Technology, Intellectual Property and Communications

Proposed Amendments to Bill C-86 Overview

  • Erin Schachter
By Erin Schachter Lawyer
On the 29th; of October 2018, the Government of Canada introduced Bill C-86, a second Act to implement certain provisions of the budget tabled in Parliament on February 27, 2018, and other measures.

This voluminous bill contains a division devoted to intellectual property strategy. Below is a brief overview of the proposed changes contained in each of the subdivisions of the IP section of Bill C-86.

Subdivision A – The Patent Act

  • Standard-essential patents (SEP)- The Governor in Council would be granted powers to establish a definition and regulate licensing requirements for SEP’s. SEP’s are patents that protect an invention that is essential for certain technologies (ex: Wi-Fi or Bluetooth). Under Bill C-86, any licensing commitments made by the patentee in reference to a SEP will bind any subsequent patentee.
  • Prior User Rights - Prior use rights contained in the Patent Act would be broadened to include acts, in good faith, that would otherwise constitute an infringement, if the use was before the earliest filing and the third party did not commit the act only because they obtained information about the restriction from the patent applicant. Third parties, who commit this same act on or after the claim date, would benefit from an exemption.
  • Experimentation – An exemption from infringement would be introduced if the alleged act was committed for experimentation.
  • Written Demands- Written demand letters concerning patent infringement sent to alleged infringers in Canada would be subject to minimum requirements, which will be determined by the Governor in Council.
  • Patent Prosecution History - Prior statements made by a patent applicant, including patent prosecution history, would be admitted into evidence during the prosecution of a patent application.

Subdivision B- Trade-marks

  • Bad Faith Opposition and Use - A “Bad Faith” opposition would be introduced to oppose or invalidate a registration of a trade-mark. This modification would address concerns domestically and abroad in relation to “trade-mark trolls”. Also, in the first three years following the registration of a trade-mark, its owner, must prove that they use the trade-mark or justify the absence of use to obtain any relief for infringement.
  • Public authority prohibition – The Bill would eliminate the prohibition that prevented a person from using a mark that is identical or similar to that of a public authority, if the public authority has ceased to exist, or is not a public authority.
  • Evidence during an appeal - If a registrant appeals the decision of the registrar, Bill C-86 provides that new evidence to support the application for a trade-mark can only be filed with permission from the Federal Court.
  • Enable Registrar to grant orders - The proposed amendment imbues the registrar with the authority to award costs, to grant confidentiality orders, case management in certain proceedings.

Subdivision C- Copyright Act 

Bill C-86 proposes a modification to the Copyright Act that addresses concerns from the public in relation to aggressive demand letters sent through the notice and notice system.The Bill proposes prohibiting the inclusion of settlement offers, payment demands, or requests for personal information in the demand letter, or hyperlinks alleging infringement. Moreover, ISP’s duties under the Copyright Act would only be engaged for an infringement notice that respects these restrictions.

Subdivision D- College of Patent Agents and Trade-mark Agents Act 

A regulatory body would be formed to create standards for patent and trade-mark agents.

Subdivision E - Amendments relating to the preservation of usage rights

The proposed amendments to the Bankruptcy and Insolvency Act and the Companies’ Creditors Arrangement Act would protect IP users when these rights are sold in the context of insolvency proceedings. 

Subdivision F -Privileged Information 

The Access to Information Act and Privacy Act would be amended by permitting the head of a government institution to refuse to disclose information provided the information is subject to privilege under the Trade-marks Act or in the Patent Act.

Subdivision G - National Research Council Act 

The National Research Council Act would be amended to clarify that this entity has the authority to dispose of all the intellection property rights that it holds. This section clarifies that any invention made by a public servant and patents that may follow are vested in the Council.

Subdivision H - Copyright Act (Copyright Board Reform) 

 The framework governing the Copyright Board would be amended to improve timeliness and clarity. It would also imbue the Board with powers to fix fair royalty and levy rights.

Conclusion

Bill C-86 contains numerous proposed amendments dealing with rights and the overall structure of IP in Canada. Many of the amendments align Canadian IP more closely with its international obligations and seek to clarify and modernize elements of Canadian IP legislation. As Bill C-86 makes its way through the twist and turns of becoming law, we will continue to write on the proposed modifications and their possible impact.   

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