INTELLECTUAL PROPERTY PART I -

(1987-93),

SUMMARY OF

GOVERNMENT ACTIVITY Gregory C. Ludlow* This survey, which will appear in several parts, canvases recent developments in intellectualpropertylaw in Canadafrom 1987 to present. PartI provides a summary of the numerous legislative activities regarding intellectual property law. Subsequent parts will explore case law developments in trademarks, patents, copyright, industrial designs, integrated circuits and plant breeder'srights.

*

Cette 6tude, qui sera publige en plusieurs parties, examine de faf.on approfondieles changements importants qui sont survenus dans le domaine de la proprigtgintellectuelleauCanadade1987 i maintenant.La premijrepartier~sume les nombreuses activitis l~gislatives portantsurlapropri&tgintellectuelle.Les autres parties examineront la jurisprudencer~cente sur les marques de commerce, les brevets d'invention, les droits d'auteurs, les dessins industriels, les circuits int~gr&s et les certificats d'obtention.

Of the Bar of Ontario. Partner, MacBeth & Johnson, Toronto, July 1993.

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IntellectualProperty,PartI

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91

92 I. INTRODUC ON ............................................................ II. AMENDMENrs ............................................................................................

92

A. Copyright Act ..................................................................................

92

1. 2. 3. 4. 5.

Copyright Amendment Act ..................................................... Canada-United States Free Trade Implementation Act ................................................................. Intellectual Property Law Improvement Act ........................... An Act To Amend the Copyright Act .................................... North American Free Trade Agreement Implementation Act .................................................................

B. Industrial Design Act ...................................................................... 1. 2. 3. 4.

Copyright Amendment Act ..................................................... Miscellaneous Statute Law Amendment Act, 1992 ............................................................. IP Law Improvement Act ........................................................ NAFTA Implementation Act ..................................................

C. Patent Act ..................................................................................... 1. 2. 3. 4. 5.

An Act To Amend the Patent Act .......................................... Patent Cooperation Treaty .......................................................... Patent Act Amendment Act, 1992 .............................................. IP Law Improvement Act ........................................................ NAFTA Implementation Act .................................................

D. Trade-marks Act ................................................................................. 1. 2. 3. 4.

Plant Breeders' Rights Act ......................................................... Miscellaneous Statute Law Amendment Act, 1992 ................... IP Law Improvement Act ........................................................... NAFTA Implementation Act ...................................................

IIL NEw Sut GENERIS PROTECTON .................................................................. A. Plant Breeders' Rights Act ................................................................. B. Integrated Circuit Topography Act ...................................................

92 95 95 96 96 99 99 99 100 101 103 103 105 107 108 110 111 111 111 112 112 114 114 119

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I. INTRODUCTION

The present survey continues where the valuable surveys of W.L. Hayhurst, Q.C., ended,' and discusses the most significant developments in Canada inthe field of intellectual property law. Given the flurry of government activity both in terms of amendments to traditional protection and the enactment of new sui generis protection, the first part of the survey, published herein, will concentrate on reporting these numerous changes. Subsequent parts will report statutory and case law developments and will offer critical commentary on each. Topics to be discussed in subsequent parts include trade-marks, patents, copyright, industrial designs, integrated circuits and plant breeders' rights. II. AmENDMENTS A. Copyright Act' 1. Copyright Amendment Act3 Emerging fromthe government's initiative for complete revision ofthe Copyright Act, the 1988,Amendments came into force on June 8, 1988 and represented Phase I ofthis effort. They effected anumber ofsignificant changes and constitute amajor overhaul of the statutory protection afforded original works. These changes are highlighted below. (a) Subject Matter

(i) Computer Programs The question of whether a computer program enjoys copyright protection received an unequivocal statutory answer by the 1988 Amendments. Regardless of the method of expression, computerprograms including existing programs explicitly enjoyprotectionas literaryworks. 4Inrecognition ofthe fragile nature ofsuchworks, the 1988 Amendments permitted copying for back-up purposes provided they are used only as such. 5

W.L. Hayhurst,RecentDevelopmentsin CanadianLaw: IntellectualProperty (1987) 19 OTTAWA L. Rv. 137 & 581. Mr. Hayhurst's surveys spanned the period 1979 to 1987 and

constitute a valuable commentary on the development of Canada's intellectual property lav. 2 R.S.C. 1985, c. C-42. 3 An Act to Amend the CopyrightAct and to Amend OtherActs in Consequence Thereof, R.S.C. 1985 (4th Supp.), c. 10 [hereinafter 1988 Amendments]. 4 S. 1(2), amending Copyright Act, supra note 2, s. 2. S. 5, amending s. 27(2).

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IntellectualProperty,PartI (ii) Choreography

The protection of choreographic works as dramatic works has been expanded 6 to embrace works whether or not they have a story line. (b) Industrialor UtilitarianDesigns The 1988 Amendments provide, for the first time, a statutory definition to the term "industrial design". It means "features of shape, configuration, pattern or 7 omament....that....appeal to and are judged solely by the eye". When anew design is applied to a useful article reproduced in a quantity ofmore than fifty, reliance on copyright is no longer available.8 Certain types of designs, however, have been exempted from this rule so that their copyright remains unimpaired. Such designs include those constituting trade-marks, textile patterns, graphics displayed on the face of an article, or designs employed in merchandising characters or places either real or fictitious. 9 As a result of the 1988 Amendments the question of the author's intention at the time of authorship no longer plays a role in determining whether a work enjoys copyright protection or industrial design protection. The question falls to be answered by applying the above rules. (c) PublicExhibition of.Art A new prohibition against the public exhibition of most artistic works was established by the 1988 Amendments and applies in respect of works created after June 8, 1988.10 (d) CriminalSanctions The 1988 Amendments changed the penalty for persons who knowingly infringe copyright from the paltry $200 fine to possible fines of up to one million dollars and five years imprisonment." These sanctions are in addition to the civil 2 remedies available to the copyright owner for such conduct.

S. 1(3), amending s. 2. S. 11, amending s. 64 and adding s. 64.1. The 1988 Amendments, s. 20, amending the IndustrialDesign Act, R.S.C. 1985, c. 1-9, s. 2, provides identical definitions. 8 1988 Amendments, supra note 3, s. 11, amending CopyrightAct, supra note 2, s. 64(2). 9 S. 11, amending s. 64(3). 10 S. 2, amending s. 3(l). 11 S. 10, amending s. 42. 12 CopyrightAct, supra note 2, s. 34. 6

