How does CETA affect IP rights in Canada?

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By Randy Marusyk and Lauren Blaiwais, January 10th, 2017

Canada and the European Union (EU) officially signed the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016. The following day, Parliament introduced the first reading of Bill C-30, An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures. CETA’s principal goal is to reduce the barriers of Canada-EU trade; it addresses tariffs, product standards, professional certification, government procurement and investments.

In order to implement CETA, Canada is required to make changes to several federal acts, including the Patent Act and Trade-marks Act.

Trademarks

Bill C-30 modifies the definition of geographical indications (GIs) in the Trade-marks Act. It enables GI protection for not only wine and spirits, but also agricultural and food products, such as certain cheeses, oils and meats (e.g. feta). The Registrar will be responsible for supervising a list of protected GIs, and will restrict use of certain European GIs to products originating from the European regions that the GIs are typically associated with. Consequently, Bill C-30 allows for a GI opposition procedure for those interested in objecting to the protection of particular geographical indications. Any person interested may file a statement of objection within two months after the Minister makes a statement in respect of a GI published on the CIPO website and the Registrar enters same on the list.

Furthermore, there will be import/export restrictions for geographical indications: wines, spirits agricultural and food products will be banned if they bear the GI and either 1) do not originate in the territory indicated, or 2) do not conform to the laws of the territory indicated. Bill C-30 offers owners of protected GIs the option to file a Request for Assistance with the Canadian Border Services Agency to help prevent the import of counterfeit goods through the Intellectual Property Rights Program.

Patents

CETA will affect the term of pharmaceutical patent protection, as well as patent procedural rights. Pharmaceutical companies often face delays with patents in getting regulatory approval, which lead to lost patent protection due to the protracted development and approval process. The Patent Act does not currently moderate the lost patent protection due to delays; however Bill C-30 will offer a certificate of supplementary protection. This certificate provides patent term restoration for a maximum of two years.

In addition, CETA will provide an innovator right of appeal under the Patented Medicines (Notice of Compliance) Regulations (NOC Regulations). The NOC Regulations link patent protection and regulatory approval for pharmaceutical products. Linkage proceedings provide innovators with an avenue to prevent generic drug manufacturers from obtaining regulatory approval if same would result in patent infringement. Since CETA requires the effective right of appeal to linkage proceedings, the NOC Regulations will require modification, which will be enabled by Bill C-30’s amendments broadening the governor in council’s regulation-making powers.

An overhaul to the NOC Regulations proceedings would be possible with the expansion of regulation-making powers, which would have a significant impact on pharmaceutical patent litigation. For example, duplicate litigation, which stems from summary, non-binding determinations under the current NOC Regulations might see its last days if the NOC Regulations permit full actions and final determinations. This means that innovators will be able to access full appeals like those in regular patent actions.

For more information please contact:

 
Randy Marusyk, Partner

T: 613.801.1088

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.


Lauren Blaiwais, Articling Student

T: 613.801.1057

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.


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RANDALL MARUSYK

Partner


Randall is a partner of the firm and has been certified as a specialist in all areas of Canadian IP Law.
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