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Proposed Changes to IP Law: Will they impact your business?

Many businesses rely on trade-mark, copyright, and patent law for the protection of their intellectual property (IP). The Federal Government recently proposed changes to IP laws, which may impact your business. Bill C-86, Budget Implementation Act, 2018, No. 2 includes changes to the Copyright ActTrade-marks Act, and other IP legislation, as summarized below.

What is changing?

Trade-marks Act

Changes to this Act include:

  • The introduction of bad faithas a ground of opposition to the registration of a trademark, or to invalidate a registered trademark within three years of registration. These changes seek to prevent the abusive use of the trademark regime by those who register trademarks for the purpose of extracting payment from the legitimate owner of the trademark (similar to “cyber-squatters”).
  • New rules to allow the Registrar to award costs against parties for abusive practices during trademark registration proceedings.
  • Changes to help prevent “official marks” (badges, crests, emblems or marks) owned by government entities that no longer exist from creating obstacles to trademark registration.

Further information on the changes can be found here.

Copyright Act

Changes to this Act include:

  • The reform of the Copyright Board to expedite its decision-making process. The Board’s budget will be increased, and its mandate to be “fair and equitable” will be formalized.
  • New rules to require the Board to act informally and expeditiously, and to fix royalties and levy rates that are fair and equitable, considering (1) what a willing buyer and willing seller would agree to in an open market, and (2) the public interest.
  • The establishment of a case management process to facilitate the timely resolution of matters before the Board.

Further information on the changes can be found here.

Patent Act

Changes to this Act include:

  • New rules to prevent parties from sending deceptive or unsubstantiated patent demand letters (commonly known as “cease and desist letters”). These letters will be subject to new standards, and parties who receive deceptive letters that do not meet the standards will be able to seek redress from Canada’s Federal Court.
  • Changes to clarify that it is not an infringement of patent rights to conduct research on the subject matter of a patent.
  • Changes to “prior use rights” regarding patents so that a business is not required to cease operations if a patent is filed that covers its existing operations.

Further information on the changes can be found here.

Other changes

Other changes to IP legislation include:

  • The establishment of a College of Patent and Trademark Agents to regulate the conduct of IP agents. Further information on the College can be found here.
  • Changes to privacy and access to information legislation to recognize IP agent-client privilege. This means that communications between IP agents and their clients will be subject to the same protections as communications between lawyers and their clients (commonly known as “solicitor-client privilege”) under that legislation.

When will these changes take effect?

The above changes are subject to Bill C-86 being passed in its current form. It is currently before the House of Commons, and it must be approved by both the House and Senate to become law. The Bill’s progress, and dates that specific provisions of the Bill come into force, can be tracked here.

Further discussion

Stewart McKelvey’s Intellectual Property Law Group has extensive experience assisting clients to develop, protect and enforce their IP rights. If you would like to discuss the above changes or how they may impact your business, please contact a team member here.

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