Remarks by Johanne Bélisle, CIPO CEO at IPIC Annual Conference
Published on October 26, 2018
Good morning, and thank you for the opportunity to speak at your annual conference.
Today, I would like to provide an overview of the intellectual property (IP) environment in Canada and internationally, give you an update on the Canadian Intellectual Property Office (CIPO)’s operations and outline our key priorities in the year ahead.
Government of Canada Innovation and Skills Plan and National IP Strategy
As you know, the Government of Canada has had an ambitious Innovation and Skills Plan over the past couple of years. CIPO has been actively contributing to this agenda. The plan aims to make our country a global centre of innovation.
IP is increasingly important in an innovation economy. This past April, on World IP Day, the Government unveiled its first-ever National IP Strategy. I know that a number of you—literally a busload—attended the announcement in Ottawa by our Minister, the Honourable Navdeep Bains.
In the 2018 Budget, the Government provided $85.3 million over five years in support of the National IP Strategy. It has three important goals:
First, it aims to improve IP literacy in Canada, which is essential to help innovators and businesses scale up, grow and expand internationally. We know that companies with IP in Canada are 64 percent more likely to be high growth and four times more likely to export. Yet only 10 percent of small or medium-sized companies in Canada even hold some form of formal IP.
CIPO’s new IP awareness and education program is the foundational element of this part of the National IP Strategy. The strategy also includes funding for Statistics Canada to conduct a survey on IP awareness and use, which will provide valuable benchmarking data.
Second, the National IP Strategy provides new tools to help businesses unlock the value of their IP and use it strategically when growing to scale. For example, it includes a new IP marketplace to make IP generated by publicly funded research more accessible.
And third, the strategy includes new amendments to key IP laws to clarify acceptable practices and prevent the misuse of IP rights. For example, it includes measures to deter patent trolls by establishing minimum requirements for demand letters and reinforcing the importance of use in the trademarks regime through new bad faith trademark opposition and invalidation grounds. And of course, it includes the creation of the new college of patent and trademarks agents, which has been a key priority for the Intellectual Property Institute of Canada (IPIC). The Government is aiming to table legislative amendments in the near future.
International policy advancements
CIPO also supports the Government’s innovation agenda on the world stage.
Two weeks ago, I led Canada’s delegation at the World Intellectual Property Organization (WIPO) general assemblies in Geneva, Switzerland. We continued to work on issues relating to the international harmonization of the patent system, and we met with WIPO officials and 16 IP offices to discuss joint projects and exchange best practices and priorities.]
I am pleased to see that the theme of this conference is Next Gen IP. We heard a number of thought-provoking speakers on this yesterday.
Many IP offices are also looking at the implications of emerging technologies on IP systems. This was a big topic at my meetings in Geneva.
Will artificial intelligence (AI) be a disrupter or an enabler? What will be the impact, if any, on how offices around the world assess patentability? Will we have AI-generated inventions? How do we stay abreast of such a fast-evolving area? How can we leverage AI in our operations? A number of offices are experimenting with AI tools to support classification, prior art search and other aspects.
At CIPO, we have a working group that is looking at these questions, and we look forward to exchanging with you on this complex area.
Progress on the Five-Year Business Strategy
Last year, I spoke about our new Five-Year Business Strategy (2017–2022). As we carry on through its second year, I’d like to remind you of our five key priorities.
They are: to advance innovation: to deliver quality and timely IP rights to our clients; to build IP awareness and education; to offer modern services to our customers; and to foster an agile and high-performing organization.
To advance innovation, our main priority continues to be the implementation of five international IP treaties.This has been painstaking work, and I would like to thank you for your continued support.
There is significant interest internationally for Canada to join these treaties. I heard this from senior officials at WIPO and from a number of other IP offices at the WIPO meeting in Geneva two weeks ago.
Canada has also committed to join these treaties in the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, which is presently before Parliament for ratification, and in the newly-agreed-to United States-Mexico-Canada Agreement, which replaces NAFTA.
First off the mark will be the Hague treaty on industrial designs, which will come into force in Canada on November 5, 2018. Canada’s accession represents an important milestone for the Hague treaty, as it will add the world’s tenth-largest economy to the system.
Your clients will have a faster and simpler way to get IP protection for their designs in up to 69 countries through a single application at WIPO.
