Tuesday, November 15, 2016

Agnès Lajoie says Canadian Intellectual Property Office aims to accelerate innovation, protect IP on global scale

By Christopher R. Graham

Intellectual property (IP) has long been recognized as critical to creating prosperity in advanced economies, especially as those economies focus on developing new and innovative technologies.  In June 2016, the federal government published an Innovation Agenda that clearly reflected the importance of IP to Canada’s economic future, elevating innovation to a national priority and identifying “being innovative” as a “core Canadian value”.  Much of the Innovation Agenda implicates promotion and protection of Canadian IP on a global scale.

Agnès LajoieThe work of implementing the IP aspects of the Innovation Agenda will fall, largely, to the Canadian Intellectual Property Office (CIPO), so it was especially timely that Agnès Lajoie, the Assistant Commissioner of Patents at CIPO, gave the keynote address at the Centre for Innovation Law and Policy’s Fifth Annual Patent Colloquium

Lajoie, a 32-year veteran at CIPO, argued that CIPO was well-positioned to advance innovation in Canada, including, first and foremost, by processing patents in a quality and timely way: CIPO plays a critical role, she said, in “creating a business environment that cultivates and protects new technologies, designs, processes, artistic works and much more”.

Lajoie also outlined CIPO’s efforts to raise awareness among Canadian businesses about the strategic value of IP.  The challenge, she argued, is substantial: only 10 percent of small and medium-sized enterprises (SMEs) currently hold any formal IP, and even fewer have a formal IP strategy.  (The Innovation Agenda is blunt: “Entire industries are being transformed as markets and businesses race to adapt. […] The need to act is urgent.”)  To meet this challenge, Lajoie said that CIPO is creating specific programs to “help Canadian innovators and businesses, especially SMEs, better understand, exploit and integrate IP into their business strategies.”

Lajoie focused the balance of her remarks on CIPO’s efforts to further Canada’s support for international efforts to harmonize IP practices.  She argued that Canada, through CIPO, had a positive role to play in improving the global IP system, highlighting CIPO’s collaborations with numerous foreign IP offices.  As an example of this effort, Lajoie outlined CIPO’s work to implement Canada’s commitments under the Patent Law Treaty (which focuses on reducing the administrative burden of obtaining patents).

That work is important but complex, she said.  CIPO has been working closely with the Justice Department to draft proposed amendments to existing legislation, but the process is taking longer than anticipated.  A major challenge is the need to account for applications filed at different times and under different regulatory schemes, “while striving to limit the complexity of the transitional provisions”.  Lajoie advised that the timelines established by the Ministry of Innovation, Science and Economic Development Canada’s Forward Regulatory Plan may be updated to reflect new targets and deadlines, but the current plan is to hold pre-consultations in 2017.

The proposed amendments should do much to improve the efficiency and effectiveness of Canada’s IP regime, conforming that regime to procedures in other jurisdictions.  For example, Lajoie said that companies will no longer be denied a filing date simply because the filing fee has yet to be paid.  She also said that CIPO will start to accommodate foreign language filings and allow filers to rely on reference to another application in order to save time in the critical rush to establish a filing date.  (The latter practice of ‘incorporating by reference’ has long been standard practice in securities law filings in Canada and the US.)

In another move designed to protect the rights of patent applicants,  Lajoie outlined a proposed obligation on CIPO to notify applicants of missed deadlines before their application is deemed abandoned.  This obligation would shift the burden of monitoring administrative deadlines from patent applicants to CIPO—a clear benefit to applicants—but also increases, to a limited extent, the period of time in which patent rights are uncertain.  To minimize the risks created by this uncertainty, CIPO is also proposing protections for good faith conduct that would amount to an infringement absent CIPO’s failure give timely notice to applicants of missed deadlines.

Lajoie also spent time reviewing proposed changes to CIPO’s office practices, of particular interest to IP practitioners and industry representatives who regularly engage with CIPO.  Highlights included a streamlined process for certain amendments to patent applications; simplified processes for correcting administrative errors; and empowering the Commissioner to designate dates such that, in the event of exceptional circumstances, filing limits expiring on that day are extended to the next day (e.g., major weather events or service disruptions due to labour strikes or power outages).

The keynote address by Lajoie was one of many thought-provoking discussions and presentations at the 2016 Colloquium. The annual seminar, attended by judges, industry professionals and IP lawyers, was sponsored by Teva Canada.