USMCA v NAFTA: What’s changed and what it means for IP in Canada

Smart & Biggar

Smart & Biggar


After more than a year of negotiations, Canada reached a new free-trade agreement with Mexico and the United States minutes before the midnight deadline on September 30, 2018.

The United States-Mexico-Canada Agreement (USMCA) will replace the North America Free Trade Agreement (NAFTA).  NAFTA came into force on January 1, 1994, creating what was at that time the largest free-trade region in the world. 

The USMCA contains 34 chapters and 12 side letters and covers a range of topics, including those related to agriculture, rules of origin, dispute resolution and e-commerce. Among other impacts on Canadian business, the USMCA will open Canada’s dairy market to U.S. producers, impose a quota on automotive-content originating in Canada and Mexico, and increase the duty-free limit for Canadians who buy U.S. goods online from $20 to $150. 

The agreement also includes chapters designed to modernize trade between the three parties, adding a chapter relating to digital trade, and updating several chapters that were present in NAFTA, such as Telecommunications, Competition Policy and Intellectual Property.  

The changes included on intellectual property law are particularly notable as they modify the landscape for pharmaceuticals, and for patent, copyright, and trademark owners. While Canada is already compliant with many of the provisions, our update today explores what is different, and the potential impact on Canada’s intellectual property laws.

Key changes to Canadian Intellectual Property Law Required by the USMCA

Chapter 20 of the USMCA, entitled “Intellectual Property Rights,” runs to 63 pages, and encompasses a wide range of IP issues.  Much of the text concerns statements of policy, objectives, and best practices, largely reflecting current Canadian IP law.  While, the USMCA may require a variety of changes in Canadian law, the following four changes are likely of greatest significance:

  1. Data protection term for biologics increased from eight years to ten years
  2. Copyright term increased from life of the author plus 50 years to life of the author plus 70 years
  3. Introduction of a patent term adjustment procedure to compensate for Patent Office delay in issuing a patent
  4. Pre-Established Damages for trademark counterfeiting

Patents, Undisclosed Tests and Other Data

International Agreements

The USMCA requires the Parties either to give due consideration to ratifying or acceding to the Patent Law Treaty, or to adopt or maintain procedures standards consistent with the objectives of the Patent Law Treaty. 

The Economic Action Plan 2014 Act, No. 2, Statutes of Canada 2014, Chapter 39, contains not yet in force provisions amending the Patent Act for compliance with the Patent Law Treaty.  It is expected that these provisions may come into force in 2019.

Patent Term Adjustment for Unreasonable Granting Authority Delays

The USMCA specifies that a Party shall provide adjustment of the term of a patent to compensate for Patent Office delays in issuing patents.  Patent term adjustment may accrue if the patent issues more than five years from the date the application is filed, or three years after examination is requested, whichever is later. 

The United States has had such provisions in its patent laws for some 20 years, but patent term adjustment to compensate for Patent Office delay will be entirely new to Canadian patent law. 

Canada must implement its obligations under this provision within 4.5 years of the date the USMCA enters into force.


The USMCA requires a Party to provide a data protection term (market exclusivity) for biologics of at least ten years from the date of first marketing approval. 

Current Canadian data protection law does not distinguish between biologics and small molecule drugs, and provides an eight year data protection term (with a possible six month paediatric extension) for both biologics and small molecules.  Therefore, for compliance with the USMCA, Canada must extend the existing data protection term for biologics by two years.

Canada must implement its obligations under this provision within five years of the date the USMCA enters into force.

Copyright and Related Rights

One of the most significant changes flowing from the USMCA will be to increase the basic term of copyright protection in a work by 20 years.  Currently, the basic term of copyright protection in Canada is life of the author(s) plus 50 years.  Under the USMCA, that term will increase to no less than life of the author(s) plus 70 years.  This will align the term of protection in Canada with the United States and European Union. 

In addition, the USMCA contemplates providing “safe harbors” for internet service providers (ISPs).  Such safe harbors will shield ISPs from liability for copyright infringements that they do not control, initiate or direct, which take place through their networks.  In order to be eligible for the safe harbor protection, ISPs will need to expeditiously remove or disable access to infringing content and implement a policy of terminating the accounts of repeat infringers.  Notably, however, ISPs will not be required to monitor their networks for infringing activity.

Otherwise, it appears that Canada’s Copyright Act is largely already in compliance with the provisions of the USMCA, including with respect to Technological Protection Measures (TPMs) and Rights Management Information (RMI).


In relation to trademarks, Canada is already greatly in compliance with the provisions of the USMCA, or will be once the amendments to Canada’s Trademarks Act come into force, which is expected to occur early in 2019. For instance, the USMCA requires that Canada ratify or accede to the Madrid Protocol, adopt a trademark classification system consistent with the Nice Classification system and not deny registration to scent marks. All of these changes were already in place for implementation next year.

