On 29 October 2018 the government introduced Bill C-86. The bill is omnibus legislation, over 850 pages in length, and addresses diverse subjects including income tax, money laundering and greenhouse gas emissions pricing. Numerous amendments and additions to Canadian IP legislation are proposed.

Patent Act

The bill amends the Patent Act, in order to, among other things:

  • provide a regulation-making authority for establishing requirements for "written demands relating to patents" (ie, demand letters or cease and desist letters);
  • specify an exemption from infringement for acts committed for the purpose of experimentation relating to the subjectmatter of a patent;
  • provide that licensing commitments that bind the owner of a standard-essential patent or the holder of a certificate of supplementary protection setting out such a patent bind subsequent owners and holders;
  • broaden the scope of prior user rights; and
  • make patent prosecution histories admissible into evidence in court proceedings for certain purposes.

Trademarks Act

The bill amends the Trademarks Act, in order to, among other things:

  • add bad faith as a ground of opposition to the registration of a trademark and for the invalidation of a trademark registration;
  • grant the registrar additional powers in certain proceedings, including allowing the registrar to grant confidentiality orders, award costs and provide case management deadlines;
  • prevent the owner of a registered trademark from obtaining relief in a proceeding alleging infringement or depreciation of goodwill during the first three years after registration unless the trademark was in use in Canada during that period or special circumstances exist that excuse the absence of use; and
  • clarify the prohibition against the use of official marks as it relates to the adoption and use of a badge, crest, emblem or mark by an entity that is not a public authority or has ceased to exist.

Copyright Act

The Copyright Act is amended 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. More particularly, a notice of claimed infringement may not contain an offer to settle, a request or demand for payment, a reference to any such request or demand or any other information as set out by regulation.

The act is also amended to modernise the legislative framework relating to the Copyright Board so as to improve the timeliness and clarity of its proceedings and decision-making processes.

College of Patent Agents and Trademark Agents

The bill enacts the College of Patent Agents and Trademark Agents Act, establishing for the first time a distinct regulatory body governing the practice of the patent and trademark agent professions in the public interest. The act will, among other things:

  • establish a College of Patent Agents and Trademark Agents;
  • establish two committees:
    • the investigations committee (receives and investigates complaints relating to licensees); and
    • the discipline committee (imposes disciplinary measures if a licensee commits professional misconduct or is incompetent);
  • establish rules and regulations for obtaining a patent agent licence, and a register of patent agents;
  • establish rules and regulations for obtaining a trademark agent licence, and a register of trademark agents;
  • require that licensees meet standards of professional conduct and competence;
  • provide for suspension or revocation of a licence under certain conditions; and
  • make it an offence to claim to be a patent agent or trademark agent if not licensed.

Preservation of usage rights

Amendments to the Bankruptcy and Insolvency Act and the Companies' Creditors Arrangement Act provide that IP users may preserve their usage rights when IP rights are, for example, sold or disposed of in an insolvency proceeding.

Privileged information

Amendments to the Access to Information Act and Privacy Act provide that the head of a government institution may refuse to disclose any information subject to patent or trademark agent/client privilege as provided for in the Patent Act and the Trademarks Act.

National Research Council Act

Amendments clarify that the National Research Council of Canada is a corporation empowered to acquire, hold, sell or otherwise dispose of property; that it may license, sell or otherwise grant or make available to others any IP right that it holds, develops, administers or controls; and that any invention made by a public servant, as defined in the Public Servants Inventions Act, or any patent issued with respect to the invention, is vested in the council.

Comment

The introduction and first reading of the bill in the House of Commons have been completed. Subsequent steps in the house will include second reading, committee stage, report stage and finally third reading. After passage of the bill by the house, a similar process will take place in the Senate, followed by royal assent and implementation of the bill. Historically, only very limited amendments are made to omnibus budget bills during their progress through Parliament.

The changes introduced by the bill are in addition to the many amendments to the Trademarks Act and Patent Act yet to be brought into force. These changes represent continuing efforts by the government to update and modernise Canada's IP legislation and ensure that it is compliant with Canada's international obligations.

For further information on this topic please contact David Schwartz or Emily Miller at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (deschwartz@smart-biggar.ca or ewmiller@smart-biggar.ca). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

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