Canada Added to U.S. Intellectual Property Priority Watch List
On April 27, 2018, the United States Trade Representative (USTR) added Canada to a “Priority Watch List” of countries it says fail to protect and enforce intellectual property (IP) rights.
What Happened?
The USTR publishes an annual “Special 301 Report” (the “Report”) for the U.S. Congress that evaluates the state of IP protection around the world. It does so with a view to identifying countries with shortcomings said to negatively affect U.S. interests. In developing the Report, the USTR seeks input from IP-related businesses and associations in the U.S., as well as U.S. embassies abroad. A country the USTR deems to insufficiently protect IP rights may be listed on the USTR’s “Watch List” or “Priority Watch List”, the latter reserved for what the USTR deems to be the worst offenders.
Canada has been on the Watch List for many years, but has not been on the Priority Watch List since 2012.
The USTR criticized Canada for what it called a “failure to resolve key longstanding deficiencies in protection and enforcement of IP”, including:
- poor border and law enforcement with respect to preventing counterfeit or pirated goods from being shipped though Canada;
- a weak patent and pricing environment for innovative pharmaceuticals;
- deficient copyright protection; and
- inadequate transparency regarding the protection of geographic indications of origin.
Canada joins only 11 other countries, including Algeria, China, India, Russia, and Venezuela, on the Priority Watch List. Canada is the only G7 country on the list.
What led to Canada’s re-classification?
The move to put Canada on the Priority Watch List must be viewed in the context of the ongoing negotiations between Canada, the U.S. and Mexico over the North American Free Trade Agreement (NAFTA). The U.S. has been demanding stronger IP protections be included in a renewed NAFTA pact. The Report specifically noted the USTR’s efforts to seek stronger IP protections in the renegotiation of NAFTA, and the press release accompanying the Report noted Canada’s IP protection will be a continuing priority in bilateral trade relations during the coming year.
Canada’s re-classification comes on the heels of recent efforts by Canada to boost IP protection. The day before it was put on the Priority Watch List, Canada introduced a new IP strategy with the stated goal of helping Canadians “understand, protect and access intellectual property” (for more details on this new IP strategy, please see our May 9, 2018 Update, Canada Unveils its Intellectual Property Strategy). Canada also amended its anti-counterfeiting legislation in 2014 to increase powers for border officials. Further, in 2017, Canada amended the Patented Medicines (Notice of Compliance) Regulations to, among other things, offer increased patent protection for certain innovative pharmaceuticals, as a result of Canada’s implementation of the Canada-European Comprehensive Economic and Trade Agreement (CETA).
What does it mean for IP in Canada?
The short-term implications of Canada’s re-classification to the Priority Watch List are likely minimal. Canadian policy-makers have, in the past, given the USTR classification little credence (at least publicly). The official government position is that the USTR process and report are analytically flawed due to their reliance on U.S. industry allegations rather than objective empirical evidence.
That said, the move is clearly intended as a nudge to Canadian lawmakers to strengthen IP protections, and may be a signal as to the U.S.’s intentions in the NAFTA renegotiation. Whether the USTR move is a negotiation tactic that is ultimately temporary or is rooted in a legitimate criticism of Canadian laws, the Canadian government may re-evaluate its IP protections in response, particularly if required as a result of the NAFTA renegotiation.
However, whether increased IP protection would be a positive shift is a matter of perspective. For example, the Parliamentary Budget Office recently estimated that the enhanced patent protections implemented as a result of CETA will add hundreds of millions of dollars to Canadian health care and pharmaceutical costs. Canadian lawmakers must be alive to the balance that must be achieved between heightened IP protection and fair access to Canadian and international IP.
Expertise
Authors
Insights
-
Intellectual Property
From Touchdowns to Trademarks: How NFL Star Travis Kelce is Growing his Brand
Travis Kelce, three-time Super Bowl champion and Kansas City Chiefs superstar tight-end, has reportedly filed multiple new trademark applications in Ohio according to records from the United States… -
Intellectual Property
A Bump in the Road: Caterpillar Ordered to Pay Wirtgen $12.9 Million in Patent Trial
The federal jury of a U.S. District Court in Delaware reportedly awarded Wirtgen America Inc. (“Wirtgen”) $12.9 million in damages for patent infringement related to road-construction technology.The… -
Intellectual Property
A Billion-Dollar Remix: U.S. Appeal Court Overturns $1 Billion Copyright Verdict
A U.S. appeal court reportedly found in favour of American telecommunications and internet service provider, Cox Communications (“Cox”), overturning a $1 billion jury verdict awarded to several record… -
Intellectual Property
From Foam to Fortune: Crocs Inc. Prevails in Patent Infringement Case
Crocs Inc. has been awarded over $6 million following a decision regarding patent infringement by USA Dawgs and its subsidiary Double Diamond Distribution. Crocs was embroiled in years of litigation… -
Intellectual Property
Dish and iFit Reach the Finish Line Settling Infringement Dispute
Dish Network and iFit have reportedly reached an agreement to settle their legal disputes over the use of Dish Network’s streaming-video technology in iFit’s exercise equipment. The dispute arose… -
Intellectual Property
General Motors Files Patent Application for Foldable Ramp for Pickup Trucks
General Motors (“GM”) has reportedly filed a patent application with the United States Patent and Trademark Office for a foldable ramp designed for pickup trucks.The foldable ramp is designed to…
Featured Work
-
Mergers and Acquisitions
Apotex to acquire Searchlight Pharma
Goodmans LLP is acting for Apotex Inc. in connection with its acquisition of Searchlight Pharma Inc… -
Mergers and Acquisitions
FASHIONPHILE acquires Two Authenticators Business
Goodmans LLP acted for FASHIONPHILE, LLC in connection with its purchase of the assets of Two Authenticators Inc… -
Mergers and Acquisitions
Minute Media acquires STN Video
Goodmans acted for Minute Media, a leading global technology and sports content company, in relation to its acquisition of STN Video, a North American industry leader in sports content distribution… -
Banking and Financial Services
Finastra Group $5.32 billion refinancing
Goodmans LLP acted for Finastra International Limited in the full refinancing of its existing credit facilities and restructuring of its capital structure… -
Mergers and Acquisitions
Coinsquare, WonderFi and CoinSmart close business combination
Goodmans LLP acted for Coinsquare Ltd. in its business combination transaction with WonderFi Technologies Inc. and CoinSmart Financial Inc… -
Mergers and Acquisitions
Docebo Inc. acquires Edugo.AI
Goodmans LLP acted for Docebo Inc. (“Docebo”) in its acquisition of Edugo.AI (“Edugo”), a Generative AI-based Learning Technology that uses advanced Large Language Models and algorithms to optimize…
News & Events
-
Banking and Financial Services
The Canadian Legal Lexpert Directory 2024 Continues to Recognize Goodmans
We are proud to announce Goodmans LLP has once again been recognized in the 2024 edition of The Canadian Legal Lexpert Directory.91 Goodmans lawyers have been recognized as top-tier in their… -
Banking and Financial Services
Chambers and Partners Continues to Honour Goodmans with Global Recognition
We are proud to announce Goodmans LLP has once again received top-tier recognition from Chambers and Partners in the Chambers Global 2024 Guide released today. Recognition from… -
Intellectual Property
Ben Hackett at the OBA's Practical Strategies for Working with Experts in IP Matters
Trials in IP Litigation can be uniquely challenging. The evidence usually requires the assistance of a technical witness to assess infringement and a financial witness to assess quantum of potential…