Annual Report 2010-2011 (Page 3 of 9)

Adapting to Changing Realities (PDF – 8.8 MB – 51 pages)

Previous | Annual Report 2010-2011 | Next

• The delivery and quality of Canadian Intellectual Property Office's (CIPO) products and services respond to client needs and expectations, and meet or surpass the performance of leading Intellectual property offices (IPOs).
• CIPO clients, including the public, can easily locate the information and people they need.

Strategic direction and achievements

CIPO responded to client needs by improving the quality and delivery of its services, while enhancing access to information. For example, as the main point of contact for general enquiries, the Client Service Centre exceeded all of its service standards with 98.9 percent of general telephone enquiries being responded to within 24 hours, and all requests for access to on-site information officers being met within 10 minutes. In addition, other branches across CIPO also improved their services and processes to be more convenient and responsive to client needs by offering new methods to access information and new e-services.

Providing information to clients

Providing information about the Intellectual property (IP) system promotes client understanding and use of that information. The organization continued to seek ways to make information more readily available and to improve access to staff. Much of this took place through new information offerings on the web, including:

• Trade-mark News, a newsletter by the Trade-marks Branch (TMB) and Trade-marks Opposition Board (TMOB). This newsletter includes updates to the Wares and Services Manual, new consultations, practice notices, and "What's New" announcements on trade-marks. There are currently 1850 individuals registered to receive these updates by email.
• New web pages devoted to providing agents and other patent, trade-mark and industrial design professionals with quick access to our information and services. These web pages contain links to all of the tools, references and services agents use most frequently.
• Webinars produced by TMB and TMOB. TMB has used this method to discuss the proposed amendments to the trade-marks legislation through two webinars. TMOB held another set of webinars to guide clients through its newly launched e-services. Altogether, eight webinars took place during the fiscal year, with a total of 665 participants.

Conducting business electronically

CIPO launched e-services for filing statements of opposition as well as for requesting extensions of time pursuant to section 47(1) of the Trade-marks Act in opposition proceedings.

These included:

• automatic recording in the Trade-marks Database of statements of opposition and first extensions of time to oppose a trade-mark;
• receipt of immediate confirmation that the statement of opposition or request for an extension of time has been filed successfully;
• quicker response times thanks to reduced handling and administration of documents; and
• the ability for a party involved to view and print the statement of opposition or the extension of time request which they filed online.

CIPO clients may now use their CIPO deposit account as a payment option for:

• fees for filing statements of opposition and extensions of time;
• patent maintenance fees;
• fees for international applications (PCT-SAFE); and
• trade-mark registration fees.

In addition, CIPO clients are also able to replenish deposit accounts through electronic funds transfer.

• Canadian small and medium-sized enterprises (SMEs) have gained competitive advantage through the effective use of IP assets and information.
• Post-secondary graduates are aware of the benefits of IP and using IP information so that they will be better positioned to contribute to the realization of the business value of IP.

Strategic direction and achievements

CIPO's strategic direction on outreach underlines our commitment to promote awareness of the benefits of IP so as to increase use of IP for Canada's economic benefit. During 2010–11, the organization reviewed its approach to outreach. The updated strategy focuses primarily on post-secondary students and also on intermediaries serving exporting SMEs. In order to reach post-secondary students, CIPO will brief professors in select colleges and university faculties on IP and CIPO's educational tools, namely the IP case studies and the Bank of Speakers. The objectives of this new strategy are:

• to increase the use of IP case studies in universities, with a focus on targeted faculties (business, science, engineering and industrial design) and in colleges with applied research capacity; and
• to further develop our training initiatives with the Department of Foreign Affairs and International Trade (DFAIT) by exploring new intermediaries that would help CIPO reach exporting SMEs. CIPO will facilitate intermediaries' access to IP tools that they can provide to their clients.

During 2010–11, CIPO:

• delivered 60 IP case study sessions in 42 educational institutions, reaching more than 1400 students;
• worked with DFAIT, assisting in the delivery of training for trade commissioners on the basics of IP (three IP training courses were offered to 55 trade commissioners and 9 partner representatives);
• worked, in partnership with the Canadian Commercial Corporation (CCC), to provide IP training to 22 CCC officers;
• worked, in partnership with the Intellectual Property Institute of Canada to deliver, through the Bank of Speakers, 56 information sessions to 1255 business participants;
• connected with more than 2000 SMEs and other members of the business community at 19 trade shows; and
• handled, through its Client Service Centre, close to 60 000 enquiries and over 10 000 requests for documentation.

