Budget Changes

Introduced yesterday, budget bill C-86 includes changes to the Patent Act, Trade-marks Act, Copyright Act, enacts the College of Patent Agents and Trade-mark Agents Act and makes changes for IP licenses in insolvency. Some highlights include a college to regulate agents, reform of the Copyright Board, allows patent file histories to be admissible to rebut claim constructions, add bad faith as a ground of opposition for trademarks, and adds requirements for notices under the notice-and-notice copyright regime.

The legislation, entitled “A second Act to implement certain provisions of the budget tabled in Parliament on February 27, 2018 and other measures” (link) addresses many of the National IP Strategy items announced in April 2018 (see earlier post). From the summary, the following changes are included (see specific sections for details):

Enacts the College of Patent Agents and Trade-mark Agents Act [s.247 and following] which will establishes the College of Patent Agents and Trade-mark Agents, which is to be responsible for the regulation of patent agents and trade-mark agents in the public interest.

Reforms the Copyright Board [s.280 and following] “so as to improve the timeliness and clarity of its proceedings and decision-making processes”.

Amendments to the Patent Act [s187 and following]:

(a) provide a regulation-making authority for the establishment of requirements for written demands relating to patents;
(b) specify that an act committed for the purpose of experimentation relating to the subject matter of a patent is not an infringement of the patent and that licencing commitments that bind the owner of a standard-essential patent or the holder of a certificate of supplementary protection that sets out such a patent bind any subsequent owners or holders;
(c) expand the rights of a person in respect of a claim in a patent who meets the requirements to be considered a prior user;
(d) ensure that patent prosecution histories may be admissible into evidence for certain purposes;
(e) clarify when a late fee must be paid in respect of divisional applications as well as when the confidentiality period begins in the case where a request for priority is deemed never to have been made.
(f) bind subsequent owners of patents to commitments for standard essential patents (and CSPs).

The legislation amends the Trade-marks Act [s.214 and following] to, among other things

(a) add bad faith as a ground of opposition to the registration of a trade-mark and for the invalidation of a trade-mark registration;
(b) prevent the owner of a registered trade-mark from obtaining relief for acts done contrary to section 19, 20 or 22 of that Act during the first three years after the trade-mark is registered unless the trade-mark was in use in Canada during that period or special circumstances exist that excuse the absence of use;
(c) clarify that the prohibitions in subparagraph 9(1)‍(n)‍(iii) and section 11 of that Act do not apply with respect to a badge, crest, emblem or mark that was the subject of a public notice of adoption and use as an official mark if the entity that made the request for the public notice is not a public authority or no longer exists; and
(d) modernize the conduct of various proceedings before the Registrar of Trade-marks, including by providing the Registrar with additional powers in such proceedings.
(e) housekeeping amendments to the Trade-marks Act, the Economic Action Plan 2014 Act, No. 1 and the Combating Counterfeit Products Act.

Amend the Copyright Act [s.243 and following] to specify that certain information is not permitted to be included within a notice under the notice and notice regime and to provide for a regulation-making power to prohibit further types of information from being included within such a notice.

The legislation will also amend [s.265 and following] the Bankruptcy and Insolvency Act to provide that intellectual property users may preserve their usage rights when intellectual property rights are sold or disposed of in an insolvency proceeding or when the agreement relating to such property rights is disclaimed or resiliated in such a proceeding and amends the Companies’ Creditors Arrangement Act to provide that intellectual property users may preserve their usage rights when intellectual property rights are sold or disposed of.