Order Fixing November 5, 2018 as the Day on which Certain Provisions of the two Acts Come into Force: SI/2018-49
Canada Gazette, Part II, Volume 152, Number 14
July 11, 2018
COMBATING COUNTERFEIT PRODUCTS ACT
ECONOMIC ACTION PLAN 2015 ACT, NO. 1
Order Fixing November 5, 2018 as the Day on which Certain Provisions of the two Acts Come into Force
P.C. 2018-880 June 22, 2018
Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry,
- (a) pursuant to subsection 63(1) of the Combating Counterfeit Products Act, chapter 32 of the Statutes of Canada, 2014, fixes November 5, 2018 as the day on which subsection 50(3) of that Act comes into force; and
- (b) pursuant to subsection 72(4) of the Economic Action Plan 2015 Act, No. 1, chapter 36 of the Statutes of Canada, 2015, fixes November 5, 2018 as the day on which sections 63 and 68 of that Act come into force.
(This note is not part of the Order.)
Pursuant to subsection 63(1) of the Combating Counterfeit Products Act, this Order brings subsection 50(3) of that Act into force on the day indicated in this Order, i.e. November 5, 2018. Further, pursuant to subsection 72(4) of the Economic Action Plan 2015 Act, No. 1, the Order also brings sections 63 and 68 of that Act into force on the same date.
The objective of the Order is to establish the coming into force of amendments to the Patent Act and the Trade-marks Act that facilitate the making of regulations on the provision of documents and information to the Canadian Intellectual Property Office (CIPO), through either the Registrar of Trademarks or the Commissioner of Patents. This includes the authority to determine the time at which documents are deemed to be received and permits the making of regulations to extend periods of time that expire on prescribed days and days designated by the Registrar of Trademarks and the Commissioner of Patents.
An amendment to section 65 of the Trade-marks Act was made through subsection 50(3) of the Combating Counterfeit Products Act. This Act received royal assent on December 9, 2014, but is not yet in force; a separate order in council is required to do so. This provision will add a new subsection to section 65 of the Trade-marks Act, and will permit the Governor in Council to make regulations respecting the provision of documents and information to the Registrar, including the time at which they are deemed to be received by the Registrar. Amendments to the Patent Act, the Trade-marks Act, and the Industrial Design Act (the acts) to modernize the administration of intellectual property (IP) rights received royal assent on June 23, 2015, as a part of the Economic Action Plan 2015 Act, No. 1 (Division 3, Part 3). The amendments to the acts replace section 78 of the Patent Act and section 66 of the Trade-marks Act respectively, and contain provisions for prescribing days for the purposes of calculating extensions of deadlines, including in exceptional situations where CIPO is closed to the public. These provisions received royal assent, but were not brought into force and require a separate order in council to do so. With respect to the Industrial Design Act, the Order in Council to bring those provisions into force is already part of a separate submission that is expected to come into force at the same time as this one (November 5, 2018).
These amendments were proposed due to requests from stakeholders and operational issues encountered at CIPO. Since 1998, when an ice storm affected operations in the National Capital Region, CIPO has explored the option of being able to designate days when deadlines would be extended as CIPO is unable to process requests. Stakeholders shared these concerns during formal pre-consultations held before drafting amendments to the acts in 2014.
CIPO wishes to ensure that the rules governing extensions of time are consistent across CIPO’s various lines of business (specifically for patents, trademarks, and industrial designs). Therefore, this Order in Council is proposed, coupled with regulatory amendments, so that the rules regarding automatic extensions of time for patents and trademarks will be aligned with those for industrial designs.
Budget 2018 announced a national IP strategy with the goal of helping Canadian businesses, innovators, and entrepreneurs understand and protect their IP rights. Ensuring clarity of procedures and determining when deadlines occur is crucial to make sure that applicants and rights holders can seek and maintain their IP protection. Making the legislative amendments proposed in this Order, coupled with the accompanying regulatory changes, will support these objectives by enshrining in law extensions of time when CIPO is closed to the public. In addition, by granting additional authority to designate days when extensions will automatically occur, the rights of those using the IP system will be protected.
CIPO will implement a proactive communications plan to promote the overall changes to the Patent Act, the Trade-marks Act, and their respective regulatory amendments. CIPO will promote the formalized extension of time provisions through efforts on its website, through social media, and targeted engagement with key stakeholders. The costs of bringing into force these legislative and regulatory amendments will be managed within the existing resources of CIPO.
CIPO has actively engaged with key stakeholders (i.e. IP agents who are regular users of the Canadian IP system) about the legislative and regulatory changes necessary to update the extension of time provisions. Moreover, IP agents have specifically expressed their desire for clarity regarding how holidays and office closures affect time period calculations and their preference that this be enshrined in the acts and regulations.
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada