On October 23, 2014, the Canadian government introduced an omnibus budget bill.

The Bill, which implements various tax measures and amends several federal statues, proposes changes to Canada’s intellectual property laws to make them consistent with international treaties. Specifically, the Bill seeks to make Canada’s Patent Act consistent with the Patent Law Treaty and Canada’s Industrial Design Act consistent with the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

Patent amendments

The proposed amendments to Canada’s Patent Act include:

  • Reference to a previously filed application: An applicant may incorporate all or part of the specification or drawings by reference to an application that was filed within the previous six months (new section 27.01).
  • Addition to an application: An applicant may amend its application by adding material to the specification or drawings up until six months after the application was originally filed. The addition will not affect the filing date of the application, so long as the material was contained in a priority application (new section 28.01).
  • Restoration of priority: If an applicant unintentionally fails to file a request for priority within the usual twelve-month period, the applicant will have an additional two months to request that priority apply (new section 28.4(6)).
  • Notice before abandonment: If an applicant fails to pay certain fees – such as the patent application fee, patent maintenance fees and the fee for requesting examination – the Commissioner of Patents must send a non-payment notice to the applicant before the application is deemed abandoned. The applicant has two months to respond to the notice by submitting payment of the specified fee and a late fee (amended section 73(1)).
  • Reinstatement: An applicant may still request that an application be reinstated following deemed abandonment.  However, the Commissioner must be satisfied that applicant took “due care” to avoid the abandonment (amended section 73(3)).

Canada is not the first country to incorporate the Patent Law Treaty into its patent law. In the United States, thePatent Law Treaties Implementation Act of 2012 (the PLTIA) came into effect last year to amend United States patent law. Similar to the Canadian Bill, the PLTIA also includes a restoration of priority right.

Industrial design amendments

The proposed amendments to the Industrial Design Act include:

  • Changes to the application contents for the registration of a design: Under the current Industrial Design Act, the proprietor of a design has to submit a “drawing or photograph of the design” in the registration application. The proposed amendments only require that the proprietor of a design submit a “representation of the design” (amended section 4(1)). Would this include a video?
  • Changes to what constitutes a registrable design: Under section 6(1) of the current Industrial Design Act, a design is registrable so long as “it is not identical with or does not so closely resemble any other design already registered as to be cofounded therewith”. Under the proposed amendments, a design is registrable if it is “novel”, similar to the requirements of the Patent Act (new sections 7(b) and 8.2). A design is “novel” if it has not been disclosed more than 12 months before the priority date of the design in the application. This is similar to the Patent Act (new section 8.2(1)(a)).
  • An extended term of an exclusive design right: Under section 10(1) of the current Industrial Design Act, the term for the exclusive right afforded by an industrial design is 10 years beginning on the registration date. The proposed amendments extend this term to the “later of the end of 10 years after the date of registration of the design and the end of 15 years after the filing date of the application” (amended section 10(1)(b)).

As the Bill is still in the early stages of the legislative process, the full thrust of the proposed changes to Canada’s intellectual property regime remain to be seen. Moreover, once the amended statutes come into force, the government will be required to prepare and adopt new Patent Rules and Industrial Design Rulesthat may also affect the ultimate outcome of the proposed changes.

A link to the progression of the Bill is here.

Chelsea Nimmo