DS: Canada — Term of Patent Protection

This summary has been prepared by the Secretariat under its own responsibility. The summary is for general information only and is not intended to affect the rights and obligations of Members.


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Summary of the dispute to date

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Complaint by the United States.

On 6 May 1999, the US requested consultations with Canada in respect of the term of protection granted to patents that were filed in Canada before 1 October 1989. The US contended that the TRIPS Agreement obligates Members to grant a term of protection for patents that runs at least until twenty years after the filing date of the underlying protection, and requires each Member to grant this minimum term to all patents existing as of the date of the application of the Agreement to that Member. The US alleged that under the Canadian Patent Act, the term granted to patents issued on the basis of applications filed before 1 October 1989 is 17 years from the date on which the patent is issued. The US contended that this situation is inconsistent with Articles 33, 65 and 70 of the TRIPS Agreement.

On 15 July 1999, the US requested the establishment of a panel. At its meeting on 26 July 1999, the DSB deferred the establishment of a panel.


Panel and Appellate Body proceedings

Further to a second request to establish a panel by the US, the DSB established a panel at its meeting on 22 September 1999. On 13 October 1999, the US requested the Director-General to determine the composition of the Panel. On 22 October 1999, the Panel was composed. The report of the panel was circulated to Members on 5 May 2000. The panel found that:

  • pursuant to Article 70.2 of the TRIPS Agreement, Canada was required to apply the relevant obligations of the TRIPS Agreement to inventions protected by patents that were in force on 1 January 1996, i.e. the date of entry into force for Canada of the TRIPS Agreement.
  • Section 45 of Canada’s Patent Act does not make available a term of protection that does not end before 20 years from the date of filing as mandated by Article 33 of the TRIPS Agreement, thus rejecting, inter alia, Canada’s argument that the 17-year statutory protection under its Patent Act was effectively equivalent to the 20-year term prescribed by the TRIPS Agreement because of average pendency periods for patents, informal and statutory delays etc.

On 19 June 2000, Canada notified its intention to appeal certain issues of law and legal interpretations developed by the panel. The Appellate Body report was circulated to Members on 18 September 2000. The Appellate Body upheld all of the findings and conclusions of the panel that were appealed.

The DSB adopted the Appellate Body report and the Panel report, as upheld by the Appellate Body report, on 12 October 2000.


Implementation of adopted reports

At the DSB meeting of 23 October 2000, Canada stated that it was its intention to implement the DSB’s recommendations and rulings. Canada said that it would require a reasonable period of time for implementation and that it would consult with the United States on this matter. On 15 December 2000, the US requested that the reasonable period of time for implementation by Canada be determined by binding arbitration pursuant to Article 21.3(c) of the DSU. The arbitrator circulated his report on 28 February 2001. He decided that the reasonable period of time in this case was 10 months and was thus to expire on 12 August 2001.

At the DSB meeting of 24 July 2001, Canada informed the DSB that it had fully complied with the DSB's recommendations and rulings.  On 12 July 2001, Bill S-17 had come into force.  This legislation brought Canada's Patent Act into conformity with its obligations under the TRIPS Agreement.


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