On 7 May, 2015, the Government of Canada introduced legislation to amend the Patent Act, Trade-marks Act, and Industrial Design Act. The legislation, Bill C-59, implements a Federal Budget (previously discussed here) which proposed to modernise Canada’s intellectual property framework to help innovators better protect their IP. The proposed amendments relate most notably to statutory privilege for agents, correction of errors before the Canadian Intellectual Property Office (CIPO), and extensions in case of force majeure events.

  • Statutory privilege – The proposed amendments protect confidential communications between patent or trade mark agents and their clients in the same way as communications that are subject to solicitor-client privilege. The communication must be made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a patent or trade mark. Granting statutory privilege to not only Canadian agents, but also foreign agents, prevents forced disclosure of communications with IP owners, thus fostering open communication of facts and strategy.
  • Error correction – The proposed amendments provide the authority to make regulations respecting the correction of obvious errors in patent or industrial design documents.  They would repeal the current provisions respecting correction of clerical errors, whose clerical nature has been challenging to establish where the source of the error is difficult to identify, or where the error relates to drawings instead of wording. Shifting the type of error that can be corrected from “clerical” to “obvious” is expected to reduce the amount of fact finding necessary, simplifying the process of correction.
  • Force majeure – The proposed amendments provide for extensions of time limits in unforeseen circumstances. They align Canada with a number of other jurisdictions.  Allowing the CIPO to extend deadlines in the case of unforeseen circumstances helps rights holders avoid unintentional loss of IP rights in case of events such as floods or ice storms.

While the amendments could be passed into law quickly, they would take longer to come into force. The amendment relating to statutory privilege for agents would come into force 12 months after the day on which Bill C-59 receives royal assent.

The amendments relating to force majeure would come into force on a day fixed by order of the Governor in Council. Similarly, amendments relating to error correction would come into for on a day fixed by order of the Governor in Council, but not before amendments in another bill come into force (which is expected after late 2016). The proposed amendments are expected to benefit rights holders by supporting the provision of advice, simplifying the correction of errors, and providing relief in unforeseen circumstances.