• Canada's IP administrative framework is internationally competitive.
• CIPO leverages its expertise to contribute to the domestic IP agenda.

Strategic direction and achievements

Canada's IP administrative framework includes legislation, regulations and office practices. The organization works with stakeholders and international partners to manage the IP framework for the benefit of Canadians. It does so by identifying, supporting and making changes that will render the administrative framework more accessible to clients and stakeholders and more competitive with other IPOs.

A sound IP framework

The organization is working to ensure its office practices, as well as the federal regulatory and legislative framework, operate as efficiently as possible and that relevant information is accessible to clients, stakeholders and the general public.

Manual of Patent Office Practice (MOPOP) improvements

CIPO made the following revisions to the MOPOP (the guide on patent application procedures and practices) :

• Chapter 16, "Computer-Implemented Inventions," provides guidance and examples in order to clarify how the requirements for patentability apply to computer-implemented inventions. The chapter was revised to provide greater detail for these requirements.
• Chapter 9, "The  Description," discusses the various requirements for proper disclosure under section 27(3) of the Patent Act as well as the various requirements as to the form and content of a description under the Patent Rules. The chapter was revised and now provides greater detail around the requirements for providing a correct and full description of an invention.
• Chapter 14, "Unity of Invention," deals with the requirements for unity of invention and for the filing of divisional applications. A draft revision for public consultation was released in February 2011. The chapter was revised to reinforce that Canadian standards for unity of invention are equivalent to standards under the Patent Cooperation Treaty (PCT), to clarify the dispute resolution mechanism in the case of an impasse regarding unity of invention, and to provide specific guidance to ensure a more consistent and predictable application of the correct standards.

Patent Rules

The Rules Amending the Patent Rules came into force on October 1, 2010. The amendments include:

• simplification of the definition of the term "description;"
• clarification of the purpose of section 16(4);
• consolidation of provisions that address the establishment of a filing date;
• clarity regarding the confidential period;
• amendment of an incorrect reference to a section of the Patent Act regarding the payment of maintenance fees;
• updating of the reference to the definition of "small entity" in Form 3 of Schedule I to the Patent Rules;
• general clarification of Form 3 of Schedule I to the Patent Rules; and
• simplification of the completion requirements.

These amendments will assist applicants in obtaining patent rights and provide greater flexibility through the elimination of several administrative requirements, and the clarification of some Patent Rules provisions. In addition, they also support CIPO's approach to align the Patent Rules with international standards.

A modern IP framework

CIPO made amendments to the Patent Rules to accelerate the prosecution of patent applications relating to environmental "green" technologies within the Canadian IP system. Expedited examination will have the effect of reducing the time it takes to patent these green technologies, which will enable inventors to secure funding, create businesses and bring green technology to market sooner.

An innovative IP framework

CIPO is committed to strengthening Canada's IP administrative framework through domestic initiatives and international collaboration.

Success on the Patent Prosecution Highway (PPH)

The PPH allows an applicant for a patent whose claim is determined to be allowable by the first IPO they file it with to file the corresponding application at another IPO and have it prioritized for examination there.

During the fiscal year, CIPO signed three agreements for pilot projects with Finland, Germany and Spain, for a period of two years, beginning on October 1, 2010, and ending on September 30, 2012.

Following the success of the PPH pilot project with the United States Patent and Trademark Office (USPTO), CIPO concluded a PPH agreement with the USPTO for an indeterminate period.

Currently, CIPO also has PPH agreements with its counterparts in Japan, the Republic of Korea, Denmark, Finland, Germany and Spain.

PPH agreements enable the organization to have significantly faster processing time by working in collaboration with other IPOs. In view of these benefits, CIPO continues to work toward establishing effective PPH agreements with other IPOs with which Canadians seek patent rights.

• CIPO is proactive and demonstrates leadership in advancing Canada's IP position internationally.
• The IP assistance provided to developing countries is recognized as being of high quality.

Strategic direction and achievements

The organization's international strategy is to advance Canada's international IP position by working to strengthen the global IP system. We achieve progress towards these goals through our active participation in international fora, by working with like-minded countries to improve administrative rules and practices, and by providing technical IP assistance to developing countries.

