- Amendments to the Trademark Regulations (Trademarks Act, s. 65)
- Amendments to the Patent Rules – Streamlining Patent Examination and Sequence Listing Standard
- Amendments to Tariff of Fees to Protect Intellectual Property (IP)
- Amendments to the Patent Rules – Patent Term Adjustment Framework
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:
- case-manage cases before the TMOB to streamline proceedings;
- grant confidentiality orders to protect personal and commercially sensitive information submitted as evidence before the TMOB;
- award costs against bad actors involved in proceedings before the TMOB;
- treat an opposition or objection proceeding as withdrawn; and
- 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-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.
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 the Patent Rules – Streamlining Patent Examination and Sequence Listing Standard
Enabling act(s)
Description
The proposed regulatory changes include changes to streamline patent examination in anticipation of the implementation of the Patent Term Adjustment (PTA) provisions of the Canada-United States-Mexico Agreement (CUSMA). These changes will incentivize applicant behaviour that will lead to benefits in the administration of the patent system such as improved service delivery, more efficient patent examination, reduced application complexity and increased application uniformity. Importantly, these changes will also better align the Canadian patent framework with international norms.
The proposed regulatory changes will also introduce the World Intellectual Property Organisation (WIPO) Sequence Listing Standard ST.26 to meet obligations in the Patent Cooperation Treaty (PCT) and will include non-controversial, housekeeping amendments following the repeal and replacement of the Patent Rules on October 30, 2019 that permitted Canada to accede to the Patent Law Treaty.
Regulatory cooperation efforts (domestic and international)
Regulatory cooperation efforts are being undertaken at the international level through the World Intellectual Property Organization, and the proposed amendments are required for Canada to remain in compliance with the Patent Cooperation Treaty (PCT). The PCT is an international law treaty that provides for filing patent applications internationally.
Potential impacts on Canadians, including businesses
Stakeholder groups or sectors that may be affected by increased costs include intellectual property agents; intellectual property associations; patent applicants; and Canadian businesses.
Consultations
The proposed amendments to the Patent Rules were published in Canada Gazette, Part I for a 30-day public consultation period on July 3, 2021.
The coming into force will be published with the publication of final amendments in the Canada Gazette, Part II in 2022.
Further information
The Government of Canada intends to make changes to Canada's IP system to ratify CUSMA. Article 20.44 of CUSMA requires that the CIPO provide PTA by adjusting the term of a patent to compensate for unreasonable delays in the issuance of the patent. The PTA obligation will require that any patent applications filed on or after December 1, 2020 be eligible to receive compensation for unreasonable delays caused by CIPO in the granting of the patent. Under CUSMA, Canada obtained a 4.5-year transition period for PTA implementation, during which the Government will conduct a thorough review of the commitment, and consult with a broad range of stakeholders.
CUSMA – Intellectual Property Chapter Summary
Canada is a member of the Patent Cooperation Treaty (PCT). At the 62nd session of the WIPO General Assembly held October 2021, amendments to the Regulations under the PCT introducing the new WIPO standard ST.26 for the presentation of sequence listings were adopted, effective July 1, 2022.
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 Review 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. A draft fee proposal will be published for stakeholder feedback prior to the proposal being finalized and implemented by 2023/2024.
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 amend the current definition of "small entity" in the Patent Rules to align with the definition in the Policy on Limiting Regulatory Burden on Business used by the Government of Canada.
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
CIPO has structured its fee schedules in a way that is responsive to stakeholder demands, while enabling long-term financial stability for CIPO and improved services overall. In general, the proposed amendments are expected to minimally impact all applicants applying for protection of intellectual property (patents, trademarks, copyright, industrial designs, integrated circuit topographies, geographical indications and official marks). CIPO's operations as a revolving fund are at risk without this increase in funds and, as such, CIPO's ability to support Canadian innovation by protecting intellectual property rights will be compromised without this increase. The protection of intellectual property is essential to a healthy and viable innovation economy.
The key stakeholders that could be impacted by the proposed amendments are small businesses and individual entrepreneurs who were most adversely impacted by the COVID-19 pandemic. Small and medium-sized enterprise (SME) applicants are predominantly Canadian, and consideration was given to minimize the impact of a fee review on SMEs by increasing the definition of a small entity from 50 employees to 99. Given CIPO's client base (70% foreign, 95% large sized companies), most of the impact would fall on large and foreign applicants.
Consultations
Consultations on the proposal are anticipated to occur in spring 2022. The regulatory process is planned to follow with publication of final regulatory changes in Canada Gazette II in winter 2023.
Further information
There is an urgent need to review and 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). Preliminary 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.caDate the regulatory initiative was first included in the Forward Regulatory Plan
This is the first time that the present version of the initiative is in a Forward Regulatory Plan.
Amendments to the Patent Rules – Patent Term Adjustment Framework
Enabling act
Patent Act, s.12
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. Under this obligation, Canadian patent applications filed on or after December 1, 2020 may be eligible for PTA, which would extend the term of patent protection beyond the maximum 20 years, if they have been subjected to unreasonable delay by the Canadian Intellectual Property Office (CIPO). Currently, the Canadian patent system does not provide for term adjustment for unreasonable delay in the granting of patents, and proposed amendments to the Patent Act, and coordinating regulatory amendments would create a PTA framework.
The proposed amendments would also introduce certain fees for the review by the Commissioner of a rejected patent application, which will lead to benefits in the administration of the patent system, such as improved service delivery and more efficient review by the Commissioner. Importantly, these changes will also better align the Canadian patent framework with those of other jurisdictions.
Potential impacts on Canadians, including businesses
Stakeholder groups or sectors that may be affected by the introduction of a patent term adjustment framework include patent applicants and patentees; Canadian businesses; intellectual property agents; and intellectual property associations.
Regulatory cooperation efforts (domestic and international)
This initiative delivers on a CUSMA commitment.
CIPO will consider the regimes of relevant international counterparts when developing the regulatory proposal.
Consultations
Publication in Canada Gazette, Part I of the coordinating regulatory amendments to the Patent Rules is planned for early 2024.
The final amendments 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 ratify CUSMA. Article 20.44 of CUSMA requires that the CIPO provide PTA by adjusting the term of a patent to compensate for unreasonable delays in the issuance of the patent. The PTA obligation will require that any patent applications filed on or after December 1, 2020 be eligible to receive compensation for unreasonable delays caused by CIPO in the granting of the patent. Under CUSMA, Canada obtained a 4.5-year transition period for PTA implementation, during which the Government will conduct a thorough review of the commitment, and consult with a broad range of stakeholders.
CUSMA – Intellectual Property Chapter Summary
[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
The date the regulatory initiative was first included in the Forward Regulatory Plan
This is the first time that the present version of the initiative is in a Forward Regulatory Plan.
Consult ISED's Acts and Regulations web page for:
- a list of acts and regulations administered by [department name]
- 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: