In addition to plant breeders’ rights (see question 30) agribusiness-related intellectual property can be protected in Canada by other forms of intellectual property protection, notably patents, which can be used to protect agribusiness-derived innovation, and trademarks, which can be used to protect an agribusiness brand.
A Canadian patent provides a 20-year exclusive right, from the date of filing the patent application, to the production, use or sale of a newly developed technology or invention. As in other jurisdictions, to be eligible for patent protection an invention must not have been previously disclosed anywhere in the world, it must be functional and operative and must show inventive ingenuity.
The invention can take a variety of forms including:
- a product (eg, a genetically modified plant cell);
- a composition (eg, a fertiliser composition);
- a machine (eg, farming equipment);
- a process (eg, a process for producing a transgenic plant); and
- an improvement on any of the preceding forms.
Although similar to most patent systems in the world, there are certain features of the Canadian patent regime that should be considered when engaging the Canadian patent system.
Canada has joined the Patent Law Treaty, and as of 30 October 2019 Canada will introduce changes to its patent regime. These changes are intended to modernise the patent application process, as well as harmonise and streamline administrative procedures to match the processes of other countries that are members of the Patent Law Treaty. Many upcoming changes to the Patent Act and Patent Rules are of an administrative nature, and are not expected to fundamentally change Canada’s patent regime, rather to make the patent application process faster. The most significant changes relate to reducing the time limits for patent prosecution and simplifying procedure to make amendments to applications after filing. Another change that can be of assistance to foreign applicants is that under the new regime the application and invention specification do not need to be filed in French or English; rather they can be filed in the original language with translation added within a prescribed time after the filing.
Two of the requirements for obtaining a patent is that the invention must be novel and must not have been previously publicly disclosed anywhere in the world. Public disclosures that can constitute a patent bar include:
- written or electronic publications;
- public oral disclosures;
- public demonstrations;
- public use;
- offers for sale; and
- actual sales.
Canada, however, operates a ‘relative novelty’ requirement that provides a 12-month grace period within which to file a patent application after an applicant-derived public disclosure. The grace period allows a patent application to be filed without the applicant-derived disclosure being considered a novelty-destroying bar against the patent application. The grace period only protects against public disclosures made by the patent applicant or through the patent applicant and does not protect against independent disclosures made by third parties prior to the filing date.
Protection for plants and self-replicating crops
A distinction is made in Canada between lower life forms (unicellular), which constitute patentable subject matter, and higher life forms (multicellular), which are not patentable in Canada.
Lower life forms include, but are not limited to:
- microscopic algae;
- unicellular fungi, including moulds and yeasts;
- transformed cell lines;
- hybridomas; and
- embryonic, pluripotent and multipotent stem cells.
Higher life forms include:
- fertilised eggs;
- totipotent stem cells; and
- plant parts - such as a cutting, callus, rhizome, tuber, fruit or seed.
Although animals and plants and their parts are ineligible for patent protection, modified gene sequences, animal cells, plant cells and uses of novel plants and animals are considered patent-eligible subject matter in Canada. The patent protection directed to the modified genes and modified cells that make up a plant has been extended to protecting the plants regenerated from the patented cells by the Supreme Court of Canada. Thus, the patent protection afforded to modified genes and modified cells in Canada may, in certain circumstances, offer relatively comprehensive patent protection for self-replicating crops.
Protection for computer-related inventions
Similar to other jurisdictions, mere scientific principle or abstract theorem - which includes mathematical formulae, natural phenomena and laws of nature - are not considered subject matter that are protectable by patent in Canada. Thus, a computer program, per se, cannot be patented in Canada. Agribusiness-related software innovations, however, may be protected by patent in the form of a computer-related invention (eg, a computer-related method or device that requires the use of a computer).
While there is no clearly defined test, the Canadian Intellectual Property Office has developed examination guidelines that clarify the requirements for determining the patent-eligibility of a software-related invention. Following the release of these guidelines, issuance of patents directed to computer-related inventions has become relatively routine.
Patents may be jointly owned by multiple parties, which can have a significant impact on the ability of an owner to exercise patent rights. In Canada, in the absence of contractual agreement, co-owners of a patent cannot dilute the other owners’ interests in the patent. Consequently, licensing patent rights of a co-owned patent will require the consent of all of the co-owners to be valid.
Trademark protection in Canada is available under common law as well as by statute. Common law protection does not require registration of a trademark. However, protection is limited to the geographic area in which reputation and goodwill in the trademark can be established in association with the goods and services at issue. In contrast, registration of a trademark broadens the geographic scope of the owner’s right to the entire country and provides prima facie evidence of the validity of the trademark and the registrant’s exclusive right to use the registered mark. Thus, registration offers several advantages in providing protection for enforcement of a trademark.
As of June 2019, Canadian trademark laws have changed to align with the trademark laws in prominent international jurisdictions. One of these changes is the duration of protection granted by the registration of the trademark. Under the new regime, registered trademark grants its owner protection for a period of 10 years (compared with 15 years under the old regime) and it can be renewed for an indefinite number of 10-year periods, as long as the trademark remains in use. Another important change is the fact that Canada became a member of the Madrid Protocol. The Madrid Protocol allows protection of the trademark in a large number of countries by obtaining an international registration that has effect in each of the contracting states. This means that Canadian businesses and innovators can now obtain trademark protection in more than 100 countries by filing one single international application in one language with the World Intellectual Property Organization.
Prohibited marks - plant variety denominations
Certain marks are prohibited from registration under the Canadian Trademarks Act. Most pertinent to agribusiness may be the prohibition of plant variety denominations. The use of a variety denomination granted under the PBRA cannot be restricted by any other designation, such as a trademark, even after the rights for the variety have expired. Therefore, no denomination approved for plant breeders’ rights nor any mark so nearly resembling that denomination as to be likely to be mistaken for it can be trademarked in Canada.
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