Law Times

Law Times • sepTember 22, 2014 Page 11 www.lawtimesnews.com EU agreement Trade deals, treaties mean big changes for iP laws By arshy maNN Law Times fter years of negotia- tion, Canada and the European Union have finalized the text of the comprehensive economic and trade agreement. While the text isn't yet publicly available, the deal is already having an impact on Canada's intellectual property laws. During the negotiations, Can- ada promised to make "all reason- able efforts" to accede to interna- tional trademark treaties. After signing onto three trademark treaties this year, the Canadian government overhauled the coun- try's trademark system, including scrapping the use requirement, even though it could have enacted the agreements without doing so. "I think that the CETA dis- cussions led to Canada agree- ing to make amendments," says Scott MacKendrick, a partner at Bereskin & Parr LLP. "Those discussions led to the idea that we need to change things and that's essentially how we got to where we are." Canada had also promised to increase efforts to curtail counterfeit goods. To that end, the government introduced bill C-8, the combating counterfeit products act, last year. "That piece of legislation will provide benefits to the owners of registered trademarks with re- gards to customs enforcement of potential counterfeits," says Cyn- thia Rowden, head of Bereskin & Parr's trademarks practice group. The bill would also make it a crime to commit commercial trademark counterfeiting, simi- lar to existing criminal provi- sions under the Copyright Act, and provide broad powers to customs officials to seize goods suspected of copyright and trademark infringement. However, it's still unclear which provisions of bill C-8 are also in the European trade agree- ment. "The problem is that the government has not released the CETA text so there is no way of knowing precisely what is re- quired under that treaty and whether there is room for chang- es to bill C-8," University of Otta- wa Faculty of Law Prof. Michael Geist said during a parliamen- tary industry committee hearing last year. "The bill may be consis- tent with CETA, but without the text we can't know if alterations to the bill might still fall within the treaty requirements." Major changes to intellectual property laws around pharma- ceuticals and biotechnology are also likely to be part of the trade deal. Daphne Lainson, a partner with Smart & Biggar/Fetherston- haugh, says the trade deal is likely to include extended patent terms for pharmaceuticals subject to de- lays during regulatory approval. "The way it should work is to allow a company to effectively extend a patent term for up to two years, which can be incredibly significant in the pharmaceutical field because even an extra day of protection actually has significant value for a company," she says. "It was something of a dis- appointment because we were hoping for up to five years like they have in Europe, but it's bet- ter than zero." Canada's system of dual liti- gation between innovator and generic companies could also face an overhaul. Currently, if a court gives a generic producer approval to sell a drug in Canada, the innovator company doesn't have a right of appeal. "In the CETA negotiations, the Europeans were saying they would like to have an effective right of appeal for innovator companies," says Lainson. The government has indicat- ed it will be willing to grant that. But Lainson says some observ- ers are speculating the govern- ment may use that opportunity to end dual litigation altogether. "And so our system, we ex- pect, will likely start to resemble more the U.S. style of proceed- ing where you actually only have one set of litigation determining the rights, so you're only litigat- ing that patent as between the same parties and on that same drug once as opposed to poten- tially twice," she says. Lainson expects some differ- ences between the Canadian and American systems will remain. "We treat small-molecule pharmaceutical products the same way as biologics, which is different than the system in the U.S.," she says. But overall, she expects that after the trade deal takes ef- fect, Canadian pharmaceutical litigation may start to look more like the types of proceedings that occur under the U.S. Hatch- Waxman Act. The trade deal would also require Canada to put into legislation current regulations around data protection for in- novator companies. At the mo- ment, innovator companies can get eight years of data protection before a generic company can use the information to bring a product to market. That period of market exclusivity is likely to stay the same but will now be in the law itself. "Right now, it's part of the regulations, but the regula- tions are much easier to amend," says Lainson. While there has been an al- leged leak of the finalized text of the trade deal, the government refuses to confirm or deny if it's le- gitimate. Ratification of the treaty is likely to take years since all 28 European Union member states must approve it. LT FOCUS REACH ONE OF THE LARGEST LEGAL AND BUSINESS MARKETS IN CANADA! AVAILABLE ONLINE AND IN PRINT 8JUINPSFUIBOQBHFWJFXTBOEVOJRVF WJTJUPSTNPOUIMZDBOBEJBOMBXMJTUDPNDBQUVSFTZPVSNBSLFU FOR MORE INFORMATION CONTACT Colleen Austin T: 416.649.9327 | E: colleen.austin@thomsonreuters.com www.canadianlawlist.com Get noticed by the lawyers, judges, corporate counsel, finance professionals and other blue chip cilents and prospects who find the contacts they need for Canadian legal expertise at canadianlawlist.com with an annual Gold or Silver Enhanced listing package. ENCHANCE YOUR LISTING TODAY! Untitled-5 1 14-07-17 4:21 PM New in this edition • All the latest amendments to the Small Claims Court Rules and forms, including the amendments in O. Reg. 230/13 in force January 1, 2014 and amendments in 44/14 in force July 1, 2014 • All amendments to the statutes contained in the consolidation • New legislation – portions of the Payday Loans Act, 2008, portions of the Funeral Burial and Cremation Services Act, 2002, the Wireless Services Agreements Act in its entirety, and regulations under the Environmental Protection Act, and under the Insurance Act • A Ministry of Consumer Services News item regarding new consumer protections for wireless and cell phone customers New Edition Consolidated Ontario Small Claims Court Statutes, Regulations and Rules, 2014-2015 Mr. Justice Marvin. A. Zuker Your source of essential legislation Available risk-free for 30 days Order online: www.carswell.com Call Toll-Free: 1-800-387-5164 In Toronto: 416-609-3800 Order # 986177-65203 $98 Softcover July 2014 approx. 1300 pages 978-0-7798-6177-4 Annual volumes supplied on standing order subscription Multiple copy discounts available Shipping and handling are extra. Price(s) subject to change without notice and subject to applicable taxes. 00223DV-A46158 Access a wealth of relevant, up-to-date statutes, regulations and rules for your small claims matters with this comprehensive, portable, and easy-to-use guide. A The trade deal is likely to include extended patent terms for pharmaceuticals subject to delays during regulatory approval, says Daphne Lainson.

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