• Amendments to Canada’s IP System outlined in the Federal Budget are one step closer to implementation
  • May 12, 2015 | Author: Kevin K. Graham
  • Law Firm: Smart & Biggar/Fetherstonhaugh - Ottawa Office
  • Bill C-59, the Economic Action Plan 2015 Act, No. 1, was introduced in Parliament on May 7, 2015. The Bill is to implement certain portions of the Federal Budget tabled in Parliament on April 21, 2015. As reported in our April 22, 2015 IP Update, Bill C-59 proposes significant changes to certain aspects of Canada’s IP system.

    Statutory privilege

    The most significant IP aspect of Bill C-59 is the proposed amendments to the Patent Act and the Trademarks Act to provide clients with a statutory privilege for confidential communications with their patent agents and trademark agents.

    Pursuant to the proposed amendments, a communication between a client and a registered Canadian patent agent or trademark agent will be privileged if it meets the following three conditions

    a. it is between an agent (or individual acting on the agent’s behalf) and their client (or individual acting on the client’s behalf);
    b. it is intended to be confidential; and
    c. it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention or trademark (including geographical indications and official marks).

    The privilege protects against the disclosure of these communications, or their substance, being compelled in an action or proceeding.

    The statutory privilege will also extend to communications between a foreign agent and their client if (i) the three conditions set out above are met and (ii) the communication would be privileged in the jurisdiction in which the agent is authorized to practice.

    The proposed amendments also provide that the privilege can be waived by the client (either explicitly or implicitly) and is subject to the same exceptions as solicitor-client privilege.

    Finally, the privilege will extend retroactively to communications made prior to the date the legislation comes into force, provided the communication is still confidential as of that date. However, there is an express exclusion that the privilege will not apply in respect of an action or proceeding commenced before the date the legislation comes into force.

    Extension of time limits and correction of errors

    The proposed amendments also include changes to the Industrial Design Act, the Trademarks Act and the Patent Act which provide for:

    a. the extension of time limits in unforeseen circumstances (for example power outage, flood, ice storm, or the like); and
    b. the authority to make regulations respecting the correction of obvious errors.

    Extension of copyright term

    Amendments are also proposed to the Copyright Act to extend the term of copyright protection for sound recordings. In particular, if a second recording is published before the expiry of the initial copyright term of 50 years from the year of the first fixation, the copyright term will be extended to the earlier of (i) 70 years after the year of the first publication and; (ii) 100 years after the year of the first fixation.

    Timeline for implementation

    Budget bills can be passed very quickly—within a matter of two or three months. However, there are provisions in Bill C-59 regarding when each of the amendments will come into force. For example, the amendments relating to patent agent and trademark agent privilege only come into force 12 months after the Bill receives Royal Assent.