Several Key IP Issues Addressed in the Government’s Response to the INDU Report “Intellectual Property Regime in Canada”

Several Key IP Issues Addressed in the Government’s Response to the INDU Report “Intellectual Property Regime in Canada”

Full text of the government’s response

The Honourable Christian Paradis responded on behalf of the Government of Canada to the recommendations made by the Standing Committee on Industry, Science and Technology in its report entitled “Intellectual Property Regime in Canada”, tabled in the House of Commons on March 18, 2013.

The following are excerpts from the government’s response, with headings added to flag each issue. The following does not necessarily reflect the views of PCK IP: 

Reduction of Time for Issuing Patents

CIPO is targeting a reduction in the time involved in processing patents from 50 months to 33 months by 2016-2017. This will be brought about by process and information technology changes and modernizing elements of the legislative and regulatory framework. 

Post-Grant Patent Opposition

The Government of Canada will consider, as a mechanism to resolve disputes or lower litigation costs for SMEs, a post-grant opposition procedure whereby an interested party can challenge the validity or the claims of a granted patent at CIPO without resorting to the courts.

Inadvertent Loss of Patent Rights

The Government will undertake consultations in relation to several international agreements relevant to IP. If appropriate, the Government will consider regulatory and legislative changes that may be required to position Canada so as to be consistent with the Patent Law Treaty to make the patent system more efficient for businesses; and address concerns over procedural requirements that can contribute to inadvertent abandonment of patent rights. The Government will consult with stakeholders on the implementation of these changes to the patent regime.

Protecting Confidential Communications between IP Owners and Their Patent or Trade-mark Agents

The Government will also consider the issue of protecting confidential communications between owners of patents and trademarks and their Canadian IP agents. Currently such communications may not be protected from disclosure in litigation in Canada unless they are protected under solicitor-client privilege. There is concern that this may place Canadian innovators at a disadvantage in litigation in other jurisdictions, such as in the U.S., where confidential communications with domestic IP agents are protected but not necessarily those outside of that jurisdiction. The Government will consult on the merits of providing this privilege and the means to provide it.

Patentable Subject Matter

In Canada, there is no statutory or jurisprudential exclusion that states that business methods or software are not patentable. However, the courts have provided some additional clarity by indicating that an invention cannot be disembodied (i.e. stand alone software code) and must have a practical effect. 

The raison-d’être of the patent system is to encourage invention, creativity, and research and development. In that context, there are many areas where new subject matter might eventually be considered or clearly excluded in the definition of patentable subject matter as new innovations are developed.