2023-2025 Forward Regulatory Plan – Canadian Intellectual Property Office


Amendments to the Trademarks Regulations

Enabling act

Trademarks Act, sections 65 and 65.3

Description

The regulatory amendments in this proposal result from amendments to the Trademarks Act introduced under Bill C-86, the Budget Implementation Act, 2018, No. 2. In particular, Bill C-86 amended the Trademarks Act by giving five new authorities to the Registrar of Trademarks (the Registrar) to be exercised in the context of proceedings before the Trademarks Opposition Board (TMOB) and in relation to official marks. With these authorities, the Registrar will be empowered to:

  1. case-manage cases before the TMOB to streamline proceedings;
  2. grant confidentiality orders to protect personal and commercially sensitive information submitted as evidence before the TMOB;
  3. award costs against bad actors involved in proceedings before the TMOB;
  4. treat an opposition or objection proceeding as withdrawn; and
  5. on his or her own initiative or upon receipt of a request of a person who pays the prescribed fee, give public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to a particular official mark if the relevant entity that made the request for the public notice is not a public authority or no longer exists.

The proposed regulatory amendments will also provide for a prescribed fee to request the withdrawal of the public notice of an official mark.

Regulatory cooperation efforts (domestic and international)

The proposal is unrelated to a work plan or commitment under a formal regulatory cooperation forum.

Potential impacts on Canadians, including businesses

In general, the proposed amendments are expected to prevent or mitigate bad faith and abusive practices relating to the enforcement of intellectual property rights, and improve the efficiency of proceedings before the TMOB.

Costs for users of the trademark system are to be expected in connection with the Registrar's new authorities to award costs and to withdraw public notices for official marks. The Registrar will award costs, akin to an administrative fine, to individuals or businesses involved in proceedings before the TMOB who behave unreasonably, and a prescribed fee will be required to request the withdrawal of the public notice of an official mark.

The key stakeholders that could be impacted by the proposed amendments are Canadian trademark owners (individuals or businesses) or those planning to apply for the registration of a trademark in Canada, official mark holders, as well as trademark agents who practice in the area of trademark law. In addition, any member of the public with an interest in the registration of trademarks may be interested in these changes.

Consultations

Publication in Canada Gazette, Part I of the coordinating amendments to the Trademarks Regulations is anticipated to occur in mid to late 2023.

Further information

The Government of Canada's Intellectual Property (IP) Strategy aims to ensure innovators have easier access to an IP regime that can help them grow. A section of this strategy includes updating Canada's IP legislation to reduce barriers for businesses, clarify acceptable practices and prevent the misuse of IP rights. Making the corresponding amendments to the Trademarks Regulations is consistent with the goals of the IP Strategy.

Canada's IP strategy

Departmental contact information

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: cipoconsultations-opicconsultations@ised-isde.gc.ca

Date the regulatory initiative was first included in the Forward Regulatory Plan

April 2021


Amendments to Tariff of Fees to Protect Intellectual Property(IP)

Enabling act(s)

Patent Act; Trademarks Act; Copyright Act, Tariff of Fees Industrial Design Act; Integrated Circuit Topography Act

Description

CIPO's fees associated with the protection of Intellectual Property (patents, trademarks, copyright, industrial designs, integrated circuit topographies, geographical indications and official marks) were last subject to a comprehensive review in 2004 and have not kept pace with the rate of inflation. The proposed Fee Adjustment will generate a fee proposal that accounts for inflationary changes over the last 18 years and will implement adjusted fees building on deliverables from the Service Fees Act.  This review will also ensure CIPO's long term financial viability, ability to continue to deliver quality and timely IP rights, and international comparability.

The proposed regulatory amendments will increase tariff fees listed in:

  • Patent Rules, Schedule 2 and Schedule 3;
  • Copyright Regulations Schedule;
  • Industrial Design Regulations Schedule;
  • Trademarks Regulations Schedule; and
  • Integrated Circuit Topography Regulations Schedule.

As part of this review, CIPO is proposing to maintain the current patent fees for small entities and expand the current definition of "small entity" under the patent IP business line from 50 employees or less to fewer than 100 employees. The adjusted fees will be rounded to the nearest whole dollar amount, and CIPO will explore options to maintain whole dollar amounts for future annual adjustments mandated by the Service Fees Act.

Several other amendments of a technical nature are proposed to the Patent Rules to clarify the application of the regulations introduced on October 3, 2022 to patent applications for which the filing date is on or after October 1, 1996 but before October 30, 2019.

Regulatory cooperation efforts (domestic and international)

The proposal is unrelated to a work plan or commitment under a formal regulatory cooperation forum.