Collective Marks, Country Names, Well-Known Marks and more

It does appear likely, though, that Canada will need to implement legislation to permit the registration of “collective marks” (i.e. marks used by members of an association or collective). The USMCA also includes explicit provisions relating to “country names” and “well-known marks” although it is presently unclear whether Canada’s existing protection will be supplemented by legislative changes.

It will also be interesting to see if any legislative changes arise from the USMCA’s requirement that each country accord treatment no less favourable than it does to its own nationals. For instance, currently “prohibited” or “official” mark protection under the Canadian Trademarks Act is restricted to public authorities that are Canadian.  This might eventually result in additional legislative changes.

Geographical Indications

The USMCA provides a number of provisions relating to the protection of geographical indications (“GI”) similar to provisions in the Trans-Pacific Partnership.

These provisions notably relate to the administrative procedures for the protection or recognition of GIs, grounds of denial, opposition, and cancellation, as well as guidelines for determining whether a term is deemed generic.

In accordance with Canada’s GI laws, Canada will not be required to provide interested persons with objection procedures based on prior trademark rights with respect to GIs for wines and spirits, unlike GIs for agricultural product or food.

Also, while the USMCA provides that a country shall not preclude the possibility that the protection of a GI could cease, exceptions to this rules have been set out to protect GIs that became protected through previous international agreements. This exception further confirms the protection of GIs that became protected through the Canada-European Union Comprehensive Economic and Trade Agreement (CETA), which are essentially immune to cancellation proceedings under the Trademarks Act. It appears that, in the future, Canada will not be able to protect GIs for agricultural product or food through bilateral or multilateral agreements without providing a mechanism to oppose and to remove them from the list of protected GI’s.

“Pre-Established Damages” for Trademark Infringement

In relation to enforcement of marks, Canada will need to implement a system that provides for “pre-established damages” in civil proceedings with respect to trademark counterfeiting “in an amount sufficient to constitute a deterrent to future infringements and to compensate fully the right holder for the harm caused by the infringement.” This will be welcomed by brand owners as Canada has been long overdue in implementing statutory damages for trademark counterfeiting.

Border Measures

In relation to border measures, USMCA is much more than just a re-branding of NAFTA.  Under the new agreement, customs officials will be given more authority on a number of levels, including the authority to “initiate border measures” against “suspected counterfeit trademark goods or pirated copyright goods” that are imported, destined for export, in transit or admitted into or exiting from a FTZ or a bonded warehouse. Currently, “in transit” goods are off-limits and may not be detained.  Customs officials may also initiate such border measures without a Request for Assistance on file.

Customs officials will also be permitted to inspect, detain and destroy “suspected counterfeit trademark goods or pirated copyright goods” following a determination that the goods are infringing. Notably, these provisions do not require a court to make a finding of infringement. Rather, the provisions provide for “a procedure by which competent authorities may determine within a reasonable period of time after the initiation of the procedures … whether the suspect goods infringe an intellectual property right.”  If they do, then the goods will be destroyed or “disposed of outside the channels of commerce in such a manner as to avoid any harm to the right holder.”

Domain Names

The USMCA requires that Canada have a domain name dispute mechanism modelled on the principles of the Uniform Domain-Name Dispute-Resolution Policy (UDRP) for its .ca domain registry. In addition, there must be adequate remedies, such as transfer or cancellation, for registration of a domain name with a bad faith intent to profit that is confusingly similar to a trademark.  Canada already complies with these provisions through the CIRA Dispute Resolution Policy (or CDRP), which has been in place since 2002.

Another requirement of the USMCA is to provide online public access to a reliable database of contact information for domain name registrants, subject to any policies regarding privacy and personal data. CIRA’s WHOIS policy likely complies with this requirement. While CIRA’s policy provides that individual registrants have default privacy protection over their contact information, there is a mechanism to communicate with individual registrants and to reveal their contact information in the event of a dispute.

Industrial Designs

The provisions contained in the USMCA largely reflect amendments to Canada’s Industrial Design Act and Regulations that will come into force on November 5, 2018. These amendments include ratification of the Hague Agreement, and with these Canada will be in compliance with the Industrial Design provisions contained in the USMCA.


While agreement on the USMCA has been reached in principle, it must still be ratified by all three countries. For example, in the U.S., the agreement must be sent to Congress for a 60-day review period, during which time Congress can suggest changes, before it can be signed by President Trump. Similarly, in Canada, the agreement must be tabled in Parliament, where it can be debated, before ratification is possible.

Accordingly, further changes may be possible, and the timeline to ratification is not certain.  We will keep our readers informed of further developments.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Smart & Biggar | Attorney Advertising

Written by:

Smart & Biggar

Smart & Biggar on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at:

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit
  • New Relic - For more information on New Relic cookies, please visit
  • Google Analytics - For more information on Google Analytics cookies, visit To opt-out of being tracked by Google Analytics across all websites visit This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at:

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.