7

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(e) MoralRights (i) Right Defined As with computer programs, the 1988 Amendments conveyed unequivocal protection to an author's reputation by granting to authors "the right to the integrity" oftheirparticular work.13 Consequently, awork cannotbe either distorted, mutilated, modified or used in association with a product, service, cause, or institution if prejudice to the author's reputation would result.14Additionally, an author can insist either on anonymity or upon a statement of authorship under such name or pseudonym as the author may prefer. 5 (ii) Remedies The civil remedies available to an author to enforce such moral rights now encompass those available in respect of copyright infringement, including interlocutory andpermanent injunctive relief, damages, an accounting ofprofits and delivery-up of offending articles. 6 (iii) Waiver Only While the 1988 Amendments allowed for the waiver of moral rights or their 7 passage on death, they cannot be transferred or sold.' (iv) In Respect ofActs Subsequent To June 8, 1988 The amendments affecting moral rights do not apply to persons who acquired either the copyright or a license for a work from the authorprior to June 8, 1988.18 Such rights remain governed by the old law. Additionally, the moral rights granted by the 1988 Amendments apply to all designs but only arise in respect of acts subsequent to June 8, 1988.'9 (f) Collective Agencies and the New CopyrightBoard The 1988 Amendments provided for an expansion of the number and types of collective agencies to control the use of copyrighted works and to collect royalties 1988 Amendments, supra note 3, s. 4, amending Copyright Act, supra note 2, s. 14 (adding news. 14(1)). S. 6, amending s. 28 (adding new s. 28.1 and 28.2). 14 is S. 4, amending s. 14 (adding new s. 14.1 & 14.2). 16 S. 8, amending s. 34. 17 S. 4, amending s. 14 (adding new s. 14.1(2)-(4) & s. 14.2(2)). is 1988 Amendments, supra note 3, s. 21(3). S. 21(1)-(2). 19 13

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for the use of such works of the collective's members. 20 As a consequence, the Copyright Appeal Board became the "Copyright Board" with expanded authority 2 to govern the rates set by the collectives. ' (g) Music Licensing Only Voluntarily Composers of music and the owners of the copyright to such works had to tolerate the compulsory licensing of such works to others once the copyright owner made a first recording ofthe work. The 1988Amendments abolishedthis scheme and terminated existing licenses as of December, 1988.22 2.

3 Canada-United States Free Trade Implementation Act2

(a) CableRetransmission The Free TradeImplementationAct amended the CopyrightAct such that the retransmission of broadcast works, hitherto arguably not captured by copyright infringement since the signals were not copied, became an act which required the permission of the copyright owner.24 A new definition of telecommunication was provided to facilitate this new scheme.25 The licensing of such retransmission is 26 governed by a collective at rates set by the Copyright Board. 3.

Intellectual Property Law Improvement Act27

This particular Act also effected only certain minor amendments to the Copyright Act. (a) Extension to UniversalCopyright Convention Countries The Copyright Act was extended to countries adhering to the Universal Copyright Convention28 as adopted in Geneva on September 6, 1952, or as revised in Paris on July 24, 1971.29 20 S. 12, amending CopyrightAct, supra note 2, ss. 66 and 67 (adding new ss. 66, 66.1 to 66.9, 67 and 67.1 to 67.3); s. 13, amending ss. 68-70; s. 14, amending ss. 68-70 (adding new ss. 70.1 to 70.7). These sections establish the Copyright Board, the scheme for performing rights collectives, and the scheme for any further collectives. 21 S. 12, amending s. 66. n S. 7, repealing ss. 29-33. 2 S.C. 1988, c. 65 [hereinafter Free Trade ImplementationAct]. 24 S. 63, amending CopyrightAct, supranote 2, s. 45 (adding new s. 45.01). 2 Free Trade Implementation Act, supra note 23, s. 61. 26 S. 65, amending CopyrightAct, supranote 2, s. 70 (adding new ss. 70.61 to 70.67). 27 S.C. 1993, c. 15 [hereinafterlPLawlmprovementAct]. 28 6 September 1952, Can. T.S. 1962 No. 13 (entered into force in Canada on 10 August 1962). 29 IP Law ImprovementAct, supra note 27, s. 2, amending CopyrightAct, supra note 2, s. 5 (adding new s. 5(2.1)).

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(b) CopyrightRegisterAmendments Amendments were made which dealt with the maintenance and rectification of 30 the Register of Copyrights and the evidentiary value ofthe Register and certificates. The amendments also addressed the regulation of fees for the registration of either 31 copyright or the grant of an interest in a copyright. 4.

An Act to Amend the Copyright Act

32

(a) PerformancesBy Telecommunication The amendments to the CopyrightAct made by this legislation are directed to the expansion of performing rights to include performances by television whether broadcast or retransmitted. The definition of telecommunication established by the Free Trade Implementation Act to capture retransmission of telecommunications forms the basis of an expanded definition of "performance". 33 Previously, "performance" only included those communicated by radio. In turn, this legislationprovided for specific collectives for the grant oflicenses for suchperformances, other than by retransmission, and the collection of royalties.34 5.

North American Free Trade Agreement Implementation Act 35

Chapter 17 of the North American Free Trade AgreemenP6 between Canada, Mexico and the United States deals with intellectual property in a comprehensive and thorough manner setting out specific standards for both protection and enforcement. The NAFTA Implementation Act addresses those obligations under NAFTA which, in view of the government, require changes to Canada's domestic law. Article 1701 requires Canada to raise the level of protection afforded by its copyright legislation to that of the 1971 Berne Conventionfor the Protection of LiteraryandArtistic Works37 andto implementthe 1971 Geneva Conventionfor the SS. 4-7, amending ss. 49, 53, 56 & 57. S. 8, amending s. 59.32 S.C. 1993, c. 23 [hereinafter 1993 Amendments]. 33 S. 1, amending CopyrightAct, supra note 2, s. 2. 34 SS. 3-5, amending s. 67. 3S S.C. 1993, c. 44 [hereinafter NAFTA Implementation Act] (NAFTA to come into force on January 1, 1994. However, the NAFTA ImplementationAct can only be proclaimed if Mexico and the United States take satisfactory steps to implementNAFTA. See NAFTA Implementation Act, ibid., s. 242). 36 NorthAmericanFreeTradeAgreement(Ottawa:MinisterofSupply& Services Canada, 1992) [hereinafter NAFTA]. 37 9 September 1886, Can. T.S. 1948 No. 22 [hereinafter 1971 Berne Convention] (completed at Paris on 4 May 1886, revised at Berlin on 13 November 1908, completed at Berne on 20 March 1914, revised at Rome on 2 June 1928, at Brussels on 26 June 1948, and in Paris in 1971). 30

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ProtectionofProducersofPhonogramsAgainstUnauthorizedDuplicationoftheir Phonograms.38 Articles 1705 and 1706 require new protection for compilations and the establishment of a commercial rental right for both computer programs and sound recordings. 39 In addition, Article 1718 requires protection at borders against

importation of unauthorized copies of works protected by copyright.40 (a) 1971 Berne Convention The level of protection required by the 1971 Berne Convenion necessitated41 several redefinitions and consequential changes in respect of terms of protection. The resulting opportunity to amend the Copyright Act also occasioned certain 42 further definition changes.

(i) CinematographicWorks This legislation changes the definition from "any workproduced" to "any work

expressedby anyprocess analogous to cinematography ' 43 and adds presentation by cinematograph to the incidents of copyright. 44 It specifically deals with cinematographs in the newprovision clarifying the general conditions for subsistence of copyright, 45 and the term of copyright protection- 50 years from publication or making if unpublished.46 It also exempts certain conductinrespect ofcinematographic of copyright subsisting in works for which the term has expired from infringement 47 works included in such cinematographic works.

38

See supra note 36 [hereinafter Geneva PhonogramConvention].

