The United States, Mexico and Canada entered into an agreement on Oct. 1, 2018, that is intended to replace the North America Free Trade Agreement (NAFTA). The agreement is referred to as the United States-Mexico-Canada Agreement (USMCA). While the leader of each member country signed the agreement on Nov. 30, 2018, the agreement needs to be ratified and implemented.
Article 20 of the USMCA includes several IP-related provisions. In fact, the agreement has implications with respect to all four areas of IP (patents, trademarks, copyrights and trade secrets) for all three nations. Some of the more important aspects are discussed here.
One aspect of the agreement with respect to patents requires the parties to recognize a grace period for filing initial patent applications when a public disclosure of an invention has been made “by the patent applicant or by a person that obtained the information directly” and “occurred within twelve months prior to the filing date in the territory of the Party.”
The agreement further requires the parties to adopt a uniform practice with respect to determining whether an invention is obvious or includes the requisite inventive step. Specifically, the parties must “consider whether the claimed invention would have been obvious to a person skilled, or having ordinary skill in the art, having regard to the prior art.”
The parties also agreed to provide the patentee with a patent term adjustment for unreasonable delays in granting patents. This is in place in current U.S. patent law.
The USMCA requires the parties to provide “pre-established” damages for trademark infringement in the case of counterfeit products. A similar provision requires the same type of damages for copyright infringement.
The agreement includes several other provisions that are directed towards harmonization of each country’s substantive trademark law, treatment of domain-name disputes and procedures for trademark registration, opposition and cancellation.
One of the most important aspects of the agreement with respect to copyright requires Canada to increase copyright terms to expire 70 years after the author dies. Currently, copyrights expire 50 years after the author dies in Canada.
The U.S. has already implemented the “life of the author, plus seventy years.” Mexico has a longer term with copyrights expiring 100 years after the author’s death.
The agreement includes a new regime for trade-secret protection that appears to be modeled on the United States’ Defend Trade Secret Act.