On January 27, 2014, five international IP treaties were tabled in the House of Commons:

  1. Patent Law Treaty, done at Geneva on 1 June 2000;
  2. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, adopted at Nice on 15 June 1957, as revised at Stockholm on 14 July 1967, and at Geneva on 13 May 1977, and amended on 28 September 1979;
  3. Singapore Treaty on the Law of Trademarks, adopted at Singapore on 27 March 2006;
  4. Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on 2 July 1999; and
  5. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marksadopted at Madrid on 27 June 1989, as amended on 3 October 2006 and on 12 November 2007.

IP law is jurisdictional (i.e. each state has its own IP laws). However, globalization has resulted in a need to protect valuable IP rights internationally and, as a consequence, the simplification and standardization of the processes to register these rights.  The adoption of these tabled treaties would be a step towards harmonizing Canadian patent law, trademark law and industrial design law with the laws of the other contracting states.

These would not be the first five IP treaties in force in Canada should they be implemented and ratified.  A number of international IP treaties are already currently in force in Canada, including the Patent Cooperation Treaty, the Berne Convention for the Protection of Literary and Artistic Works, the Strasbourg Agreement Concerning the International Patent Classification and the Paris Convention for the Protection of Industrial Property.

What needs to happen for these five treaties to come into force in Canada?

It’s important to note that each state has its own internal process for the adoption and implementation of a treaty.  In Canada, the Executive, comprised of the Queen (the Governor General), the Prime Minister and his/her Cabinet, controls the process for the signature and ratification of a treaty.

The first step is the signing of the treaty by an authorized representative of the Government of Canada which signifies an agreement in principle to be bound by the treaty.  Signing, however, does not equate to the treaty being in force in Canada.  Ratification and implementation are required.  An example of this is the aforementioned Patent Law Treaty, which was signed by Canada on May 21, 2001 yet never ratified, and is therefore not in force in Canada.

Next, the Minister of Foreign Affairs initiates the ratification of the treaty (which may also be referred to as a protocol, convention or agreement) by tabling the treaty in the House of Commons in each official language, along with a document known as an Explanatory Memorandum which includes information such as a description of the treaty, obligations imposed on Canada if it is brought into force, the reason it should be brought into force and a brief description of how the treaty will be implemented.

The Treaty Section of the Department of Foreign Affairs and International Trade is responsible for the preparation of the treaty and the Explanatory Memorandum for tabling and will work with the department concerned (Industry Canada in the case of IP related treaties) for the preparation of these documents.

A sitting period (of at least 21 days) ensues during which Members of Parliament can debate and/or pass a motion upon the treaty, potentially making non-binding recommendations.  Once the sitting period has passed, the Executive will introduce in Parliament any amendments to legislation which are required to implement the treaty.  Conceivably, Parliament could refuse to pass the bill, preventing ratification as the necessary legislative amendments required to comply with the treaty are not enacted.

Amendments to legislation will be required to ratify the aforementioned treaties including new mechanisms to avoid the unintentional loss of patent rights (in the case of the Patent Law Treaty) and new mechanisms to process international trademark applications sent by the World Intellectual Property Organization, commonly known as WIPO (in the case of the Protocol Relating to the Madrid Agreement).

Following the adoption of any required legislative amendments, the Treaty Section of the Department of Foreign Affairs and International Trade and the concerned department will make a submission to the Governor General, who acts on the advice of the Cabinet (collectively referred to as the Governor in Council), for an Order in Council authorizing the Minister of Foreign Affairs to sign the ratification instrument (in this case, the instrument of accession).

Finally, the ratification instrument is deposited with the appropriate authority (in this case, WIPO).  According to the Explanatory Memoranda attached to each of the 5 aforementioned IP treaties, each will come into force in Canada three months from the date that each respective instrument of accession is deposited with the Director General of WIPO.

Here’s the Policy on Tabling Treaties in Parliament.

Next steps

It will be interesting to see what legislative amendments are enacted in light of the eventual adoption of these five IP treaties and what impact the resulting administrative changes and procedures will have on IP practitioners (those involved in the prosecution of patents, trademarks and industrial designs), the Canadian Intellectual Property Office and rights holders.  It is reasonable to expect that preliminary indications from the Government in this regard will be made public sometime this year.

(Originally featured on the National Magazine Blog.)