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Canada’s changing IP landscape

Canada’s changing IP landscape
Giselle Chin and Meika Ellis are associate lawyers at Ridout & Maybee LLP, an IP firm with offices in Toronto, Ottawa and Burlington, Ont.

As part of its national Intellectual Property Strategy announcement in 2018, the Canadian government plans on investing $85.3 million over the next five years to help develop, protect and provide access to IP. This is an exciting development for Canada as it seeks to build its knowledge economy. Here we look at some interesting developments that took place in 2018, including the aftermath of the end of the promise doctrine, cannabis legalization, the development of a college of patent and trademark agents and the overhaul of Canada’s industrial design regime.

After the promise doctrine

If there was any doubt that the promise doctrine might endure under different auspices post-AstraZeneca, court cases of the past year largely appear to have laid those doubts to rest, although a “promise-lite” case may have emerged.

In Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2018 FC 259, Hospira attempted to alter its argument to link “promise of the patent” to the absence of sound prediction and to insufficiency and overbreadth. The court rejected this import, returning to the Supreme Court of Canada’s assertion that utility is met if a mere “scintilla” of utility that relates to its subject matter is demonstrated.

Interestingly, subsequent to Hospira, the Federal Court relied on its own construction of the “subject matter” of a patent to assess utility. In Safe Gaming System v. Atlantic Lottery Corporation, 2018 FC 542, the plaintiff argued that the utility was in the monitoring, regulating and terminating of gambling of an individual, and that this basic utility was met. Justice Glennys McVeigh disagreed and recast the subject matter as the monitoring, regulating and terminating play of problem gambling. McVeigh concluded that the patent could not do, nor soundly predict, what it said it could and invalidated the patent at least in part because the patent’s scintilla of utility was not related to the nature of its subject matter.

Cannabis legalization

Oct. 17, 2018 was a historic day in Canada, with it becoming the first G7 country to legalize recreational cannabis nationally. While the regulation of cannabis and intellectual property seem removed, plant breeders’ rights and trademark laws are two areas of IP with high stakes in Canada’s cannabis landscape.

PBRs could, if leveraged properly, provide cannabis producers a competitive advantage. Like copyright, PBRs provide the breeder with an exclusive right to produce, reproduce, sell, export, import and make repeated use of the propagating material of the variety, among other rights. Unfortunately, many businesses seem to be missing the boat on this one.

One boat that businesses cannot afford to miss is the effect of cannabis legislation on trademarks and branding. Cannabis legislation contains requirements for packaging and labelling to ensure that the federal government meets its public health and safety objectives, particularly concerning youth health. Regardless of a company’s branding, all cannabis goods will be required to include a standardized cannabis symbol, a rotation of one of several health warning messages and information on the content of THC and/or CBD.

To ensure that packaging remains neutral and non-eye-catching, cannabis legislation controls the placement of trademarks and logos, as well as the use of branding, imagery and colours of packaging containing cannabis products. An eye-catching trademark with an appealing design, for example, will likely be prohibited.

New college of patent and trademark agents

A slightly controversial aspect of Canada’s 2018 IP Strategy is the creation of a new College of Patent and Trademark Agents. Membership would be mandatory for registered agents and would involve a new binding code of ethics and additional continuing education requirements. The touted benefits include setting higher professional standards in the provision of
IP services.

Industrial design regime

To the pleasure of IP practitioners across Canada, 2018 saw the coming into force of Canada’s new industrial design legislation, which brings it in line with international practices, incorporating the Hague Agreement Concerning the International Deposit of Industrial Designs. Applying through the Hague System allows Canadian applicants to obtain a design registration in up to 69 jurisdictions. The amendments increase the efficiency of the registration of industrial designs as well as provide clarity on the application process.