Bill C-86, the Budget Implementation Act, 2018, No. 2, (the “Bill”) which makes a number of changes to the Trademarks Act, the Patent Act and the Copyright Act as well as introducing the College of Patent Agents and Trademark Agents Act became law in Canada after receiving Royal Assent on Dec. 13, 2018.
The Bill moved swiftly through Parliament and only received very minor amendments to the IP provisions that were set out in the original draft first introduced in Parliament on Oct. 29, 2018.
A brief summary of the major changes introduced by the Bill is set out below while a more comprehensive look at the changes can be found here in our earlier report on the Bill.
PATENT ACT AMENDMENTS
- Licensing of Standard Essential Patents
- Broadening experimental and prior use defences
- Introduction of file wrapper estoppel
- Written demand requirements
TRADE-MARK ACT AMENDMENTS
- Bad faith ground of opposition and invalidation introduced
- Use requirement to enforce a registered trademark
- Limits on Official Marks if the owner is not a public authority or no longer exists
- Updating administrative proceedings before the Registrar, including:
- cost orders
- confidentiality orders
- case management
- limits on evidence on appeal
COPYRIGHT ACT AMENDMENTS
- Copyright Board reform
- Prohibited content in notices sent under the “notice and notice regime”
COLLEGE OF PATENT AGENTS AND TRADEMARK AGENTS ACT
- Establishment of an administrative body responsible for the regulation of patent and trademark agents
By Michael O’Neill, Gowling WLG