Canada's New Intellectual Property Strategy Announced

| Michele Clarizio

In conjunction with World Intellectual Property Day on April 26, Canada's Minister of Innovation, Science and Economic Development launched a new Intellectual Property (IP) Strategy, which will be implemented in the coming years.1

What You Need To Know

  • The Government of Canada plans to invest $85.3 million in the IP Strategy over the next five years.
  • Among other things such as increasing education and providing tools to Canadian businesses, the IP Strategy will amend Canadian IP legislation to clarify acceptable IP practices.
  • The proposed changes are intended to encourage innovation and discovery within Canada and to ensure that innovators are rewarded for their inventions and creations.

Proposed Legislative Changes

Minimum Requirements for Patent Demand Letters

The Government of Canada will introduce minimum requirements for patent demand letters, which will require senders to include certain basic information, such as the asserted patent number and the impugned products or activities. The purpose of this change is to ensure there is a balance between using demand letters as a low-cost method of asserting patent rights, and discouraging the sending of vague or deceptive letters.

Continuing the Requirement of Use in Trademarks

Amendments will require that a trademark be "used" within the first three years after registration in order to be enforceable. In addition, the Government is planning to introduce new bad faith grounds for trademark opposition and invalidation proceedings. These proposed changes are aimed to counteract some of the perceived negative effects of imminent changes to the Trademarks Act (with expected implementation in February, 2019),2 which, among other things, will eliminate the requirement that a trademark be used prior to registration. These changes in the IP Strategy are intended to combat issues such as trademark squatting and trademark register clutter.

Settlement Demands Excluded from Copyright "Notice and Notice" Regime

Canada's Notice and Notice regime is a tool that helps copyright owners discourage online copyright infringement, such as illegal downloading. This regime allows copyright owners to send a notice of alleged infringement to an internet user that might be infringing their copyright, using an internet service provider as an intermediary. However, some copyright owners have been leveraging the regime to send threatening demands to internet users to make settlement payments. The Government of Canada will clarify that notices including such settlement demands do not comply with the Notice and Notice regime.

Patent Research Exemption

Legislative amendments will be introduced to confirm there is no patent infringement when experiments are conducted that pertain to the subject matter of a patent. However, any resulting inventions that are sold or used for commercial benefit in Canada will still need to conform with existing laws relating to patent infringement.

Standard Essential Patents

New amendments are planned to encourage prospective licensees to comply with technical standards that use patented inventions. The amendments will clarify that when a patent owner voluntarily licenses its patented technology to a standard-setting organization as part of a technical standard, licensees will be able to continue using the licensed patent even if the patent owner changes.

IP Licences in Bankruptcy Proceedings

Amendments to the legislation will allow IP licensees to continue to use licensed IP even if the debtor disclaims the licence in the context of a liquidation proceeding, to confirm/extend a right that already exists for restructuring proceedings, but which had until now left as uncertain a licensee's rights in a liquidation proceeding.

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1 See https://www.canada.ca/en/innovation-science-economic-development/news/2018/04/government-of-canada-launches-intellectual-property-strategy.html.

2 See https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03964.html.

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