39 40

NAFTA, supra note 36, arts. 1705 & 1706. Art. 1718.

41

NAFTA Implementation Act, supra note 35, ss. 58-60, amending CopyrightAct, supra

note 2, ss. 6-12. 42 S. 53(2), amending s. 2. In addition to the change to "cinematograph", the subsection redefines the definitions for "artistic work", "dramatic work", "every original literary, dramatic, musical and artistic work", "literary work", "musical work", and "photograph" beyond merely providing areferenceto compilations ofsuch works. The subsection also redefines "performance". Furthermore, s. 56, amending s. 4 provides a new definition of "publication". The "term" of copyright is also amended so that generally one counts from the end of the calendar year of the event from which the 50 year term runs. See s. 58, amending ss. 6-7 and s. 60, amending ss. 9-12. 43 S. 53(2), amending CopyrightAct, supra note 2, s. 2. 44 S. 55, amending s. 3. 45 S. 57, amending s. 5. This amendment expands the conditions for the subsistence of copyright in Canada and clearly establishes that the conditions offirstpublication does not depend on authorship. 46 S. 60, amending s. 11 (adding new ss. 11.1(a) and 11.1(b)). 47

Ibid.

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(b) Geneva Phonogram Convention: Contrivances In order to comply with this convention, the author of a contrivance by means of which sounds may be mechanically reproduced is expanded from "the owner of the original plate" to the "maker of the contrivance".48 This newly defined term focuses on whose behalf arrangements for the making of the contrivance are undertaken. The term of49copyright protection is also specifically established- 50 years from the making. (c) Protectionfor Compilations The NAFTA ImplementationAct provides specific protection for compilations 50 and of literary, dramatic, musical or artistic works by defining compilations 5' works. such of definitions the in incorporating reference to compilations (d) Rental Rights: ComputerProgramsand Sound Recordings The provisions which establish a rental right in respect of computer programs and sound recordings parallel each other. These rights are established by defining what constitutes rental 52 and by giving the copyright owner the right to rent out the computer program or contrivance via the sections which identify the incidents of copyright.5 3 (e) Border Enforcement Specific provision is made for court-ordered Ministerial detention of imported works which have not been released upon an application by the copyright owner or exclusive licensee.5 4 The applicant must satisfy the court that the work was made without authority and, to the knowledge of the importer, would have infringed copyright if made in Canada." Within two weeks of notification of detention, however, the applicant must commence an action for the final determination of the issues of lack of authority and infringement in Canada or the Minister is bound to release the works.-6

49 49 50

51 52 53 54

55 56

Ibid. Ibid. S. 53(3), amending s. 2 (adding s. 2.1) and s. 54. Supra note 43. S. 55(3), amending s. 3(2); s. 57(2), amending s. 5(4) (adding new s. 5(5)). S. 55(2), amending s. 3(l); s. 57(2), amending s. 5(4). S. 66, amending s. 44 (adding new s. 44.1). Ibid.

Ibid.

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B. Industrial Design Act 1. Copyright Amendment Act This legislation made several significant changes to the IndustrialDesignAct. (a) "IndustrialDesign" Defined As noted above in Part II.A.l.(ii).(b), important definitions of "industrial 57 design", "useful article" and "utilitarian function" were provided for the first time. This provided a welcome definition for the subject matter which enjoys protection under the IndustrialDesignAct and facilitated the codification of the common law gloss that industrial design protection should not cover features dictatedby function. (b) CodificationofExclusion ofFunctionalFeatures A new section of the IndustrialDesign Act contains the codification of the principle that excludes from protection any "features applied to a useful article that are dictated solely by a utilitarian function of the article" or"any method orprinciple 58 of manufacture or construction". 2.

Miscellaneous Statute Law Amendment Act, 199159

This legislation made anumber of minor amendments and one major change to the IndustrialDesign Act. (a) Photographsas Visual RepresentationofDesign The minor amendments related to the Register of Industrial Designs and to the acceptability of photographs as the visual representation, of the design in the 60 application for registration and any ensuing certificate of registration. (b) BilingualMarking A change was also made to the marking requirements which mandated use of a bilingual mark.6' Although the marking requirement was subsequently changedby

S. 18, amending IndustrialDesign Act, supra note 7, s. 2. S. 19, amending s. 5 (adding new s. 5.1(a) & (b)). S.C. 1992, c. 1 [hereinafterMiscellaneousAct]. 60 S. 79, amending IndustrialDesign Act, supranote 7, s. 3 & 4; s. 80, amending s. 6(1); s. 81, amending s. 7. 61 S. 82, amending s. 14(l). 57 58 59

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the next legislation, this requirement apparently governs the validity ofregistrations 62 obtained while it was in force. (c) Filing Only Required Within One Year ofPublication

The major change made by this legislation concerns the statutory bar against protection. Previously, an applicant had to ensure registration of the design within one year of publication in Canada or be prevented from enjoying any protection. This legislation changed the requirement so that the applicant need merely ensure the filing of an application to register the design within the one year of publication in Canada.6" However, the NAFTA ImplementationAct, when proclaimed in force,64 will require that the application be made within one year of publication anywhere, thereby introducing the concept of worldwide novelty to industrial design protection in Canada. 3.

IP Law Improvement Act

This legislation rendered changes to theIndustrialDesignActtoremedy further perceived serious shortcomings in the availability of industrial design protection. (a) TransferabilityofDesigns

In particular, amendments were made which, for the first time, allowed for both the transfer of existing designs and applications for registration by proprietors of such designs.65 Previously, the onlyperson entitledto apply was the proprietor of the designwho was eitherthe author, or inthe case ofa commissioned design, theperson commissioning the design. This meant that legal title to a design authored on speculation could only be transferred after the author had applied and secured a registration of the design.

IPLaw Improvement Act, supra note 27, s. 24, amending IndustrialDesign Act, supra note 7 (adding new s. 30). The transitional provision of the IP Law Improvement Act stipulates 62

that any subsequently arising matter shall be dealt with and disposed of in accordance with the provisions ofthe IndustrialDesignAct "as it reads when the matter arises", but is silent on whether the repealed section 14 still governs the validity of registrations granted when it was in effect: see IPLawlmprovementAct,s. 24 (adding s. 30(2)). 63 MiscellaneousAct, supra note 59, ss. 47-52, amending CopyrightAct, supranote 2, ss. 49-61. 64 NAFTA Implementation Act, supra note 35, s. 162, amending IndustrialDesign Act, supra note 7, s. 6. 65 IPLaw Improvement Act, supra note 27, s. 13, amending IndustrialDesignAct, s. 4; s. 18, amending s. 12(1); s. 19, amending s. 13(1).

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In addition, this legislation removed the obligation for marking 66 by repealing section 14. In order to keep the statutory bar, section 6 was amended. This section governs the Minister's obligation to register qualifying applications.6 7 (c) Injunction Only Where InnocentInfringement This legislation also introduced a limitation on available remedies to injunctive relief in the case of innocent infringement except where the specified design registration mark, a "D" in a circle along with the proprietor's name, has been marked on articles to which the design pertains.6 1 4.

