Canada - Term of Patent Protection (WT/DS170): Report of the Appellate Body

Summary

INTRODUCTION

Canada appeals from certain issues of law and legal interpretations developed in the Panel Report in Canada - Term of Patent Protection (the “Panel Report”). The Panel was established to consider claims made by the United States that the term of patent protection provided in Canada's Patent Act2 is inconsistent with Canada's obligations under Articles 33 and 70 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”).

The measure at issue in this dispute is Section 45 of Canada's Patent Act. Before 1 October 1989, Canada provided patent protection for a term of seventeen years from the date of grant of a patent. Canada changed the law, with effect from 1 October 1989, to provide patent protection for a term of twenty years from the date of filing of the application for a patent. However, no mechanism was provided in the legislation to allow for conversion from one system to the other. Consequently, Section 44 of the Patent Act establishes the new rule for applications filed after 1 October 1989, while Section 45 maintains the seventeen year from grant rule for patent applications filed before 1 October 1989.

Sections 44 and 45 of Canada's Patent Act read as follows:

44. Subject to Section 46, where an application for a patent is filed under this Act on or after October 1, 1989, the term limited for the duration of the patent is twenty years from the filing date.

45. Subject to Section 46, the term limited for the duration of every patent issued under this Act on the basis of an application filed before October 1, 1989, is seventeen years from the date on which the patent is issued.

Thus, Section 44 provides for a term of twenty years from the date of application for a patent for patent applications filed on or after 1 October 1989, while Section 45 provides for a term of seventeen years from the date of grant of a patent for patent applications filed before that date. Patents which are subject to Section 44 are commonly described in Canada as “New Act patents”, while those subject to Article 45 are described as “Old Act patents”. The Old Act patents are the subject of this dispute.