United States-Mexico-Canada Agreement - IP provisions

Canadian and US trademark representatives have resolved several outstanding trade issues clearing the way for the likely ratification of NAFTA’s replacement, the United States-Mexico-Canada Agreement (USMCA).  The USMCA covers a wide range of trade related issues and includes a chapter on Intellectual Property (IP) rights that, when ratified, will establish a framework of minimum standards for the protection of IP rights in North America. Here is a look at some of the highlights of the USMCA’s IP Chapter:

 Patents

Increase in term for data protection

•  The term of data protection for new biologic drugs is proposed to be increased from 8 years to 10 years. For chemical (small molecule) drugs, Canada will be able to continue to provide a term of data protection of 8 years. The Agreement is also line with Canada-European Union Comprehensive Economic and Trade Agreement (CETA) as it relates to the recently-implemented Certificate of Supplementary Protection (CSP).

Patent term adjustment availability

•  A provision for patent term adjustment to compensate patent applicants for “unreasonable delays” in the processing of patent applications is proposed.  The proposed text of the Agreement alludes to these delays as they relate to the issuance of a patent more than the later of five years from the date of filing, or three years after a request for examination; this delay may exclude periods of time that a) do not occur during the processing of the application or examination by the Patent Office; b) are not directly attributable to the Patent Office; or c) are attributable to the applicant.   The text appears to suggest that patent term extension, once instituted, may be more elusive for applicants who invoke the favourable abandonment and reinstatement provisions currently available under the Patent Act and Rules during prosecution.

Clarification of patentable subject matter

•  The Agreement includes provisions on the availability of patents for inventions in all fields of technology, and provides for certain exclusions from patentability.  It is hoped that these provisions will provide some clarity, or at least stimulate constructive debate, regarding the patentability of subject matter currently facing increased scrutiny in Canada (e.g. diagnostic methods, computer-implemented inventions, etc.).

 Certain provisions would require implementation within Canadian law and policy over the next 4.5 to 5 years.

 Trademarks

         Confirmation of expanded definition of a mark

•  The proposed text of the Agreement would confirm that a mark does not need to be visually perceptible in order to be registered and would commit each party to make their best efforts to register scent marks.  The Agreement would also commit the parties to the protection of collective marks and certification marks and provide for the ability to protect geographical indications under each party’s trademark system.

 Ratification of international treaties

•  The agreement would compel the parties to ratify or accede to several international agreements including Madrid Protocol, Budapest Treaty, Singapore Treaty, and Hague Agreement by the date of entry into force of the USMCA. Canada is already a party to these agreements or is in the process of implementing or ratifying them.

 Copyright

        Extension of the term of copyright protection

•  The general term of copyright protection is proposed to be extended by 20 years to “life of the author plus 70 years”. For performances and sound recordings, the term of copyright would be extended by 5 years to “life of the author plus 75 years”.  The agreement proposes a 2.5-year transition period in which to implement this increase in the term of copyright protection.

 Remedies for circumventing technological protection measures

•  The parties would be required to provide civil and criminal remedies for circumventing digital locks and altering or removing digital watermarks.

 Exempting ISPs from liability for infringing activity on their network

•  The Agreement includes provisions that would exempt Internet Service Providers (ISPs) from liability for removing infringing content. These provisions are consistent with Canada’s current “notice and notice framework”.

 To see a draft copy of the USMCA’s IP Rights Chapter, please click here.

 For more information about the IP Chapter provisions of the USMCA, please do not hesitate to contact us.

 By Christopher Dejardin and Dr. David Barrans