NAFTA Implementation Act

Articles 1701 and 1713 of Chapter 17 ofNAFTA set out the obligations of the contracting countries in respect of industrial designs.6 9 As mentioned, Article 1701 requires Canada to give effect to the Paris Convention. In terms of industrial designs, this imposes an obligation to ensure that lack of marking is not a reason for the unenforceability of an industrial design registration. The NAFTA ImplementationAct contains aprovision repealing section 14, 71 but in view of the effect of the IP Law Improvement Act the transition provisions of the NAFTA ImplementationAct will operate to repeal this superfluous 7 provision. ' Article 1713 of NAFTA sets out requirements specific to industrial designs. 72

S. 20, repealing s. 14. S. 14, amending s. 6. Apparently a convenient place to introduce a statutory bar to qualification. 68 S. 21, amending s. 17; s. 24, amending s. 30 [adding new s. 30]. The latter section established a transitional provision which similarly prevents, in the case of earlier registrations marked as required, the application of the limitation to injunctive relief: see new s. 30(5) added 66 67

by IP Law Improvement Act, s. 24. 69 See above, Part II.A.5. 70 NAFTA Implementation Act, supra note 35, s. 165. 71 Indeed, several of the provisions of the two bills embodying these two

Acts with the result that elaborate transitional clauses were incorporated to eliminate overlapped superfluous provisions. 7 See above, Part II.A.5.

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(a) Right ofAction Expanded In particular, the right of action required under NAFTA has necessitated an Design Act. Expanded expansion of the right of action contained in the Industrial 73 versions of sections 11 and 15 address this obligation. (i) ProhibitedConduct the Section 11, as amended by the NAFTA Implementation Act, clarifies design the which to articles for prohibited conduct in respect ofboth articles and kits Such has been applied and also introduces the test of substantial difference. exposure or offering prohibited conduct includes the making, importation, sale, rent, and to which for sale or rent of any article inrespect of which the design is registered the design or a design not differing substantially therefrom has been applied. Section 11 also introduces a separate right of action in respect of each variant of a set represented in a and in respect of the design applied to each article 74 defined. registration. "Variants" and "set" are newly (ii) Action for Infringement -

By ProprietorOrExclusive Licensee

the right of Section 15, as amended by the NAFTA ImplementationAct, extends 75 action to exclusive licensees subject to the terms of the license. -

Remedies Available

the Section 15.1, as amended by the NAFTA Implementation Act, expands specifically and require circumstances the as available remedies to include such orders damages orprofits, punitive damages and disposal of infringing lists injunctive relief, 76 articles or kits. (b) Three Year Limitation Period ImplementationActextends the limitationperiodto Similarly, the NAFTA 7 1 year. one years from

73

three

NAFTA Implementation Act, supra note 35, s. 164, amending IndustrialDesign Act,

supra note 7, s. 11; s. 166, amending s. 15. 74 S. 161(1), amending s. 2. S. 166, amending s. 15. 75 76

Ibid.

77

S. 169, amending s. 18.

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(c) Worldwide Novelty Act requires worldwide novelty, As mentioned, the NAFTA Implementation 78 although it is not required by NAFTA. C. Patent Act79 1. An Act to Amend the Patent Act80 This legislation effected significantrevisionto thePatentActbyway of changes of general application and by way of specific changes to the patenting and compulsory licensing of pharmaceutical-related inventions. In view of the Patent ActAmendmentAct, 19921 andits repeal ofcompulsory licensing ofpharmaceutical patents,8 21 will onlyreport on the 1987 amendments to pharmaceuticalpatents in the context of the discussion on the 1992 amendments. (a) First-To-File In terms of general changes, the most significant was the move from a regime where entitlement to a patent was determined on a first-to-invent basis to a regime that utilizes a first-to-file scheme.8 (i) Entitlement The first-to-file system awards entitlement to a patent to the inventor with the earliest priority date with priority established by the Canadian filing date or an earlier Paris Convention" filing date. 5 To rely on a Paris Convention filing the inventor must file in Canada within one year of filing in any country adhering to the ParisConvention.86

78 79

See above, Part II.B.2.(c).

80

An Act to Amend the PatentActandtoProvideforCertainMattersin Relation Thereto,

R.S.C. 1985, c. P-4.

R.S.C. 1985 (3d Supp.), c. 33 [hereinafter 1987 PatentAmendments]. 81 S.C. 1993, c. 2, [hereinafter 1992 PatentAmendments]. 82 S. 3, repealing PatentAct, supra note 79, s. 39 1987PatentAmendments,supranote 80, ss. 8-10, amending PatentAct,supranote79, 83 ss. 28-29. 4 Union Convention ofParis,20 March 1883, Can. T.S. 1951 No. 10 [hereinafter Paris Convention] (entered into force in Canada 30 July 1951). 85 1987 PatentAmendments, supra note 80, s. 8 amending PatentAct, supra note 79, ss. 27(l)(a) & (b). 86 S. 10, amending s. 28.

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(ii) QualifiedAbsolute Novelty In addition, aside from defeating a rival applicant, the question of novelty of the first applicant's invention falls to be determined at the priority date on the basis of worldwide absolute novelty. Therefore, any disclosure before the priority which makes the invention available to the public will bar the grant of a patent for that invention.8 7 There is a one year grace period in respect of disclosures made by the applicant or persons deriving knowledge of the invention from the applicant either directly or indirectly.8 (iii) DeferredExamination In order to ease the administration of the system, the 1987PatentAmendments introduced the practice common to many first-to-file regimes of examination by request only. 9 (iv) Applications Laid Open -

Public Inspection and the Right to File PriorArt

As well, the procedure of opening pending applications to public inspection ° has been instituted. Public inspection is accompanied by the right to file with the Commissioner of Patents such prior art as one believes may have a bearing on the patentability of any pending claim. 91 -

Liabilityfrom the Laid Open Date

With the disclosure ofthe invention forpublic inspection, however, an applicant risks the consequence of the loss of secrecy should no patent be granted. This harsh possibility is counter-balanced in that liability for infringement flows from the date 92 an application is laid open. (b) Extended Term The 1987 PatentAmendments also expanded the duration of patents issuing from applications under the new regime to twenty years from the date of the Canadian filing. 93 A price, however, accompanies this expanded term in the form of 87

88 89 90

91 92 93

S. 8, amending s. 27(l)(c). Ibid. S. S. S. S. S.

12, amending s. 35. 2, amending s. 10. 11, amending s. 34. 21, amending s. 55. 16, amending s. 46.

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maintenance fees payable at stages during both the pendency of the application and the tenure of the patent. 94 (c) Re-examination A formal summary 9 procedure is introduced by this legislation which enables anyone to request re-examination of any claim of a patent by filing prior art and explaining its pertinency. 96 A Board is established by the Commissioner upon receipt of such request which must then make a preliminary determination whether the prior art raises a substantial new question as to the patentability of the impugned claim. 97 In the event that the Board determines that the prior art raises such a question, thepatentee is given an opportunity to respondwhereupon re-examination occurs. 98 If appropriate, after any such re-examination a claim can be revoked or restricted by the Board.99 (d) Transition

Applications filed andpatents issuedbefore this legislation are dealt withby the Act as it read before this legislation (effectively October 1, 1989), save that the amendments to the compulsory licensing of pharmaceuticals apply to any such 00 patents.' 2. Patent Cooperation Treaty' 0 The treaty establishes a two phase procedure for the filing and prosecution of patent applications on aworldwide coop erative basis. The firstphase or international phase consists of two stages. The first stage under Chapter I encompasses the filing and searching procedure while the second under Chapter II represents an optional preliminary examination stage. The second phase comprises the national phase of final examination and granting.

