I guess I was just trying to make up time.
IPIC represents the views of our IP professionals in making submissions to government and other bodies. Our activities include a wide breadth of activities in education, continuing professional development and raising IP awareness in the business community. For the past several years, we've even created a voluntary code of conduct for our members in order to belong to our institute.
In the past few days since Bill C-86 was tabled, we’ve had about 160 of our members looking at the provisions with the proposed changes to the Patent Act, the Trade-marks Act and the Copyright Act. In that brief few days, we’ve been considering the wording, but we will no doubt want to put in a written submission, given the scope of the detailed proposed changes.
There are a few examples that immediately hit our members, and I’d just like to touch on those.
One change in particular is a change in what’s known as file wrapper estoppel in the patent litigation field. This was introduced by the new proposed subsection 53.1(1) in the Patent Act, which is essentially the ability to introduce prosecution histories, the back-and-forth between the applicants for patents and the patent office, into judicial proceedings. This would change many years of our Canadian judicial precedent.
This provision was introduced with little notice or debate and was not mentioned as part of the national IP strategy. More specifically, though, our members felt that there was a lack of an appropriate transition period for this provision, especially with respect to active patent litigation and the fact that existing patents were prosecuted or obtained when this legal doctrine was not part of Canada’s patent laws. Based on this new provision, the doctrine would apply immediately if and when these patents are enforced.
In hearing from our committees that looked at Bill C-86 in the past few days, we can say that most amendments are supported by IPIC in principle, but there are many areas that when used in practice would create, in our view, unintended consequences.
To summarize those, some examples would include prior user rights and patents, a continuing lack of a requirement to show use of a trademark to obtain trademark registrations, and the statutory damages remedy for collective societies in the copyright, which appears to remove the availability of statutory damages in regard to sound recordings.
We’ll provide a detailed submission to the committee as soon as possible identifying these potential issues.
With that said, our priority in the remaining brief time we have is really to focus on some aspects of the bill that create the college of patent and trade-mark agents.
As many of you know, we’re happy to see this enabling legislation in Bill C-86. IPIC has been advocating to have such a governing body for almost 23 years. Looking at the legislation, what I’d like to encapsulate is two items that struck us as issues of concern.
The first issue really relates to two provisions, paragraphs 14(c) and 14(d) of the enabling college legislation. Paragraph 14(d), in effect, prevents IPIC members who have sat on one of our 37 committees in the preceding 12 months from being eligible to sit on the college’s board of directors or other important committees of the future college. It would also exclude those who have been volunteers of other organizations representing our profession in Canada and internationally.
IPIC has a great membership of volunteers. We have more than 400 volunteers sitting on our committees, which is about one-quarter of our membership. These are the profession’s most engaged members and often the most senior and most knowledgeable people of the profession. Taking into account that these would be excluded, our view is that after that exclusion, you’re really left with an extremely small pool of candidates who have the necessary experience and knowledge to sit on the college board.
As an example, we have many committees that deal with professional development. We have members who deal with the Federal Court with regard to changes in Federal Court litigation. We have public awareness committees; one is actively advising on indigenous IP issues. All of these members, based on this provision, would be excluded from the leadership board positions of the college if they had sat on these committees in the preceding twelve months
We believe this provision is unnecessary. It’s also inconsistent with other professions. For example, the Law Society of Ontario does not have such a restriction on its board members, its benchers. In fact, they encourage the members to be actively involved in voluntary associations.
In our view, the emphasis should be to repeal paragraphs 14(d) and 14(c). Paragraph 14(c) would actually make a member ineligible for the board based on membership alone. Our view is that the legislation should not prevent the college from having the best chance possible to succeed. The college should have the most qualified pool of candidates available for its leadership.
The second and final issue I'll highlight in our remaining time pertains to subclause 33(1) of the college legislation. It requires the inclusion of a code of conduct in the regulations. The code of conduct should be a living, breathing document. There's a rapid pace of change in both business and the IP profession, and we believe it is very problematic for the code to be part of a regulation. The code is often written into the bylaws or it's referenced by regulations, but it should live outside the regulations.
We recognize that the code may be deemed to be a regulation under the Statutory Instruments Act, but allowing it to exist as a bylaw or in some form outside the regulations would give the college the flexibility to amend the code efficiently and react as a one-stop organization and a guardian of the public interest. To give an example, in the case of the Law Society of Ontario, the code of conduct for them is called the Rules of Professional Conduct, which are not embodied in the regulations under the Law Society Act. The board of directors, known as benchers, oversees and approves the Rules of Professional Conduct, but the rules are not actual regulations under the act. The authority to make the rules and bylaws comes from the Law Society Act by way of legislative delegation.
In our view—