CIPO has also modernized the Canadian industrial design regulations, office practices and e-services. This will reduce red tape through, for example, simpler application requirements. The e-service improvements include allowing for more file formats, as well as providing a better e-filing tool.
We are conducting outreach sessions to walk clients through the Hague System changes. The first one will take place later this morning at 11:15 a.m., when Todd Hunter, the Director of the Copyright and Industrial Design Branch, and Grégoire Bisson, the Director of the Hague System at WIPO, will go through all the changes and answer any questions you may have. The sessions will continue next week in Calgary, Toronto, Montréal and Ottawa; and I want to thank IPIC for helping organize and promote these events.
On the trademark treaties (the Madrid Protocol, the Nice Agreement and the Singapore Treaty), we are aiming for a coming-into-force date in the summer of 2019. The drafting of the regulations is now complete, and publication in the Canada Gazette, Part II, is expected by November.
We are revising the Trademarks Examination Manual and information guides to align with the new legislation. We are also finalizing our practice notices with the assistance and input of IPIC. These should be complete by early 2019.
The Trademarks Opposition Board has revised its practice notices, after consulting with IPIC, the International Trademark Association and the International Federation of Intellectual Property Attorneys in May of this year. A public consultation on the draft practice notices will be held through our website in the coming months.
We will continue to consult with you as we finalize details. It is important that you and your clients are fully comfortable with the new processes. We remain committed to our “no surprises” approach to ensure that we transition smoothly into our modernized trademarks framework.
With respect to the Patent Law Treaty, we expect draft regulations to be published in the Canada Gazette, Part I, later this fall, with a coming-into-force date planned for late 2019. We consulted with IPIC on the proposed Patent Rules last year, and we will continue to hold consultations over the coming year.
Quality and timely IP rights
The second key priority of our business strategy is to provide quality and timely IP rights. This is the core of our business and what matters most to you and your clients.
We were very proud to get ISO certification for the Patent Branch last year, and we continue our focus on quality and consistency of examination.
In January, we will be hosting a Patent Quality Summit, which will be an opportunity to hear from you on how we can best design the quality patents of tomorrow. We will discuss the role of disruptive technologies in patent searching; the balance between cost, quality, and timeliness; and the best way to define, monitor and report on patent quality. In addition, this fall, we will start online patent quality chats.
On timeliness, we consistently meet and exceed our service commitments. Last year, more than 50 percent of granted applications were granted within less than two and a half years from the request for examination. It should be noted that we send a first office action within 10 months (on average) from the request for examination; this exceeds our service commitment of 14 months.
Over the last decade, we have reduced our patent inventory from 92,000 to 55,000 in 2017–2018, while we continue to receive about 28,000 requests for examination each year.
The volume of Patent Prosecution Highway (PPH) applications continues to grow. In 2017–2018, we received about 2,500 valid PPH requests, making Canada the fifth-largest user of the system. In turn, Canadian work products are among the top six most highly used work products as the basis of a PPH request in other IP offices. Last year, we extended our PPH agreements with the European Patent Office as well as China and Mexico, and we signed a new arrangement with Taiwan. In all, CIPO partners with 24 IP offices through the Global PPH and has five bilateral agreements.
We have also established a working group with IPIC to review the issues regarding diagnostic methods. The working group had a good first meeting in September and will meet again in early November.
[In trademarks, our volumes continue to grow. Over the past 10 years, trademark applications have increased by 38.4%, from about 43,700 applications in 2008–2009 to some 60,500 applications in 2017–2018. We are expecting to receive more than 61,000 applications in 2018–2019.
We have heard your concerns about consistency, quality and timeliness in trademark examination and registration, and we are working on improvements in this regard.]
In April of last year, CIPO implemented quality measures in examination and established an examination quality baseline from which improvements can be tracked. Since then, substantive examination quality has improved from 80% to the current 91%. There is still room for improvement. Our objective is to decrease the number of examiner reports issued by ensuring that all objections are raised in the first report.
To improve consistency of examination, a new team was created to focus on quality monitoring and the continuous development of examiners.
I am confident that as these measures become more embedded, you will see more consistency, predictability and quality from the Trademarks Branch, and turnaround times will again begin to decrease.
Finally, I am pleased to inform you that we have started to digitize “registered” and “inactive” trademark files. This is a first step toward our paper-light environment.
Last year, we received the most industrial design applications in our history: 6,676. Since 2013, the annual increase in applications has averaged almost 5%. We anticipate further increases following Hague implementation.
Turnaround times for industrial designs remained about the same last year, at 8.8 months to allowance. With many changes coming to the system starting in November, we are deploying an extensive staff training program and new tools and processes to ensure that our staff is ready for implementation.
IP awareness and education
The next key priority of our business strategy is to build IP literacy in Canada.
As I mentioned earlier, CIPO’s IP awareness and education program is a key component of the National IP Strategy.
Our program has three components: IP for Business, IP Academy and IP Hub.
Since its launch in May 2017, the program has produced an impressive number of new learning tools and resources for businesses. Our IP Academy has held more than 140 seminars reaching more than 2,400 people. We are also active online, with webinars, videos and social media campaigns.
We now have a small team of seven IP advisors located across Canada who work directly with companies and innovators, deliver seminars and participate in innovation and business-related events, such as Startup Canada’s Canadian Export Challenge.
We have many willing partners who work with us to deliver IP information. They include the National Research Council, the Business Development Bank of Canada, the Canadian Bar Association, the Canadian Chamber of Commerce, provincial governments and, of course, IPIC.
Modern service experience
The fourth priority of our business strategy is to offer a modern service experience.
We have put in place a five-year service strategy to guide our service improvements and instill a culture of service excellence in CIPO.
A first step was to find out what our clients think of our services. Earlier this year, we completed a public opinion research survey of our clients’ satisfaction with our services in patents, trademarks and industrial designs—the first survey since 2008.
We received responses from 1,136 people, including 433 IP agents.
The survey results show a moderate level of satisfaction with CIPO, so there is room for improvement!
Our clients largely hold positive opinions about CIPO employees. They find them courteous, professional and willing to serve clients in both official languages.
The survey identified four drivers of client satisfaction: the quality and consistency of examination, efficiency of the application filing process, going the extra mile and timeliness in granting IP rights.
One area for improvement relates to services for the “seasoned user,” such as IP agents who are very familiar with our services. We will be looking at this in consultation with our stakeholders.
We continue to modernize the CIPO website and are aiming to create more accessible and more seamless digital services and IP data.
We are updating CIPO’s web applications and moving them to a state-of-the-art search engine, a project we expect to complete in 2019.
We will also have an improved agent search application online by the spring of 2019, meaning simpler and more efficient searches for IP agents based on their location.
We are addressing the feedback we have received on the trademarks database. We are now working with agents and other CIPO clients to develop and validate a new prototype. We expect to have a new online interface at the same time as the trademarks treaties come into effect.
This summer, we launched a trial version of our new application for examination practice manuals. Rather than a static web page, there is now an indexed version with better search, print and navigation capabilities. After the testing is completed, we expect to release the full product by early November.
Next spring, we will launch a new online portal that will allow clients to access bulk IP data products, free of charge. This replaces our outdated method of providing this data in compact disc format for a charge.
Over the next year, we will also deploy a new “live chat” service and an intelligent virtual assistant “chatbot,” which will be available to simplify interactions with CIPO in real time and during closed office hours.
Agile and high-performing organization
The fifth priority of our business strategy is to foster an agile and high-performing organization. The most important aspect is people. We rely on the expertise of our staff to do our business effectively. So we continue to invest in staff training and development. We are now actively recruiting new examination staff.
Last year, I mentioned our three-year recruitment campaign to hire 60 patent examiners. We have since recruited 23 examiners and will begin a third wave soon. We have also started recruiting trademarks staff. We expect to hire 30 examiners over the next couple of years.These are great jobs, so please spread the word!
The year ahead
To conclude, at CIPO, we remain focussed on helping to make Canada a global centre for innovation. We actively support the Government’s Innovation and Skills Plan and the new National IP Strategy. The coming year is a big one for us, with all hands on deck for the implementation of the IP treaties.
We continue our strong commitment to quality and timeliness, and you can expect to see notable improvements in the trademarks area. We will reach even more Canadian innovators to help them leverage their IP. We will continue our dialogue with clients and stakeholders such as IPIC, and we will improve our services to our clients.