1987 PatentAmendments, supra note 80, s. 16 (adding new s. 46). S. 18 (adding new s. 48.3). 96 Ibid. (adding new s. 48.1). 97 Ibid. (adding new s. 48.2(1)-(2)). 98 Ibid. (adding new s. 48.2(4)-(5)). 99 Ibid. (adding new s. 48.4). 100 SS. 27 & 28. 101 19 June 1970, Can. T.S. 1990 No. 22 [hereinafter PCTJ (entered into force in Canada 2 January 1990). 94 95

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(a) InternationalPhase (i) ChapterI- Filingand Search The primary feature of this Chapter and the international phase consists in the applicant's ability to file a single application in a single language in a single office. The applicant thereby secures a filing date for use in subsequent entry into the national phase of those treaty countries designated in the single application without having to pay at the start the filing fees in each country of interest. 10 2 Publication of the international application is to occur promptly eighteen months after the priority date of the application. 103 Additionally, one of several International Searching Authorities established under the treaty will conduct an international search of documents which may have a bearing on the patentability of the claimed invention and report the results to the applicant. 1°4 (ii) ChapterII- PreliminaryExamination If the applicant desires, an international preliminary examination can be demanded by the applicant, provided the applicant indicates which countries such an examination result is to be used. 10 5 Significantly, this demand postpones entry into the national phase for a further ten months. 06 (b) NationalPhase Entry into the national phase at the end of either Chapter I or Chapter II generally consists of the applicant taking steps within the time limit to pay the required national filing fees for each country of interest and supplying, where necessary, a translation of the international PCTapplication.107 The treaty permits the imposition of further requirements such as the appointment of an agent or declaration of the inventor or assignment documents providedthe applicanthas an opportunity to meet such requirements even after the expiry of the time limit.1 8 Art. 11. With the exception of the United States and the Philippines, most countries have a first-to-file patent system. Accordingly, a PCT application constitutes a valuable means of deferring the costs of filing in every country of interest since, by virtue of article 22, entry into the nationalphase is postponed for at least 20 months after the priority date (which may be the PCT filing date or an earlier date secured by a convention filing). 102

103

Art. 21.

Arts. 15 & 18. At the same time as the report, the applicant is reminded that entry into the national phase begins 20 months afterthe priority date unless Chapter II applies. Consequently, before embarking on the costly entry into the national phase, the applicant has some basis for evaluating the chances of obtaining valid patents. Art. 31. 105 Art. 39. 106 Arts. 22 & 39. 107 104

109

Art. 27(2).

1993]

3.

Intellectual Property,PartI

Patent Act Amendment Act, 1992

In summary, this legislation repealed the scheme for the compulsory licensing ofpharmaceuticals' 19 in favour of greater power to the Patented Medicines Prices Review Board."' (a) Elimination ofPharmaceuticalCompulsory Licensing Compulsory licenses existing as of December 20, 1991 continue in effect according to their terms and the pertinent sections of the scheme that restrict the exercise of the right under such licenses continues to operate."' Any licenses granted after December 20,1991 cease to have effect as of that date and the rights thereunder are extinguished.11 2Infringement, however, does not lie in respect of prior acts done under such a license."' (b) PatentedMedicinesPricesReview Board Criminal sanctions for violation of either the relevant sections of the PatentAct or orders of the Board are imposed to ensure compliance." 4 These summary conviction sanctions include both fines and imprisonment appropriate to summary conviction, although each day in violation constitutes a separate offence." 5 In addition, the powers of the Board are increased to permit it to compel the reduction of prices by a specific amount and for a particular period as well as to compel payment of a specified amount to the government." 6 At the same time, provision is made for sharing such levied amounts with the provinces." 7 (c) Infringement ofPharmaceuticalPatents The reverse onus provision of former subsection 39(2) now appears as section 55.1.1 8 The section deems any substance of the same chemical composition and constitution as anew substance for which the production process is patented to have been produced by the patented process." 9 109

110

See above, Part II.C.1. 1992 PatentAmendments,supranote 81,s. 6, amending PatentAct,supranote 79, s. 76

(adding new s. 76.1); 1992 PatentAmendments, s. 7 (adding new ss. 79 to 103). 11

1992 PatentAmendments, supra note 81, s. 11.

S. 12(I). S. 12(2). "4 S. 6., amending PatentAct, supra note 79, s. 76 (adding new s. 76.1). '15 Ibid. (adding new 76.1(4)). 116 Ibid. (adding new ss. 83 & 84). 117 Ibid. (adding new s. 103). 118 S. 4, amending s. 55 (adding new ss. 55.1 and 55.2). The amendment reconstitutes subsection 39(2) as section 55.1 and adds section 55.2. 112 11

119

NAFTA ImplementationAct, supranote 35,s. 193. The section extends the reverse onus

in section 55.1 of the PatentAct,supra note 79 to any new product.

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A new section, however, pemits the manufacture, use and sale of a patented 20 invention both for the development of information required at law' and for 2 controlled stockpiling in anticipation of the expiry of the patent.' ' 4. IP Law Improvement Act This legislation provides an improved structure to the Patent Act and in particularto the first-to-file and qualifiedworldwide novelty criteriafor entitlement.'2 (a) EntitlementRevised (i) GrantMandatory The grant of a patent where a qualifying application is filed is constituted as a 3 positive obligation on the Commissionerby new section 27.12 The prescription for the specification formerly contained in section 34 is now included in section 27.124 (ii) BiologicalDeposits Biological deposits are accepted and shall be considered in respect of assessing withthe specificationrequirements for disclosure contained in subsection compliance 27(3). 125 (iii) Non-Obviousness Legislated In addition to the first-to-file and novelty requirements, this legislation codifies by introducing the concept of "nonthe inventive ingenuity gloss on "invention" 126 entitlement. for obviousness" as a criteria (b) Laid Open Applications Includedas PriorArt Laid open applications for a patent join patents and printed publications as qualifying prior art for the purposes of filing prior art in respect of a pending 1992 PatentAmendments, supra note 81, s. 4., amending PatentAct,supranote 79, s. 120 55 (adding new s. 55.2(1)). 1992 PatentAmendments, supra note 81, s. 4 (at 55.2(2)). 121 12 1PLawimprovementAct,supranote27, ss. 31-33, amending PatentAct,supranote79, ss. 27 & 28. Section 28 andnew sections 28.1 to 28.3 establish the criteria for entitlement beyond the invention and specification requirements. A new section, 28.4, deals with the effect of both priority requests and withdrawals. 123 IP Law ImprovementAct, supra note 27, s. 31. 124

Ibid.

