IP/N/1/CAN/24, IP/N/1/CAN/C/8  
IP/N/1/CAN/P/15, IP/N/1/CAN/T/7  
 
16 October 2019  
(19-6742)  Page: 1/4 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English/French  
 
NOTIFICATION OF LAWS  AND REGULATIONS  
UNDER ARTICLE 63.2 O F THE TRIPS AGREEMENT  
CANADA : A SECOND ACT TO IMPL EMENT CERTAIN PROVIS IONS OF THE BUDGET T ABLED IN 
PARLIAMENT ON FEBRUA RY 27, 2018 AND OTHE R MEASURES  
Notifying Member  CANADA  
 
Details of the notified legal text  
 
Title A second Act to implement certain provisions of the budget tabled in 
Parliament on February 27, 2018 and other measures  
 
Subject matter  Copyright and related rights; Trademarks; Patents (including plant variety 
protection)  
 
Nature of 
notification  [  ] Main dedicated intellectual property law or regulation  
[X] Other law or regulation  
Link to legal text* https://members.wto.org/crnattachments/2019/IP/CAN/19_5640_00_e.pdf   
https://members.wto.org/crnattachments/2019/IP/CAN/19_5640_00_f.pdf  
 
Notification status  [  ] First notification  
[X] Amendment or revision to notified legal text  
[  ] Replacement or consolidation of notified legal text(s)  
Previous 
notification(s) 
referred to  IP/N/1/CAN/20, IP/N/1/CAN/T/5 ; IP/N/1/CAN/C/7, IP/N/1/CAN/17 ; 
IP/N/1/CAN/C/6, IP/N/1/CAN/15 ; IP/N/1/CAN/C/4, IP/N/1/CAN/8 ; 
IP/N/1/CAN/21, IP/N/1/CAN/P/14  
 
Brief description of the notified legal text  
 
Bill C -86 enacts the College of Patent Agents and Trade -mark Agents Act . That Act establishes the 
College of Patent Agents and Trade -mark Agents, which is to be responsible for the regulation of 
patent agents and trade -mark agents in the public interest.  
 
The College of Patent Agents and Trade -mark Agents Act , among other things,  
 
• requires that individuals obtain a licence in order to act as patent agents or trade -mark agents and 
that licensees comply with a code of professional conduct;  
 
• authorizes the College 's Investigations Committee to receive complaints and conduct investigations 
into whether a licensee has committed professional misconduct or was incompetent;  
 
• authorizes the College's Discipline Committee to impose disciplinary measures if it  decides that a 
licensee has committed professional misconduct or was incompetent; and  
 IP/N/1/CAN/24 • IP/N/1/CAN/C/8 • IP/N/1/CAN/P/15 • IP/N/1/CAN/T/7  
 
- 2 - 
 
   
• creates new offences of claiming to be a patent agent or trade -mark agent and unauthorized 
representation before the Patent Office or the Office of the Registrar of Trade -marks.  
 
 
Bill C -86 amends the Trade -marks Act  to, among other things:  
 
• Add bad faith as a ground of opposition to the registration of a trademark and for the invalidation 
of a trade -mark registration;  
 
• Prevent the owner of a registered trade -mark from obtaining relief for certain acts during the first 
three years after t he trademark is registered unless the trademark was in use in Canada during that 
period or special circumstances exist that excuse the absence of use;  
 
• Clarify that certain prohibitions of the Act do not apply with respect to a badge, crest, emblem or 
mark that was the subject of a public notice of adoption and use as an official mark if the entity that 
made the request for the public notice is not a public authority or no longer exists; and  
 
• Modernize the conduct of various proceedings before the Reg istrar of Trade -marks, including by 
providing the Registrar with additional powers in such proceedings.  
 
Bill C-86 also makes certain housekeeping amendments to provisions of the Trade -marks Act that 
are enacted by the Economic Action Plan 2014 Act, No. 1  and the Combating Counterfeit Products 
Act.  
 
