Law Times

Page 12 December 7, 2015 • Law Times www.lawtimesnews.com 'It's probably a good deal for us' Trans-Pacific Partnership has minimal IP impact, lawyers say BY MICHAEL MCKIERNAN For Law Times anada's intellectual property laws face a much smaller over- haul as a result of the Trans- Pacific Partnership that many feared at the outset of negotiations, ac- cording to a number of lawyers in the field. The full 12-country agreement was re- leased last month following years of talks, although the Canadian Parliament must ratify the deal before it comes into force in this country. Nathaniel Lipkus, a partner in the in- tellectual property practice group at Os- ler Hoskin and Harcourt LLP's Toronto office, says a decade of domestic copy- right reform and international treaty negotiation, such as the Comprehensive Economic and Trade Agreement with the European Union, have left Canadian IP laws in good shape. "Coming into negotiations, we already had a fairly modern IP system, which means that the TPP itself isn't going to re- quire much more in terms of changes to laws," Lipkus says. And even in those cases where the TPP's final text deviates from Canadian practice, the country's delegation negoti- ated enough "wiggle room" to preserve existing approaches to intellectual prop- erty issues, according to Michael Crich- ton, an Ottawa-based partner at Gowling Laf leur Henderson LLP. "My sense is that the Canadian repre- sentatives were mindful of what Canada's current laws and regimes are, and that they were resistant to changes that would drastically alter the intellectual property landscape here," Crichton says. "From an IP perspective, it's not a game-changing treaty." Crichton points to the issue of online copyright infringement as one in which Canada carved out an exception based on its existing laws. The TPP provides for a notice-and-takedown regime based on the U.S. model, which requires ISPs to notify allegedly infringing subscribers and immediately remove the offending material. However, an annex to the agree- ment indicates Canada's more liberal no- tice-and-notice regime, which forces ISPs to simply forward notices from copyright owners to users identified as a possible source of infringement, will be sufficient for TPP compliance. Lipkus says the annex also gives Can- ada an incentive to ratify the deal as the exception only holds for original signato- ries to the deal. "It may be that future countries will not be granted as much f lexibility and could be held to standards that they are uncomfortable with," he says. In the realm of trade secrets, Crichton says, the TPP has the potential to signifi- cantly alter Canadian law by committing signatories to criminalizing "unauthor- ized and willful" access, misappropria- tion, or disclosure of a trade secret. But the text also permits parties to the TPP to "limit the availability of its criminal pro- cedures" to certain specific cases. Crich- ton says it is also possible that measures available under Canada's existing Securi- ty of Information Act — which punishes theft of trade secrets for the benefit of a foreign state or state-owned enterprise with a maximum jail term of 10 years — could satisfy the TPP's requirements. "It's possible the government may take a broader approach, and criminalize more than just that narrow situation in which the trade secrets affect national se- curity, but it could also be read as consis- tent with or within the scope of the laws that we already have," Crichton says. One area in which legislative change is guaranteed in the case of ratification is the 20-year extension of the term of protection for copyright holders from the current life of the author plus 50 years to life plus 70 years to match the situation in the U.S. That provision sparked criti- cism over the level of American inf lu- ence on the IP chapter of the TPP from a number of analysts, including Research in Motion co-founder Jim Balsillie, who claimed in an interview with the Cana- dian Press that Canada's negotiating team had been "outfoxed" by their American counterparts. In New Zealand, where the gov- ernment would also have to extend its copyright protection term by 20 years to comply with the TPP, it estimated that the cost of the move is around $50 mil- lion per year. However, Jason Hynes, the chair of the Intellectual Property Insti- tute of Canada's IP trade policy commit- tee, plays down the New Zealand study, saying there's no reason to assume the change would have the same effect in this country. "We have different economies with different drivers, so it's hard to say if it's even relevant to a Canadian analysis. Even if it is correct, it works out at about $11 per person per year, or about three lattes," says Hynes, who is also a partner at intellectual property boutique Bere- skin and Parr LLP, based in its Kitchener, Ont. office. "Clearly, there are some works that will be relevant and in demand 90 to 110 years after they come out, but it's only going to be a very small percentage." The TPP could also result in a change to Canadian patent law, by providing for term extensions in the case of unreason- able delays during processing and ex- amination at the patent office. Daphne Lainson, a partner in the Ottawa office of Smart and Biggar, says that would be a positive move for her clients, which generally operate in the pharmaceuticals industry. "It brings us more in line with many of our trading partners," she says. "In terms of assisting innovative com- panies to bring new products forward, and to continue to innovate, I think it's a good thing." Hynes says he believes the TPP is like- ly to pass, and that critics of the IP chap- ter overlook the broader picture. "Much of the criticism ignores the de- tails of the agreement, or fails to under- stand that Canada has multiple interests to advance," he says. When viewed as a whole, he says, mi- nor changes to IP in exchange for greater access to foreign markets make the TPP worthwhile. "On balance, it's probably a good deal for us," Hynes says. LT BRIEF: INTELLECTUAL PROPERTY LAW 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-2 1 2015-10-28 8:14 AM C 'From an IP perspective, it's not a game-changing treaty,' says Michael Crichton. 'Much of the criticism ignores the details of the agree- ment,' says Jason Hynes. encourages readers to send us letters, but will edit them for space, taste, and libel consideration. Please provide your name, address and contact number and send all letters to: Law Times, 2075 Kennedy Rd., Toronto, Ont. M1T 3V4 E-mail: lt.editor@tr.com

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