125

S. 41, amending PatentAct, supra note 79, s. 38 (adding news. 38.1). S. 33, amending s. 28 (adding new s. 28.3).

126

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IntellectualProperty,PartI

application under section 34(1)

27orre-examination

ofapatentunder section48. 1.128

(c) InfringementDeemed at Laid Open Date A new provision deems any conduct giving rise to an action for reasonable compensation for damage sustained after the application is laid open as infringement, and deems any such action as an action for infringement. 129 (d) LimitationPeriodLegislated Section 55.01 prevents the award of any remedy for acts of infringement committedmore than sixyears before commencement ofthe actionforinfringement. 30 (e) Transition (i) Before October 1, 1989 Applications for patent filed before October 1, 1989 and patents issued before that date are to be dealt with as theActreadbefore that date, save that the new section 3 (38.1) regarding biological deposits also applies.1 ' (ii) PatentsIssuedAfter October 1, 1989 On the Basis of Pre-October1, 1989 Application These patents are dealt with as theActreadbefore that date save thatnew section 32 38.1 applies, the term is as extended and re-examination is available. (iii) Conflicts between Pre-October1, 1989 Application and Post-October1, 1989 Application Transitional section 78.3 of this legislation deals with such possible conflicts under section 43 of the Act on the basis of priority of invention where the postOctober 1, 1989 application claims Conventionpriority from apre-October 1, 1989 application.'33

127 128

1P Law Improvement Act, supra note 27, s. 37 (adding new s. 34.1(1)). S. 45 (adding new s. 48.1(1)).

1'3

S. 48, amending PatentAct, supra note 79, s. 55. Ibid.

131 132 133

S. 55, amending s. 78 (adding new s. 78. 1). Ibid. (adding new s. 78.2). Ibid. (adding new s. 78.3).

129

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(iv) Post-October1, 1989 Applications and Patents These applications filed before this legislation and matters affecting patents arising before this legislation are dealt with as the Act reads after this legislation except that former subsection 27(2) also applies.3 4 In these circumstances, former subsection 27(2) qualifies the requirement for absolute novelty before filing by ignoring disclosure causedby the issuance of a patent to the applicant before filing, provided the Canadian filing is within twelve months of the first of any other applications for patent for the invention elsewhere. 5.

NAFTA Implementation Act

regarding the ParisConvention The pertinent Articles ofNAFTA include 1701 35 and 1709 which deals specifically with patents. (a) PriorAcquisition Previously, section 56 permitted the use and sale of articles and manufactures embodying an invention provided they were acquired before the issuance of any patent for the invention. To comply with the ParisConvention, any such acquisition must have occurred before the earlier of the filing date or the priority date of the patent application, if any. 3 6 Certain transitional rules govern inventions covered by pending applications. 137 (b) Government Use The government's ability to use patented technology is regulated by an amended section 19138 which incorporates the provisions mandated by Article 1709(10) of NAFTA.1 39 The significant changes include the requirement that the Commissioner of Patents take into account the economic value of any such authorized use when settling the compensation to be paid by the government for such authorization.'40 As well, the government is first obliged to seek a voluntary 41 license.'

134 135 136

Ibid. (adding new s. 78.4). See above, Part II.A.5. NAFTA ImplementationAct, supranote 35, s. 194, amending PatentAct,supranote 79,

s. 56. 137 138 139 140

s. 19(4). 141

Ibid. S. 191, amending s. 19 (adding new s. 19.1). Supra note 36. NAFTA ImplementationAct,supra note 35, s. 191, arnendingPatentAct,supranote 79, NAFTA Implementation Act, supra note 35, s. 191 (adding new s. 19.1(1)(a) & (b)).

IntellectualProperty,PartI

1993]

(c) ExpandedReverse Onus As noted, section 55.1, as amended, expands the onus to embrace any "new 142 product". (d) PatentAvailability Without Discrimination Under NAFTA, patents must be available without discrimination as to field of technology, the territory of the treaty country where the invention is made and whether products are imported or locally produced. 143 The previous discrimination in the field ofpharmaceuticals has been eliminated by the 1992 Amendments as reported above in Part II.C.3.(a). The remaining discrimination based on local production in the context of the 44 abuse of patent provisions is removed by the repeal of the pertinent provisions. 45 D. Trade-marks Act 146 1. Plant Breeders' Rights Act

(a) Use ofPlant Variety DenominationsProhibited As a result of the requirements for unique denominations for plant varieties protected under this Act, a new section has been added which prohibits the adoption ofany denomination as a trade-mark or use ofany denomination in a misleading way or any adoption or use of any mark likely to be mistaken for a denomination.4 7 A further new section has also been added to prohibit any use in connection with a business, whether as a trade-mark or otherwise, of any denomination adopted contrary to section 10.1.148

2. Miscellaneous Statute Law Amendment Act, 1992 As with the other intellectual property statutes, this legislation effected only minor amendments. Significantly, the term for taking formal opposition to apending application was enlarged to two months from tlie date of advertisement inthe Trade49 marks Journal rather than one month. See above, Part II.G.3.(c). Supra note 36, art. 1709(7). '4 NAFTA ImplementationAct, supranote 35,s. 189, amending PatentAct,supranote 79, s. 2; ss. 195-198, amending ss. 64-67. 145 R.S.C. 1985, c. T-13. 146 S.C. 1990, c. 20. 147 S. 79, amending Trade-marks Act, supra note 145, s. 10 (adding new s. 10.1). 148 S. 80, amending s. 11 (adding new s. 11.1). 149 MiscellaneousAct, supranote 59, s. 134, amending Trade-marksAct, supra note 145, 142 143

s. 38(1).

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As well, the procedure under section 46 for expungement for non-renewal was amended. 50 3.

IP Law Improvement Act (a) Licensed Use Accepted

The main feature of this legislation is the elimination of the registered user scheme and its replacement with a provision that deems qualifying licensed use as use by the owner of the trade-mark registration.' 5' In particular, there must be a license and the owner must have direct or indirect control of the character or quality 52 of the wares and services under the license. A presumption of licensed use with such control arises upon notice to the public that use of a trade-mark is under license and of the identity of the owner.'53 Similar entitlement to take action for infringement as under former section 50(4) is bestowed upon a licensee. 54 However, both the existing register and index 155 of registered users are to be maintained.

(b) Proposed Use Applications The prescriptions for both the statement of intention to use and the declaration of use are revised to require greater particularity in terms of use by the applicant/ owner or by licensee or both.'56 4. NAFTA Implementation Act As indicated previously, the concurrent legislative activity in respect of intellectual property law improvement andNAFTA has meant that the Bills for each purpose containedmanyparallel provisions as well as elaborate transitionprovisions to eliminate superfluous sections. The NAFTA ImplementationAct provisions additional to those thatparallel the IP Law Improvement Act address particular changes required by NAFTA.

