Forward Regulatory Plan: 2021 to 2023 – Canadian Intellectual Property Office
- Amendments to the Trademark Regulations (Trademarks Act, s. 65)
- Amendments to the Patent Rules (Patent Act, s. 12)
- Amendments to Patent Rules and the Trademarks Regulations
Regulatory Initiative: Amendments to the Trademarks Regulations
Enabling act(s)
Description
The regulatory amendments in this proposal result from the changes to the Trademarks Act introduced bythe Budget Implementation Act, 2018, No. 2. In particular, the Registrar of Trademarks will have the legal authority to remove official marks that belong to entities that no longer exist or are not public authorities. Additionally, in respect to opposition, section 45 and geographical indication objection proceedings, the Registrar will be empowered to streamline proceedings using case management, grant confidentiality orders and award costs.
The proposed regulatory amendments will provide clarity by prescribing the maximum amount that can be awarded in costs for dilatory or bad faith applications, and provide for a fee to request the removal 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 reduce the administrative burden and the costs faced by trademark applicants, and to prevent misuses of the trademark system.
The most significant expected cost to the proposed changes is the cost that would be faced by users of the trademark system who wish to remove an official mark. Moreover, users of the trademark system in opposition, section 45 and geographical indication proceedings could be required to pay costs if they are found to have filed a dilatory or bad faith application.
The key stakeholders that could be impacted by the proposed amendments are Canadian trademark owners or those planning to apply for registration of a trademark in Canada, as well as trademark agents and lawyers 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 regulatory amendments to the Trademarks Regulations is anticipated to occur in late fall 2022.
Further information
The Government's recent Canadian 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 amendments to the Trademarks 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
This is the first time that the present version of the initiative is in a Forward Regulatory Plan.
Regulatory Initiative: Amendments to the Patent Rules
Enabling act(s)
Description
The proposed set of regulatory changes are in anticipation of the coming into force 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. There are three regulatory proposals:
- Excess Claims Fees
- Request for Continued Examination (RCE)
- Efficient Application Processing
The proposed regulatory changes will also 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)
The proposal is unrelated to a work plan or commitment under a formal regulatory cooperation forum.
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
Publication in Canada Gazette, Part I of the coordinating regulatory amendments to the Patent Rules is anticipated to occur in fall 2021.
The final amendments has been published in the Canada Gazette, Part II in winter 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 has required 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: ic.cipoconsultations-opicconsultations.ic@canada.ca
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.
Amendments to Patent Rules and the Trademarks Regulations
Enabling act(s)
Patent Act s. 12; Trademarks Act s. 65
Description
The Budget Implementation Act, 2018, No. 2, introduced the College of Patent Agents and Trademark Agents Act (the "Act") that became law in Canada after receiving Royal Assent on December 13, 2018. Following the coming into force of the relevant provisions of the Act, responsibility for regulating patent agents and trademark agents will transfer from CIPO to the College. In particular, the College will be responsible for administering a new agent-licensing regime and maintaining a Register of Patent Agents and a Register of Trademark Agents. The College will administer agent qualifying exams and collect associated fees such as examination fees and annual renewal fees.
The regulatory amendments in this proposal will implement the transfer of responsibility for the Governance of agents to the new College.
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 proposal is not anticipated to have any associated impacts for Canadians or businesses since the primary objective of the proposed Regulations is to operationalize the transfer of responsibility to the College as provided for in the College of Patent Agents and Trademark Agents Act.
Consultations
Publication in Canada Gazette, Part I of the coordinating regulatory amendments to the Patent Rules and the Trademarks Regulations occurred on March 13, 2021.
The final amendments is anticipated to be published in the Canada Gazette, Part II in spring 2021.
Further information
The College will provide professional oversight of IP agents in the public interest. Given the rising importance of IP in the innovation economy and the central role of patent and trademark agents, the College will be responsible for maintaining the high standards that are expected of trusted advisors.
- Frequently Asked Questions (Strategic Policy Sector)
- Canada's IP strategy
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
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:
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- 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:
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