Canada Moves to Simplify Patent Laws, Bring Them In-line with EU and US

Canadians filing patent applications at home or trying to protect their industrial designs in the United States and Europe could soon have an easier time.

Two international treaties currently before Parliament would simplify some elements of Canada’s patent application process and allow Canadians to register up to 100 industrial designs—the specific shape, material, colours and other unique elements of a product that are protected in a similar way to patents—in up to 61 countries through a single form.

The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the Patent Law Treaty are among five intellectual property treaties that were tabled in Parliament late last month, with the other three covering trademarks.

“The Geneva Act and the Patent Law Treaty will encourage and incentivize domestic innovators to protect IP rights in their technologies, as well as signal internationally that Canada’s doors are open to foreign businesses looking for navigable, expansive and flexible systems by which to acquire and protect their IP rights in Canada,” says Scott Douglas, an associate at Gowling Lafleur Henderson, one of Canada’s largest law firms.

The Geneva Act “is a leap forward for design creators [and] owners,” according to Douglas. It will allow Canadians to file a single application for industrial design rights with the World Intellectual Property Office rather than filing individual applications for each country. That treaty will also allow for multiple designs to be included in a single application. Douglas says is an “important flexibility that accommodates businesses who may desire filing of many design variations simultaneously.”

The treaty will also allow foreign companies to obtain protections for their designs in Canada through the same process.

While the new process will only require a single form, the application will still be sent, by WIPO, to each country’s intellectual property authority, who then approves or denies the application.

It’s a similar situation for patents, according to Douglas, “patent acquisition ‘rules’ such as novelty and inventiveness will not change.”

He says The Patent Law Treaty is “expected to soften relatively rigid aspects of current Canadian patent law. For example, failing to provide a fee at the time of filing would no longer exclude an applicant from being afforded a filing date, thereby allowing for fee deferral.”

The Patent Law Treaty will also extend the amount of time inventors have to claim priority—when a patent application is linked to a previous application in a different country. The treaties have been in effect in Europe for years and were approved the U.S. congress last fall.

“In short, adoption of these treaties by Canada represents a catalyst for long-overdue modernization of the intellectual property regime in Canada,” says Douglas.

According to the government the treaties will help Canadian access protect IP in foreign markets.

“Canadians are increasingly moving their innovations into the global market. From 2000 to 2011, patent applications by Canadians abroad increased by 76 percent,” said then-industry minister Christian Paradis in a written statement sent to the House of Common’s Standing Committee on Industry, Science and Technology in June, when the committee was reviewing the treaties. “We need to support these and other Canadian businesses in taking advantage of the growth opportunities offered by foreign markets.”

It’s not clear when exactly the treaties will go into effect. They require a vote in Parliament, which won’t take place until at least early March.