreement, Singapore Treaty, and the Madrid Protocol.

The recently passed Combating Counterfeit Products Act introduces criminal enforcement provisions for counterfeit goods and new border enforcement measures. Many of these changes relate to provisions of the Anti-Counterfeiting Trade Agreement signed in October 2011, although not in force.

While some of these changes are already in force with the passing of C-8, most changes will require implementing regulations and an order in council to come into force.

Copyright Act

Bill C-8,  the Combating Counterfeit Products Act mentioned above, also includes changes to the Copyright Act, including to export and import provisions and border enforcement measures.

The Copyright Act was significantly amended in 2011 with the Copyright Modernization Act which related, in part, to the WIPO Copyright Treaty and WIPO Performance Phonogram Treaty. In August 2014, these treaties officially came into force in Canada, triggering entry into force of certain sections of the Copyright Modernization Act.

Also, the “Notice and Notice” provisions of the Copyright Act relating to copyright material hosted by Internet Service Providers (ISPs) will come into force on January 2, 2015.

Patent Act

Various changes to the Patent Act are being made as part of Bill C-43, a second omnibus budget bill which received royal assent on December 16, 2014. The changes are intended to implement Patent Law Treaty and include changes to filing requirements, priority claims, renewal fees and the abandonment process.

Industrial Design Act

The same Bill C-43 mentioned above, also amends the Industrial Design Act, in part to implement Hague Agreement Concerning the International Registration of Industrial Designs. The changes include the filing requirements, consistency with the Patent Act and extending the term of industrial designs to 15 years.

Plant Breeders’ Rights Act

Bill C-18, the Agricultural Growth Act is, at the time of writing, before the Senate at the committee stage and is likely to pass soon. Bill C-18 is directed to modernizing various aspects of the agricultural industry in Canada, including making changes to the Plant Breeders’ Rights Act. The changes to breeder rights are intended to implement the International Convention for the Protection of New Varieties of Plants. The legislation would introduce new protections for plant breeders, including a longer term of protection, as well as a farmers’ privilege to use harvested seeds from the plant varieties they grow on their own holdings to propagate such plant varieties on those holdings.


All these changes will keep intellectual property lawyers and their clients busy in 2015 dealing with rights granted or pending under the prior rules, and new applications and granted rights under the new regimes. While most of the changes are procedural, such as deadlines for filing documents during the application process, some of the changes are substantive, for example extending the term of protection for plant breeders’ rights and industrial designs.

The next phase for many of these changes is implementing the changes in the regulations and in the rules and procedures of various government agencies, particularly the Canadian Intellectual Property Office.