Provides advice on IPR protection, including information on the registration of patents and trademarks.
Several general principles are important for effective protection of intellectual property (IP) rights in Canada. First, it is crucial to develop an overall intellectual property strategy to protect your IP rights. Second, IP is protected differently in Canada than in the United States, and the scope of protection is different. Third, intellectual property rights must be registered and enforced in Canada under local laws. For example, your U.S. trademark and patent registrations will not protect you in Canada. Further, there is not an “international copyright” system to protect copyrights including author’s writings throughout the entire world. Protection against unauthorized use in a country including Canada depends on the national laws of that specific country.
It is advisable to consider consulting with local counsel in country as you seek to protect your intellectual property. In Canada, patent and trademark registrations are both granted based on a first-to-file system. Accordingly, you should consider how to obtain patent and trademark protection before introducing your products or services to the Canadian market.
It is vital that companies understand that intellectual property is primarily a private right and that the United States government cannot enforce rights for private individuals in Canada. It is the responsibility of the rights holder to register, protect, and enforce their rights where relevant and entities must retain their own local counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Canadian law. The United States Commercial Service can provide a list of local lawyers upon request.
Although the United States government is eager to assist companies, there is little the government can do if the rights holders have not taken the fundamental steps necessary to secure and enforce their IP rights in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights with a mistaken belief that the United States government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. government advice be a substitute for the responsibility of a rights holder promptly to pursue its case. It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Work with legal counsel familiar with Canadian laws to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
Small and medium-size companies should understand the importance of working with trade associations and organizations to support IP protection and stop counterfeiting. There are several organizations based in Canada and the United States, including the Canadian Intellectual Property Office:
- The United States Chamber and Local American Chambers of Commerce
- Canada’s Intellectual Property Office
- Intellectual Property Institute of Canada
- American Chamber of Commerce in Canada
- National Association of Manufacturers (NAM)
- International Trademark Association (INTA)
- International AntiCounterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Innovation Organization (BIO)
- National Intellectual Property Rights Coordination Center.
The Office of the United States Trade Representative (USTR) maintained Canada on the Watch List in 2021 in its annual Special 301 report on Intellectual Property Rights.
The most significant step forward taken by Canada was the implementation of important intellectual property (IP) provisions in the United States-Mexico-Canada Agreement (USMCA), in areas where there have been long-standing concerns, including with full national treatment for copyright protections, transparency and due process with respect to new geographical indications (GIs), and more expansive trade secret protection, including criminal penalties for willful misappropriation. The United States continues to monitor Canada’s outstanding USMCA commitments with transition periods, including on the Brussels Satellites Convention, copyright term, and patent term extensions for unreasonable patent office delays. For information on the USMCA’s IPR provisions, please visit the Office of United States Trade Representative website at www.ustr.gov
In 2019, Canada made positive reforms to the Copyright Board related to tariff-setting procedures for the use of copyrighted works, and efforts remain ongoing to implement those measures. Despite this progress, various challenges to adequate and effective protection of IP rights in Canada remain. Significant concerns of Canada’s IP environment include poor enforcement with respect to counterfeit or pirated goods at the border and within Canada, high levels of online piracy, and inadequate transparency and due process regarding GIs protected through free trade agreements. In particular, reports of enforcement levels suggest that Canadian authorities have yet to take full advantage of expanded ex officio powers.
Canada’s system to provide for patent term restoration for delays in obtaining marketing approval is limited in duration, eligibility, and scope of protection. With respect to pharmaceuticals, the United States will continue to monitor the implementation and effects of recent changes to the Patented Medicine Prices Review Board’s pricing regulations. The United States remains deeply troubled by the ambiguous education-related exception added to the copyright law in 2012, which reportedly has significantly damaged the market for educational publishers and authors.
More information on the report can be found at the website of the United States Trade Representative at: 2021 Special 301 Report.
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- Patent, trademark, or copyright issues - including enforcement issues in the United States and other countries - www.STOPfakes.gov.
- Registering trademarks and patents (in the United States as well as in foreign countries), contact the United States Patent and Trademark Office (USPTO).
- Registering for copyright protection in the United States, contact the United States Copyright Office
For further information, please contact Michelle Sara King, Intellectual Property Team Lead & Senior International Trade Specialist, Telephone: 202-880-4876, E-mail Michelle.King@trade.gov.