S. 135, amending s. 46(2)-(3). IP Law ImprovementAct, supranote 27, s. 69, amending Trade-marksAct, supra note 145, s. 50. 152 Ibid. (at new s.50 (1)). 153 Ibid. (at news. 50(2)). 154 Ibid. (at news. 50(3)). 155 S. 61, amending s. 26; s. 62, amending s. 28. 156 S. 64, amending s. 30(e); s. 68, amending s. 40. 150 'S1

IntellectualProperty,PartI

1993]

(a) Deemed Abandonment ofApplicationsfor Non-Use Article 1708(3) of NAFTA requires Canada to ensure that no application is refused solely on the ground that intended use has not occurred less than three years after filing. 5 7 Section40(3) is amended to provide that until at least three years after deem an application abandoned for failure to provide the filing the Registrar cannot 58 required declaration.1 (b) Non-Use ofRegisteredMark As with applications, Article 1708 imposes arestriction on the Treaty countries' ability to expunge a registered trade-mark for non-use) 59 This legislation requires the passage of two years ofcontinuous non-use before expungementfornon-use can occur. Section 45 is amended to incorporate such restriction into the summary expungement procedure established by it. 6 (c) BorderEnforcement As with copyright, specific provision is made for court-ordered Ministerial detention of imported wares which have not been released upon an application by the owner of a registered trade-mark. 161 As before, interim custody can be ordered in respect of similarly offensive wares that have nevertheless been released by 62 Customs and are about to be distributed in Canada. The applicant must satisfy the court in both instances that the distribution of such wares would be contrary to the Trade-marksAct. 63 Again, within two weeks of notification of detention before release, the applicant must commence an action for the final determination of the legality of the importation or distribution of the wares. 164

Where an intentto counterfeit or imitate exists in circumstances where the court has found such distribution would be contrary to the Trade-marksAct, the court cannot, other than in exceptional circumstances, make an order requiring or 65 permitting the exportation of such wares in an unaltered state.

157

Supra note 36.

NAFTA ImplementationAct, supranote 35, s. 231(2), amending Trade-marksAct,supra 158 note 145, s. 40(3); s. 231(3), amending s. 40 (adding new s. 40(5)). 159 Supra note 36. 160 NAFTA Implementation Act, supra note 35, s. 232, amending Trade-marksAct, supra note 145, s. 45. 161 S. 234, amending s. 53 (adding new s. 53. 1). 162 Ibid. (s. 234 of the NAFTA ImplementationAct also converts s. 52 of the Trade-marks Act into s. 53.1). 163

Ibid.

164

Ibid. (at new s. 53.1(6)). Ibid. (adding new s. 53.3).

165

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III. NEw Sui GENERIS PROTECTION

A. Plant Breeders' Rights Act The new Act provides exclusive rights akin to patent rights relating to new varieties ofplants known as "plant breeder's rights". The rights are directed toward the regulation of propagating material for varieties. (1) New Varieties In order to qualify, a plant variety must belong to a prescribed category of species, be clearly distinguishable from all other commonly known varieties of such species, and be both stable and homogeneous.'66 (2) Exclusive Rights (a) Nature ofRights The plant breeder's rights include the exclusive rights to sell, produce for sale, and use as necessary for commercial production of further varieties, propagating material respecting the plant variety embraced by the rights. 67 (b) Exemption An exemption from the exclusive right to sell applies where the propagating material is sold outside Canada. However, any use of such propagating material in 168 Canada infringes the exclusive rights. (3) New In Canada 169 Protection is only available for varieties not yet sold in Canada.

(4) Applications and GrantofRights The Commissioner of Plant Breeder's Rights grants any plant breeder's rights 170 and conducts the necessary prosecution of applications for grant. 166 167 168

Supra note 146, s. 4.

S.5. S. 5(2).

169 S. 7. In the case of recently prescribed categories, the sale cannot have occurred before filing. In the case of other categories, the sale cannot have occurred before the effective date of the application which includes any appropriate priority: see ss. 7(a) & (b) and 11. 170 S.27.

IntellectualProperty,PartI

1993]

(a) Application Contents An application for grant must contain prescribed contents, be supported by prescribed documents and material, and include any request for exemption from the 17 1 compulsory licensing established under the Act.

(b) Denominationfor New Variety An applicant must propose a name for the new variety which must not be likely to mislead or cause confusion as to its characteristics, value or identity.'1 Once approved by the Commissioner, a denomination mustbe used exclusively in respect of the sale of that variety.' However, any new denomination leaves any other person's prior rights to the use of a designation unaffected. 74 (c) PreliminaryExamination The Commissioner may reject an application on the basis that the new variety is disqualified as a result of sale in Canada beforehand or is apparently not a new plant variety.'75 (d) Publication 76 If not rejected after preliminary examination, applications are published. 1

(e) Opposition Third parties may object to the grant of rights in respect of a published application on the same grounds entitling the Commissioner to rejectthe application.'"7 The Commissioner must consider such objection including representations from 7 both the objector and the applicant. 1 (f) Testing Examination Once published and only after any opposition proceeding, the Commissioner must scrutinize an application to determine whether in fact the variety is a new 11 17 1 174

175 176

177 178

17

S. S. S. S. S. S.

9.

14. 15. 16. 17. 70(1)(a). S.22. S.22(4). S.23.

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variety. 179 In turn, the applicant must furnish such propagating material and information as the Commissioner requests for this testing. 180 The Commissioner may rely on test results from comparable foreign authorities in lieu of fresh testing and may reciprocate.' (g) Conditionsfor Grant When the Commissioner has approved a denomination and has been satisfied that an application relates to anew variety and otherwise conforms with the Act, the respecting thatnew variety. 8 2 Ifnot Commissioner must grantplantbreeder's rights 183 refused. be so satisfied, then the grant must (5) CompulsoryLicensing (a) By Regulation Respecting Categories The grant ofplantbreeder's rights is subject to anyautomatic licensingprovided for by regulations respecting the variety's category. 184 (b) On Application The Act also provides for the compulsory licensing of plant breeder's rights on application by third parties. In conferring any license, the Commissioner must try to secure a variety's public availability at reasonable prices, its wide distribution and the maintenance of its quality8 5 and also reasonable remuneration to the holder of 186 the plant breeder's rights. The holderoftheplantbreeder's rights may also be requiredto makepropagating material available to the compulsory licensee."8 7 Compulsory licensing by application is available regardless of the grant of any exclusive license by the holder of the rights and also cannot be contracted out.'88

1SO S. 23(3)(b). IsI S.24. 182

S.27(1).

193

S. 27(2). S.29.

18

185 S. 32. S. 32(2). 186 S. 32(3). 197 S.33. 188

1993]

IntellectualProperty,PartI

(6) Term (a) Regular The term of the grant ofplantbreeder's rights is eighteen years from the grant 19 of the subject to earlier annulment, 90 or revocation in the event of certain failures 192 holder of the rights.' 9' Annual fees are required to maintain the rights.

(b) With ProtectiveDirection An applicant can effectively gain protection inthe application stage against acts that would constitute infringement of plant breeder's rights if issued.' 93 The applicant must predicate such request upon an undertaking to only sell propagating material for limited essentially non-commercial purposes during the application stage.194 Violation of such undertaking can result in the withdrawal of the protection during the application stage and revocation of plant breeder's rights. 95 In turn, both requests for such protection and ensuing grants or withdrawals are published. 6 (7) MaintenanceofPropagatingMaterial The holder of the plant breeder's right must preserve propagating material 97 throughout the term of the right and permit inspections by the Commissioner. (8) Infringement (a) Right of action Action may be taken by the holder of the right and all those claiming under the holder.198In addition, specific entitlement to take action for infringement is bestowed upon a licensee. 99

189

S. 6.

195

S. 34. S. 35. S. 6(2). S. 19(3)-(5). S. 19(2). SS. 20 & 35(1)(c).

196

S.70.