 
Bill C -86 amends the Patent Act  in order to:  
 
• Provide a regulation -making authority for the establishment of requirements for written demands 
relating to patents;  
 
• Codify the research exemption in Canadian law, which specifies that an act committed for the 
purpose of experimentation relating to t he subject matter of a patent is not an infringement of the 
patent;  
 
• Specify that licensing commitments that bind the owner of a standard essential patent bind any 
subsequent owners;  
 
• Expand the rights of a person in respect of a claim in a patent wh o meets the requirements to be 
considered a prior user;  
 
• Ensure that patent prosecution histories may be admissible into evidence for certain purposes; 
and  
 
• Clarify when a late fee must be paid in respect of divisional applications as well as when th e 
confidentiality period begins in the case where a request for priority is deemed never to have been 
made.  
 
 
Bill C -86 amends the Copyright Act  to, among other things:  
 
• Specify that certain information is not permitted to be included within a notice un der Canada's 
notice and notice regime for Internet service provider liability, and to provide for a regulation -making 
power to prohibit further types of information from being included within such a notice.  
 IP/N/1/CAN/24 • IP/N/1/CAN/C/8 • IP/N/1/CAN/P/15 • IP/N/1/CAN/T/7  
 
- 3 - 
 
  Bill C-86 also amends the Copyright Act in order to modernize the legislative framework relating to 
the Copyright Board so as to improve the timeliness and clarity of its proceedings and decision -
making processes.  
 
(See also "Other information" below)  
Language(s) of 
notified legal text  English, French  
Entry into force  13 December 2018; Bill C -86 received Royal Assent on 13 December 2018.  
Other date   
 
Notification details  
 
Submission date 
of notification  27 September 2019  
Other information  Bill C -86 enacts the College of Patent Agents and Trade -mark Agents Act   
 
Bill C-86 (see Subdivision D of Division 7 of Part 4): 
https://www.parl.ca/DocumentViewer/en/42 -1/bill/C -86/royal -assent  
 
College of Patent Agents and Trade -mark Agents Act :  
https://laws -lois.justice.gc.ca/eng/acts/C -33.7/FullText.html  
 
 
Bill C -86 amends the Trade -marks Act   
 
Bill C-86 (see subsection B of Division 7 of Part 4):  
https://www.parl.ca/DocumentViewer/en/42 -1/bill/C -86/royal -assent  
 
Trade -marks Act  (as amended):  
https://laws -lois.just ice.gc.ca/eng/acts/t -13/FullText.html  
 
 
Bill C -86 amends the Patent Act   
 
Bill C-86 (see Subdivision A of Division 7 of Part 4): 
https://www.parl.ca/DocumentViewer/en/42 -1/bill/C-86/royal -assent  
 
Patent Act  (as amended):  
https://laws -lois.justice.gc.ca/eng/acts/p -4/FullText.html  
 
 
Bill C -86 amends the Copyright Act   
 
Bill C-86 (see Subsection C of Divi sion 7 of Part 4): 
https://www.parl.ca/DocumentViewer/en/42 -1/bill/C -86/royal -assent  
 
Copyright Act  (as amended):  
https://laws -lois.justice.gc.ca/eng/acts/c -42/FullText.html  
 IP/N/1/CAN/24 • IP/N/1/CAN/C/8 • IP/N/1/CAN/P/15 • IP/N/1/CAN/T/7  
 
- 4 - 
 
  Agency or 
authority 
responsible  Innovation, Science and Economic Development Canada  
Patent Policy Directorate  
 
235 Que en Street  
Ottawa  
Ontario K1A 0H5  
Canada  
Telephone:  343-291-3783 
 
Innovation, Science and Economic Development Canada  
Copyright and Trademark Policy Directorate  
 
235 Queen Street  
Ottawa  
Ontario K1A 0H5  
Canada  
Telephone:  343-291-3163 
 
* Links are provided to texts of laws and regulations notified under the TRIPS Agreement in the form 
supplied by the Member concerned; the WTO Secretariat does not endorse or revise their content.