On July 30, 2019, Canada acceded to the Patent Law Treaty. This accession marks the near completion of a long and ambitious journey by Canada to modernize its patent, trademark and industrial design laws and to harmonize Canada’s intellectual
property laws with its most important trading partners around the world.
This journey began on January 28, 2014 when the Government of Canada simultaneously tabled five different international treaties administered by the World Intellectual Property Organization (“WIPO”). These treaties are:
- The Hague Agreement which makes it possible for industrial design owners to obtain protection for industrial designs in a number of member countries by filing a single international application directly with the International Bureau.
- The Madrid Protocol which makes it possible for trademark owners to protect their marks in multiple countries, in part by enabling applicants to file a single international application and designate those member countries in which the applicants seek protection for their marks.
- The Singapore Treaty which harmonizes several formal procedures in respect of trademark applications and registrations.
- The Nice Agreement which provides a comprehensive classification system for goods and services for use in registering trademarks, simplifying the application process among member countries.
- The Patent Law Treaty which harmonizes several formal procedures in respect of national and regional patent applications and patents, aiming to make such procedures more user-friendly.
Over the last five years, the Government of Canada has drafted, publically consulted on and implemented the legislation and regulations required to allow Canada to accede to each of these international treaties. As a summary:
- On July 16, 2018, Canada acceded to the Hague Agreement. Amendments to the Canadian Industrial Design Act and the Industrial Design Rules that allowed Canada to implement this agreement came into force on November 5, 2018. For a summary of some important resulting changes to Canadian industrial design practice, please refer to our previous IP Update from November 5, 2018.
- On March 17, 2019, Canada acceded to the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Amendments to the Canadian Trademarks Act and the Trademarks Rules that allowed Canada to implement these trademark treaties came into force on June 17, 2019. For a summary of some important resulting changes to Canadian trademark practice, please refer to our recent IP Update from June 4, 2019.
- As noted above, on July 30, 2019, Canada acceded to the Patent Law Treaty. Amendments to the Canadian Patent Act and the Patent Rules which will allow Canada to implement this treaty are set to come into force on October 30, 2019. Our IP Update from July 10, 2019 provides a detailed summary of the upcoming changes to Canadian patent practice resulting from these amendments, along with recommendations for best practice.
As a result of the recent and upcoming changes to Canadian patent, trademark and industrial design law, Canadian and international businesses and rights owners alike can expect a more consistent and level playing field for securing intellectual property rights.
For more information regarding how Canada’s modernized regime can be leveraged to enhance Canadian prosecution and litigations strategies, please contact any member of our Patents Group Industrial Designs Group or Trademarks & Brand Protection Group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.