190 191 192 193

'94

197 198 199

S.30. S. 41(1). S.45.

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(b) Remedies The available remedies include damages, accounting of profits, and orders the court may make an order for the respecting offending material.200 In addition, 21 compensation of an aggrieved person. (c) Jurisdiction (i) Infringement

Jurisdiction for infringement is given concurrently to the Federal Court and provincial courts.

22

(ii) Expungement, Invalidity and DeclarationofNon-Infringement

The Federal Court is given exclusive jurisdiction in respect of expungement or variation ofthe register. 203 Further, specificjurisdiction is given to the Federal Court declarations of invalidity on specific limited grounds and nonin respect of both 4 infringement.

2

1

(d) Limited Defence oflnvalidity

A defendant in an action for infringement may only plead certain specified grounds of invalidity as amatter ofdefence.20 5 These limited grounds comprise noncompliance with the requirement for a clearly distinguishable variety, 20 6 sale of the variety beforehand, 20 7 and failure to meet the obligation to preserve propagating 20 ° material for the variety.

(9) CriminalOffences A series of specific offences are established in the Act punishable by fine on 209 summary conviction and by both fine and imprisonment on indictment.

200

201 202 203 204

205 206 207 208 209

S.41(2). S. 41(2)(b).

SS. 42 &43. S.43. Ibid. S. 46. S. 4(2)(a). S. 7(1).

S. 30(1)(a). S. 53(4).

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(a) Secrecy prosecution Information onvarieties and applicants provided inthe context of the 20 officials. by secret kept be to are rights breeder's plant of grants of (b) Misuse ofDenominations A series of offences relating to the misuse of denominations are established including: -wilful failure to use only the approved denomination for a variety for the purpose of sale of propagating material, as required by section 15; -wilful misdesignation of propagating material; and -false representation of a variety as protected by plant breeder's rights.2 ' (c) FalseRepresentationsIn Respect ofAdministration False representations, false entries in any record or document or the tendering of documents containing any false information made knowingly constitutes an 22 offence. (10) PublicationEliminates any Defence ofFactualIgnorance In respect of any civil, criminal or other proceeding,3relevant knowledge is 21 deemed as a result of publication in the CanadaGazette. B. Integrated Circuit Topography Act2" 4 The Topography Act provides exclusive rights similar to patent rights in the "topography" or circuit designs of integrated circuits, commonly known as semiconductor chips and the integrated circuits incorporating such topographies. Topographies are the three-dimensional representations of the layers of material which form integrated circuits.

210

S. 53(1).

211 212

S. 53(2). S. 53(3).

S. 72. S.C. 1990, c. 37 [hereinafter Topography Act]. Delay in promulgation of necessary regulations postponed the coming into force of this new protection until May 1, 1993. 213 214

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(1) Topography A topography is defined to be the design, however expressed, of the disposition of either both the interconnections, if any, and elements for a product intended to perform an electronic function or the elements, if any, and the interconnections for making an intermediate customization layer for such a product.2 5 This definition incorporates the definition for integrated circuit product: "a product, in a final or intermediate form, that is intended to perform an electronic function and in which the elements, at least one of which is an active element, and some or all of the interconnections, are integrally formed in or on, or both in and on, a piece of 26 material". (2) Exclusive Rights Given by Registration Registration gives the exclusive right to reproduce the topography or any substantial part of it, make integrated circuit products incorporating the topography, and both import or sell, lease or otherwise commercially distribute either the topography or any substantial part of it or integrated circuit products incorporating 217 the topography or both. (3) Originality The Act only applies to original topographies.21 8 Qualifying originality requires that the topography be more than the product of mere reproduction, result from intellectual effort and not be commonplace among creators of topographies or manufacturers of integrated circuit products at the time of its creation. (4) TopographiesTransferableand Capable ofBeing Licensed The topography, whether registered or unregistered, can be transferred or licensed in whole or in part.2 19 (5) RegistrationProcedure The creator of the topography or the successor-in-title to thereto may apply. 220 An application must contain a title for the topography, show the applicant's interest 2 in the topography, declare whether and when it was first commercially exploited ' 215

S.2.

216

Ibid.

217 218 219 220 221

S.3. S. 4(l)(a). S.7. S. 16(1). S. 16(2).

1993]

IntellectualProperty,PartI

and, by regulation, show sufficient features of the topography to permit identification tm of it. two years after Registration may be barred if the application is filed more than 223 anywhere. topography the of exploitation the first commercial (6) Term of the date of first The right subsists for a period often years from the22earlier 4 commercial exploitation or the filing of the application. (7) Infringement (a) Reproduction Required Infringement is predicated on reproduction of the registered topography since the exclusive right does not extend to independently created topographies.2m (b) Reverse EngineeringExemption Both reproduction of topographies and the making of integrated circuits incorporating such topographies, solely for the purpose of analysis, evaluation, or teaching with respect to topographies, are exempt. 6 Similarly, private, non2 27 commercial acts are exempt. (c) Innocent Infringement If the infringer establishes they were unaware and had no reasonable grounds to suspect that the topography was registered, then where commercial exploitation has taken place in Canadabeforehand only injunctive relief is available .2 8However, the marking of integrated circuits with the title appearing on the register disentitles infringers from such benefit.2 29 If the infringer can establish they did not know and had no reasonable grounds to believe that the infringing integrated circuit was manufactured and sold for the first time without the registered topography owner's consent, a different limit on the plaintiffs remedies may apply. In such circumstances, save where infringement

2n =3 M

Integrated Circuit TopographyRegulations, SOR\93-212, ss. 13 to 15. TopographyAct, supra note 213 at s. 18(3). S.5.

227

S. 6(3). S. 6(2). Ibid.

229

S.11(I).

229

S.11(2).

22 226

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occurs by reproduction alone, only injunctive relief is available and the infringer can sell any stock upon payment of a reasonable royalty. 23 0 (d) Limitation Period

Reliefbeyondinjunctive reliefis unavailable for acts ofinfringement committed more than three years before the commencement of the action? 31 However, if the infringement would not have come to the attention of a reasonably diligent owner when the infringement orlicensee, the action maybe commencedwithin three years of 232 plaintiff. the of attention the to come have should or came (8) Action for lnfringement

An action maybe brought by the owner or a licensee and the available remedies include any order as required including injunction, damages or an accounting of products. 233 In addition, profits, punitive damages, and disposal of infringing 234 imported infringing products may be detained. The Federal Court has concurrent jurisdiction in respect of infringement or6 ownership of a topography35 and exclusive jurisdiction in respect of the register.2

230

234

S. 10. S. 12(1). S. 12(2). SS. 8 & 9. S. 14.

23

S.23.

231

23 33

236

S.24.