An extract from The Intellectual Property Review, 9th Edition

Recent developments

i Legislation and treaties

In the past year, Canada has been active on the treaty front and seen several policy and legislative changes.

On 10 December 2019, Canada signed an amended version of the Canada–United States–Mexico Agreement (CUSMA). While largely similar to the original agreement signed on 30 November 2018, there are some notable changes. For example, the amended version of CUSMA removed a provision from the earlier agreement that would have required Canada to extend the term for data protection for biologics from eight to 10 years.

On 29 January 2020, the government introduced legislation (Bill C-4) to implement CUSMA which would make a number of changes to Canada's IP statutes once fully in force. For example, Bill C-4 would extend the period of copyright for anonymous and pseudonymous works, and cinematographic works of a dramatic character. While CUSMA also requires extending the general term of copyright from 50 to 70 years from the life of the author, Bill C-4 is silent on this particular change. Canada has up to two and a half years from the date CUSMA comes into force to extend the copyright term. This change is expected by autumn 2022.

On trademarks, long-anticipated amendments to the Trademarks Act came into force on 17 June 2019. Many of the changes were intended to implement the Singapore Treaty, Nice Agreement and Madrid Protocol. Notable other amendments include the elimination of the requirement to cite a filing basis in an application to register a trademark, elimination of the need to provide a declaration of use prior to registration, and inclusion of non-traditional signs as trademarks such as colours, holograms, animated images and scents.

Finally, on patents, the new Patent Rules were introduced on 30 October 2019. Notable changes include:

  1. a reduction of direct filing requirements;
  2. the removal of the late national phase entry option as a matter of right;
  3. a possibility for restoration of priority;
  4. shorter deadlines for examination requests, Office Action responses and payment of final fee;
  5. new provisions on reinstatement and reversal of deemed expiry; and
  6. a provision for third-party rights during uncertain abandonment periods.
ii Supreme Court jurisprudence

The Supreme Court rendered only one IP decision in 2019, in Keatley Surveying Ltd v. Teranet Inc. The issue in that case was whether Teranet, a private company which operates the province of Ontario's public land-registry system, infringed surveyor copyright by making land-registry surveys available to the public without surveyor consent. The Court dismissed Keatley's appeal and concluded that copyright for surveys deposited with Teranet vests in the government because the government, through a 'web of legislation', controls the preparation and publication of the plans of surveys.

On 19 December 2019, the Supreme Court of Canada released its long-awaited decision, Canada (Minister of Citizenship and Immigration) v. Vavilov. While not an IP decision, this decision revisited the applicable standard of review on judicial reviews of administrative decision-makers. This has potential consequences, for example, in the manner in which the Court handles appeals from oppositions and cancellation proceedings under the Trademarks Act. The changes to the standard of review and its impact on IP cases will become more apparent in 2020.

Trends and outlook

i Legislative amendments

The year 2019 was a busy one on the legislative and treaty front. While the government is still focused on ratification of the CUSMA and making any consequential amendments, practitioners are coming to terms with a significant number of amendments that have recently come, or will soon be coming, into force. These changes, across nearly all of Canada's major IP statutes, will have significant effects on rights holders and the strategies they deploy in Canada.

ii Jurisprudence

At the end of 2018, the Patent Act was amended to make file wrapper evidence admissible to rebut representations made by a patentee as to claims construction. In 2019, one case was heard and decided on this new provision, finding that foreign prosecution history is also admissible in certain circumstances. This case is currently under appeal at the Federal Court of Appeal. More cases citing this provision may be tried in 2020, which will give the courts the opportunity to clarify the scope of admissibility of file wrapper history in Canadian patent practice.

By the end of 2019, no action had proceeded to trial under the amended PM(NOC) Regulations, which were implemented in September 2017. A number of such cases are scheduled to be heard early in 2020.

The recent amendments to the Trademarks Act that came into force in June 2019 have been the subject of considerable debate and discussion among practitioners. The Court will have further opportunities to consider these issues as cases that engage these new provisions make their way through the litigation process.