Forward Regulatory Plan: 2019 to 2021 – Canadian Intellectual Property Office
Regulatory Initiative: Amendments to the Trade-marks Regulations
Enabling act(s)
Description
On November 14, 2018, the Trademarks Regulations were amended in anticipation of amendments to the Trade-marks Act coming into force on June 17, 2019. These changes were made to enable Canada to join the Singapore Treaty on the Law of Trademarks, the Madrid Protocol, and the Nice Agreement. Amendments to the Regulations were also made to eliminate potential misuse of the divisional application process that could have allowed applicants to circumvent opposition. However, stakeholders noted difficulties in navigating the complexity of this regime and requested simplified provisions.
On December 13, 2018, further amendments to the Trade-marks Act respecting divisional applications and technical drafting changes received Royal Assent as part of the Budget Implementation Act, 2018, No. 2. The amendments address stakeholder concerns regarding previous regulatory provisions by eliminating the potential misuse of the divisional application process to circumvent opposition and allowing for simplified divisional provisions in the Trademarks Regulations. The amendments to the Act are expected to come into force on June 17, 2019, and as such, coordinating regulatory amendments are required to the Regulations which will remove the complex regulatory provisions of November 14, 2018.
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
Due to the minor nature of the amendments, no significant impacts on Canadians or Canadian businesses are expected.
Consultations
Consultation on the divisional provisions in the Trademarks Regulations took place from June 19 to July 21, 2017, during an online public consultation. As part of this process, a plain language document was made available describing the proposed changes and their intent. In addition, as part of the prepublication process through the Canada Gazette, Part I, amendments to the Trademarks Regulations, including those related to divisionals, were published for a 30-day public comment period that was held from February 10 to March 11, 2018. In both instances, stakeholders found the sections of the then-proposed Trademarks Regulations related to divisional applications to be overly complex and costly.
The coordinating amendments to the Trade-marks Act respecting divisional applications contained in the Budget Implementation Act, 2018, No. 2 reflect stakeholders feedback received during the 2017 and 2018 consultations on a better and more efficient way of processing divisional applications.
Publication in Canada Gazette, Part II of the coordinating regulatory amendments to the Trademarks Regulations is anticipated to occur in late Spring 2019.
Further information
The Government recently launched a Canadian IP strategy with the goal of ensuring 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 amendments to the Trade-mark Act and the corresponding amendments to the Trademarks Regulations are consistent with the goals of the IP Strategy, since it will result in a better and more efficient way of processing divisional applications.
Departmental contact information
Canadian Intellectual Property Office
If you wish to contact the department please use the following address: ic.cipoconsultations-opicconsultations.ic@canada.ca
Date the regulatory initiative was first included in the Forward Regulatory Plan
April 2019
Regulatory Initiative: Amendments to the Patent Rules
Enabling act(s)
Description
The proposed amendments are to the Patent Rules, under the authority of the Patent Act.
The Patent Act and associated rules relate to the protection of new inventions or any new and useful improvement of an existing invention.
The proposed amendments are required in order to bring Canada into compliance with the Patent Law Treaty (PLT). Canada cannot ratify this treaty if its laws and regulations do not comply with it.
The PLT is an international law treaty that establishes common requirements regarding many of the procedural formalities relating to national patent applications and patents.
The proposed amendments seek to reduce red tape by eliminating overly restrictive procedural requirements and unnecessary fees; to introduce safeguard mechanisms through new procedures for communicating with non-appointed agents and for rectifying an error introduced in the naming of an applicant; to streamline the Patent Rules by repealing spent provisions; to increase certainty by reducing the time limit to request examination from five to four years, as well as modernize the Canadian patent system. By aligning Canada's laws and regulations with those of its major trading partners, the changes will make the Canadian marketplace more appealing to foreign entrants.
The proposed Amendments align with the Government's Innovation and Skills Plan and Intellectual Property Strategy, and help ensure that Canada's IP regime is modern, robust, and supports Canadian innovation in the 21st century.
The coming into force date will be published with publication in the Canada Gazette, Part II.
Regulatory cooperation efforts (domestic and international)
Regulatory cooperation efforts are being undertaken at the international level through the World Intellectual Property Organization, as the proposed amendments are required for Canada to ratify to the Patent Law Treaty (PLT). The PLT is an international law treaty that establishes common requirements regarding many of the procedural formalities relating to national patent applications and patents.
Potential impacts on Canadians, including businesses
These Rules are considered an "OUT" under the "One-for-One" Rule and are expected to reduce overall administrative costs by standardizing procedures and reducing red tape.
The small business lens does not apply, as the new Rules do not impose any significant costs on small businesses.
Stakeholder groups or sectors that may be affected include intellectual property agents; intellectual property associations; patent applicants; and Canadian businesses.
Consultations
CIPO held public consultations in mid-2017 on this topic and solicited feedback through our website and in-person events
The proposed amendments were pre-published in the Canada Gazette, Part I, for a 30-day public comment period on December 1, 2018.
The final amendments will be published in the Canada Gazette, Part II in mid-2019. There are no further opportunities for public consultation or comment.
Further information
The Government recently launched a Canadian IP strategy with the goal of ensuring 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 amendments to the Trade-mark Act and the corresponding amendments to the Trademarks Regulations are consistent with the goals of the IP Strategy, since it will result in a better and more efficient way of processing divisional applications.
Departmental contact information
Canadian Intellectual Property Office
If you wish to contact the department please use the following address: ic.cipoconsultations-opicconsultations.ic@canada.ca
Date the regulatory initiative was first included in the Forward Regulatory Plan
April 2018
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