Canadian Lawyer

March 2021

The most widely read magazine for Canadian lawyers

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4 UPFRONT NEWS ANALYSIS WITH AN unprecedented rate of medical innovation during the pandemic, regula- tors and tribunals have released expedited processes to help prevent legal decisions from slowing down the COVID-19 response. In normal times, legal determinations for health products could take years, and nowhere has that been more evident than in the trademarks space. "If you file a trademark application, it's not getting examined within two years of filing, which is an exceptionally long period of time," says Mark Evans of Smart & Biggar LLP. Evans says Canada's trademark examination timelines are the worst among major coun- tries in the world. So, when the Canadian Intellectual Prop- erty Office announced an expedited trade- mark examinations process in December for goods or services used to prevent or treat COVID-19, it was welcome news. In fact, with paper filing and in-person proceedings grinding to a halt in March, and a new trademark act in 2019, trademark deter- minations were even slower than usual in the spring of 2020, says Sanjukta Tole, a trade- mark lawyer at Marks & Clerk Law LLP. "It's caused a severe backlog at the trade- marks office. Because they were at least until very recently operating largely in paper," says Tole. Tole, like Evans, welcomes the expedited process, but she wonders how fast these new determinations will be. "Are we going from a current 24- or 26-month delay to 12 months? Or are we going to be examined within two months?" asks Tole. Evans also says that, while this expedited process "serves as an admirable public goal," its application is "relatively narrow." For regulatory approvals, IP lawyer Kamleh Nicola says Health Canada has done a "tremendous job" at being agile and innova- tive and responding to what industry needs to get products to the medical field. Nicola, who does patent litigation and health regulatory work for the pharmaceut- ical industry at Baker McKenzie in Toronto, points to Health Canada's recent interim order to expedite the review process for drug applications submitted for authorization. This allowed companies to file data on a rolling basis instead of sending it all at once, and it was widely credited with helping COVID vaccines get to market so quickly. "That has been a tremendous success story for Canada," says Nicola, "seeing just how Health Canada, which has always trad- itionally been seen as this big, slow-moving iceberg, actually pivoted and exhibited great agility through a huge time of need." Nicola, who does not do patent applications but litigates patent disputes, says "there hasn't been the same degree of agility" on the patent protection side. CIPO's response on patent "That has been a tremendous success story for Canada, seeing just how Health Canada . . . pivoted and exhibited great agility through a huge time of need." Kamleh Nicola, Baker McKenzie Expediting the COVID response IP lawyers welcome new processes announced by the Canadian Intellectual Property Office and Health Canada to help pandemic-related health products get to market faster, writes Tim Wilbur

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