Publications

The interaction between national borders and the jurisdictional nature of intellectual property rights raises complex issues regarding the infringement of Canadian intellectual property rights through activities with an extraterritorial component. This three-part article series seeks to provide a brief overview of the scope of intellectual property rights held in Canada in relation to export-related activities and the potential for infringement of those rights through such activities. This is Part One, which addresses patents and industrial designs. Part Two will address trade-marks and Part Three will address copyright.
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Several months ago the Office of the US Trade Representative (USTR) published the 2017 Special 301 Report. This report identified trade barriers and includes a Watch List of countries where IP concerns exist.  As in 2016, Canada remains on the Watch List. The Office of the USTR indicated that U.S. innovators face challenges “including restrictive patentability criteria” in Canada and uncertainties surrounding the “promise doctrine.”  The Office of the USTR also highlighted the Supreme Court of Canada’s (SCC) upcoming opportunity to clarify this doctrine through case law.

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Many countries in the world are conditioned to apply class designations for goods and services in trademark applications. Canada is scheduled to follow suit when it accedes to the Singapore Treaty and the Madrid Protocol. Is this a good thing or not? Becoming part of an international filing procedure fits into the globalization process as Canada will become part of a larger network which may encourage regional or national Canadian businesses to expand beyond current borders. However, in joining a larger whole, one may be obligated to accept conditions unfavourable – one such condition arguably being the need for Canada to use the Nice Classification for goods and services.

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