Potential impacts on Canadians, including businesses

The proposed amendments are intended to bring long-term financial stability to Canadian Intellectual Property Office (CIPO) while limiting the impact on small businesses, and making critical investments in IT infrastructure and workplaces to bring them to present standards. The amendments would result in identifiable costs and benefits to Canadians, CIPO, and CIPO's clients. The vast majority of CIPO's clients are medium or large foreign enterprises. Canadians will benefit from an efficient and effective IP ecosystem. Canadians purchasing IP goods may see higher prices as a result of the fee increase.

The proposed amendments would increase most fees by 25% with the exception for small entity patent fees, some low materiality fees, and some fees included in the Rules Amending the Patent Rules. The amendments would also expand the definition of "small entity" in the Patent Rules from 50 or less than 100 employees.

Canadian and foreign clients of CIPO would be impacted by the proposed amendments. Domestic filings represent 11.7% of patent applications, 43.1% of trademark applications, 12.7% for industrial designs and 90.7% for copyrights. A distributional analysis shows the majority of the costs would be incurred in Ontario, Quebec, British Columbia and Alberta.

Consultations

A draft fee proposal was published for stakeholder feedback in March 2022 prior to the proposal being published in Canada Gazette – Part I.

The proposed amendments to the IP regulations were published in Canada Gazette, Part I for a 30-day public consultation period on December 31, 2022. The publication of final regulatory changes in Canada Gazette – Part II is anticipated in early summer 2023, with the adjusted fee amounts coming into force on January 1, 2024.

Further information

There is an urgent need to increase fees to ensure the long term financial health of CIPO past 2024, as it operates as a revolving fund (i.e., expenditures are funded fully by the revenue CIPO generates from fees). Analysis indicates that increasing fees will ensure financial health while ensuring Canada's fee regime is internationally comparable.

Departmental contact information

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: cipofeereview-revisiondesfraisopic@ised-isde.gc.ca

Date the regulatory initiative was first included in the Forward Regulatory Plan

April 2022


Patent Term Adjustment Framework and Amendments to the Patent Rules

Enabling act

Patent  Act

Description

Amendments are required in order to bring Canada into compliance with the Patent Term Adjustment (PTA) obligation under Article 20.44 of the Canada-United-States-Mexico Agreement (CUSMA). Under this obligation, patent applications filed after the date of entry into force of the agreement or two years after the signing of the agreement, whichever is later, would be eligible for PTA if there are "unreasonable" delays in the granting of the patent. Currently, the Canadian patent system does not provide for patent term adjustment for unreasonable delay in the granting of patents; amendments to the Patent Act, and coordinating regulatory amendments would substantively implement the PTA obligation under CUSMA by the implementation deadline of January 1, 2025.

The proposed amendments would also include various modifications to the Patent Rules and minor housekeeping amendments unrelated to the PTA framework.

Potential impacts on Canadians, including businesses

Stakeholder groups or sectors that may be affected by the introduction of a patent term adjustment framework include the general public; patent applicants and patentees; Canadian businesses; and intellectual property agents.

Regulatory cooperation efforts (domestic and international)

This initiative delivers on a CUSMA commitment.

ISED will consider the regimes of relevant international counterparts when developing the regulatory proposal.

Consultations

Pre-consultation with stakeholders, prior to Canada Gazette, Part I, will inform the development of the regulatory proposal.

Publication in Canada Gazette, Part I of the coordinating regulatory amendments is planned for early 2024.

The final amendments to the regulatory proposal are anticipated to be published in the Canada Gazette, Part II in the fall of 2024.

Further information

The Government of Canada intends to make changes to Canada's IP system to meet its obligation under CUSMA. Article 20.44 of CUSMA requires that Canada make best efforts to process patent applications in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays in their issuance, and that if there are unreasonable delays Canada must provide the means to adjust the patent term to compensate for those delays.

CUSMA – Intellectual Property Chapter Summary

Departmental contact information

Canadian Intellectual Property Office

Virginie Ethier
Director General
Patent Branch
Virginie.Ethier@ised-isde.gc.ca

Marketplace Framework Policy Branch

Erin Campbell
Director
Patent Policy Directorate
Erin.Campbell2@canada.ca

The date the regulatory initiative was first included in the Forward Regulatory Plan

This item was first included in the 2022-2024 Forward Regulatory Plan.


Consult ISED's Acts and Regulations web page for:

  • a list of acts and regulations administered by ISED
  • further information on ISED's implementation of government-wide regulatory management initiatives

Consult the following for links to the Cabinet Directive on Regulation and supporting policies and guidance, and for information on government-wide regulatory initiatives implemented by departments and agencies across the Government of Canada:

To learn about upcoming or ongoing consultations on proposed federal regulations, visit: