Canadian Government Introduces Legislation to Amend IP Laws

On May 7, 2015, the Government of Canada introduced Bill C-59, The Economic Action Plan 2015 Act, No 1, to implement certain portions of the 2015 Federal Budget (previously reported in the E-TIPS® Newsletter), including proposed changes to Canada’s IP laws. The proposed amendments relate, most significantly, to statutory privilege for confidential communications between intellectual property agents and their clients, and also to force majeure and error correction.

Statutory privilege – The proposed amendments to the Patent Act and theTrade-marks Act provide a statutory privilege for confidential communications between clients and their patent or trade-mark agents where a communication meets the following conditions:

1. it is between an agent (or individual acting on the agent’s behalf) and his or her client (or individual acting on the client’s behalf);
2. it is intended to be confidential; and
3. it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention or trade-mark (including geographical indications and official marks).

The statutory privilege also extends to communications between a foreign agent and his or her client provided that (1) they would be privileged in the jurisdiction in which the agent is authorized to practice, and (2) the above three conditions are met.

Force majeure – The proposed amendments to the Patent Act, the Trade-marks Act and the Industrial Design Act provide for an extension of time limits in cases of force majeure events (ie unforeseeable circumstances).

Error correction – The proposed amendments to the Patent Act and theIndustrial Design Act provide the authority to make regulations respecting the correction of “obvious“ errors in patent or industrial design documents.

The amendments could be passed into law quickly; however, they will take longer to come into force according to the provisions in Bill C-59. For example, the amendment relating to statutory privilege for agents would come into force 12 months after the Bill receives royal assent.