CIPO branches are involved in providing strategic intelligence, evaluation and advice on international IP issues. CIPO works with IPOs of other countries and with organizations such as World Intellectual Property Organization (WIPO), the World Trade Organization, and the Asia-Pacific Economic Cooperation (APEC). In 2010–11, CIPO advanced its international strategy through the following activities:

Participation in WIPO meetings

CIPO continued to convey its views and those of Canada through participation in WIPO meetings, in particular, the expert and technical working groups and committees, including the Standing Committee on Patents and the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. The organization also participated in WIPO's Program and Budget Committee, the Committee on Development and Intellectual Property, and the WIPO Assemblies. CIPO's activities have continuously promoted enhanced transparency and effectiveness in governance and operations in WIPO. CIPO's participation has ensured WIPO focuses on shared priorities.

Chairing Group B+

CIPO continued to actively advance the discussion on substantive patent law harmonization by chairing the Group B+ plenary, a position it has held since 2008. While harmonization has not yet been achieved, these efforts have resulted in a greater understanding of the outstanding issues among members.

Working as an international authority under the PCT

CIPO is an international authority under the PCT. In addition to performing search and preliminary examination work in this role, the organization actively participates in meetings such as the Meeting of International Authorities, with the goal of improving the PCT system for Canadian applicants. CIPO's participation in the PCT Working Group has focused on practical efforts to enhance the value of international search and preliminary examination under the PCT. The organization's support for an enhanced quality framework and innovative initiatives such as a third-party observation system will result in an improved system characterized by the rapid resolution of rights without having to amend the PCT or its regulations.

Participation in IPO working groups

CIPO continued to work with informal groups of IPOs from nations that share a similar commitment to IP administrative improvements. For instance, the organization, along with the IPO of the United Kingdom and Australia (the "Vancouver Group") worked to improve understanding of work-sharing initiatives and business performance reporting, among other issues. The organization also worked with WIPO and its counterparts in the United Kingdom and Australia, to launch the Centralized Access to Search and Examination system, which provides a digital library of search and examination reports that can be shared by participating IPOs. This tool will help to reduce the time and effort that patent examiners in the participating countries spend on processing duplicate applications filed in multiple offices.

Participation in APEC activities

CIPO continued to lead the Canadian delegation at the APEC–Intellectual Property Rights Experts' Group and has maintained its membership in the Quality Assessment Framework team. The organization's participation aims at deepening the dialogue on IP policy and exchanging information on IP issues with APEC members, who represent Canada's most important business and trading partners.

Technical assistance to developing countries

CIPO continued to offer technical assistance to developing countries to assist in building capacity for IP rights administration and protection. This included the delivery of a joint workshop with WIPO on management techniques attended by senior IPO officials from 12 developing countries. The workshop was intended to enhance knowledge and skills of management techniques in the delivery of IP services, with a view to improving the capacity of IPOs in developing countries and to provide a forum for the exchange of ideas.

By hosting the workshop, CIPO contributed to Canada meeting its Trade-Related Aspects of Intellectual Property Rights obligations of providing technical and financial cooperation programs to developing and least-developed countries. The organization provided technical assistance in the area of patents to the Antigua and Barbuda Intellectual Property Office to assist in the development of their IP systems. CIPO also provided both state-of-the-art searches and search and examination reports as part of WIPO's Patent Information Services.

• To be recognized as one of the best employers in the Government of Canada.
• CIPO is a learning organization where individual capabilities and organizational leadership are reinforced.
• Employees are committed, supportive and involved in their job and organization.

CIPO's operations demand a labour force with specialized knowledge. Our most valuable assets are the talent and commitment of our people. The organization enjoyed a retention rate of 93 percent. CIPO is a slightly younger organization than the public service as a whole, with 60 percent of employees being under 45, compared to 50 percent in all the public service. Thus strong retention of a young workforce translates into a robust internal pool of future leadership talent.

During 2009–10, only 21 percent of CIPO employees eligible to retire chose to do so. However, this number rose to 39 percent during 2010–11. While this is a significant increase, which we will monitor, it highlights the importance of preparing our young workforce to take on new challenges and responsibilities.

Other human resources activities included:

• The use of collective staffing processes to efficiently create pools of qualified people to fill multiple job openings. This helped to ensure that new CIPO employees have skills that can support the organization as a whole.
• A customized learning program, developed by the University of Ottawa's Telfer School of Management, was delivered to a group of directors and managers.
• A continuous learning program for employees in the Examination and Operations sections of the Patent Branch. The program helps employees maintain their professional skills and stay abreast of new developments.

Previous | Annual Report 2010-2011 | Next