20 | LEXPERT • December 2015 | www.lexpert.ca
INTELLECTUAL PROPERTY
PHOTO:
SHUTTERSTOCK
IP REFORMS
CANADA'S
CHANGES TO CANADA'S intellectual property laws that are aimed at harmoniz-
ing them with international obligations and treaties will not occur until at least late 2016, according to
the Canadian Intellectual Property Office.
To some, that's a shame. Aer all, no less august a body than the US Chamber of Commerce calls
Canada an international IP outlier. Indeed, it is the only G7 country on the United States Trade Repre-
sentative's intellectual property watch list, which this country has graced since 1985 in company with
countries like Russia, China and India.
"While the original optimistic CIPO view saw the Trade-marks Act amendments in force mid-2015
(there were even some suggestions of early 2015), the dra regulations for not only the Trade-marks Act
but the Patent Act and Industrial Design Act too are now not 'expected' to be published in the Gazette
until 'late 2016,'" advises Scott MacKendrick of Bereskin & Parr LLP in Toronto in an e-mail.
To others, there's no need to panic — not in the least.
"We're not outliers at all," says Carol Hitchman of Gardiner Roberts LLP in Toronto. "Some of our
laws may be different, but that's not the same as being an outlier. To suggest we're anti-patentee, for
example, is absolute nonsense."
As Hitchman points out, countries like the UK and the US have certain laws that are harsher on
patentees than their Canadian counterparts. "e test for obviousness is easier in the UK than it is in
Canada," she says. "And the US has file wrapper estoppel, which holds patentees to the interpretations
they put on claims in their patent applications. In Canada, you can say one thing to the patent office and
something different in litigation."
Critics have labelled Canada
an intellectual property outlier.
Changes are afoot to address
this controversial moniker
BY JULIUS MELNITZER
