sylvain-laporte-cipo
1 December 2012Patents

CIPO: A customer-centric organisation

“My first 18 months has been a tremendously interesting period of discovery,” says Sylvain Laporte, the man at the helm of the Canadian Intellectual Property Office (CIPO). It may have been an enjoyable learning curve for the commissioner of patents, registrar of trademarks and chief executive officer, but it hasn’t been an easy one.

Laporte stepped into office amid a long-running legal row between his predecessors and online retailer Amazon, which had applied to patent its ‘one-click payment’ system. This system allows customers who have previously given payment and address details—and who are logged in to their accounts—to pay for products by clicking one button.

In June 2004 David Tobin, then head of CIPO, rejected the application, saying it was merely a business method and not an invention that can be patented. Amazon filed an appeal with a patent review panel, which upheld Tobin’s findings in March 2009.

Then, Amazon turned to the courts and in October 2010 the Ottawa Federal Court ordered CIPO to re-examine the patent. Mary Carman, who had succeeded Tobin, refused. But the Canadian Federal Court of Appeal ruled in November 2011 that the office must review Amazon’s application. In December 2011, CIPO approved the ‘one-click’ patent.

Widening the scope for patent-eligible matter in Canada, the Amazon case sets a precedent for examiners to patent business methods, in appropriate circumstances. While it is potentially signifi cant, lawyers have pointed out that ambiguities remain. In an article published on the legal matters and business website Mondaq.com, Michael Ladanyi, associate at Canadian law firm Heenan Blaikie, said there is no accepted definition of the term ‘business method’ in Canadian patent legislation or jurisprudence.

As a result, he said, it may be possible to construe a wide range of claims as business methods, including many directed to computer hardware and software.

Asked how business methods can help innovation, Laporte says that the connection is “very complex” and can vary widely among technologies and industries. He adds: “CIPO's role is to help encourage innovation by, among other things, providing greater certainty in the marketplace and administering Canada's IP system and office efficiently and effectively.”

Chapter 9 controversy

He shies away from directly responding to criticisms of the controversial Chapter 9 of the Manual of Patent Office Practice, a guide for patent examiners, applicants, agents and the public on CIPO’s examination practices.

“WE ARE WORKING TO SUPPORT CANADIAN COMPANIES BY FINDING BETTER WAYS TO DISSEMINATE THE WEALTH OF TECHNOLOGICAL, SCIENTIFIC AND INTELLECTUAL INFORMATION THAT IS CONTAINED IN CIPO’S DATABASES.”

According to Ken Bousfi eld and Tasha De Freitas—lawyers at Bereskin & Parr—Chapter 9, which relates to the description requirement for patent applications, gives cause for concern for several reasons. In an article published on the firm’s website last year, they say that since the chapter’s revision in December 2010, lawyers are worried that it interprets the description requirements under the Canadian Patent Act in a manner inconsistent with, and beyond the scope of, statute and case law.

They also say topics pertaining to obviousness and utility have, inappropriately, been combined with the requirement of description. Adding a third complaint, they say: “The revised Chapter 9 appears to suggest that examiners have the authority to determine the nature of ‘persons skilled in the art’ for purposes of prosecution, notwithstanding that examiners are poorly placed to make such a determination.”

Laporte says that CIPO considers the guidelines in Chapter 9 to be consistent with case law, which has been “extensively” cited as support for the positions taken.

It is clear that the office treads carefully when asked about these two issues (Amazon and Chapter 9). But Laporte is happy to elaborate on the basic work of the offi ce and how it is helping innovators in Canada.

Citing the most up-to-date statistics, he says that in fiscal year 2010/11 CIPO received 35,318 patent applications and 46,480 trademark applications. “Overall, we are satisfi ed with the number of applications received and examined.

“CIPO presently offers three mechanisms to have patent applications examined more quickly,” he says. “First, anyone may request that an application be speeded up under Section 28 of the patent rules. The person must make a written request describing how a failure to advance the application is likely to prejudice that person’s rights.”

A second way of firing an application to the front of queue is by showing that it covers ‘green’ technology. “The applicant must provide a written declaration that the application relates to technology for which the commercialisation would help resolve or mitigate environmental impacts or conserve the natural environment and resources. There is no fee associated with this mechanism,” says Laporte.

“Finally, an application can be expedited if the applicant requests prosecution under the Patent Prosecution Highway (PPH). The PPH is an initiative that prioritises patent examination under certain conditions where a partner office, which is overseeing a corresponding application, indicates that it covers patentable subject matter, novelty, inventive step and industrial applicability. There is no fee associated with this initiative.”

CIPO is not just helping patentees—trademark owners are finding that the rules covering what rights they can protect are changing. Laporte says CIPO recognises that technological developments have made it possible to use non-traditional marks such as holograms, sounds and motions to distinguish their goods and services.

In March 2012, just before he joined the office, CIPO approved the application for a trademark covering a sound. “It will serve as a precedent for other businesses to seek protection for their innovative marketing and branding efforts.

“The maintenance of a modern and efficient trademark regime is an important element of a robust marketplace and can help a country’s overall competitiveness.”

These changes represent only the tip of the iceberg. Through its Business Strategy 2012–2017—the master plan guiding decision-making in the next five years—CIPO aims to increase efficiency by cutting red tape. This, Laporte says, will help CIPO to create a more transparent and predictable regulatory system and an “updated IP framework”.

“WITHIN A MORE EFFICIENT AND EFFECTIVE IP FRAMEWORK, CUSTOMERS WILL HAVE BETTER ACCESS TO INNOVATIVE KNOWLEDGE, ALLOWING THEM TO USE THIS INFORMATION STRATEGICALLY.”

The 27-page document, which is freely available online at www.cipo.ic.gc.ca, documents a range of proposed measures to improve Canada’s IP system. Under one of the central themes—better understanding innovators—CIPO plans to improve the way it connects with them because of their “crucial” role for generating economic wealth. “We want to learn how IP can help their innovation eff orts. To this end, we will analyse who our consumers are and improve our communications with them,” says Laporte.

“Many activities are being undertaken this year to help us better understand the needs of our customers. We have recently identified several customer segments and are now in the process of gathering relevant customer data. Monitoring customer segment trends over time will allow us to identify improvements to the IP framework to respond to changes in the innovation cycle.”

In the spring of 2012, soon after Laporte joined CIPO, the office held roundtable discussions with 90 small and medium-sized enterprises. Some of the aims of the discussions, according to Laporte, were to understand how SMEs use the IP system, the key barriers they face when using IP and how they decide whether, or not, to file trademarks and patents. He expects more discussions later this year, and says CIPO is developing a social media strategy to enable it to become more accessible to customers.

A second dominant theme—improving access to innovative knowledge—follows on from the first. “We are working to support Canadian companies by finding better ways to disseminate the wealth of technological, scientific and intellectual information that is contained in CIPO’s databases,” Laporte says.

“The public disclosure of technical information is part of the exchange that occurs when CIPO grants an IP right. Ensuring that it is more effectively shared can open the door for additional innovation.

By developing an understanding of the users of IP information, we can customise search tools designed to better serve their needs. We will make investments to provide useable and accessible data, and we will cultivate partnerships with innovative intermediaries to support this work.

“Innovators need to stay informed about activities in their technology area, so we will improve mechanisms to allow them to receive current information in their area of interest when new ideas enter the IP system and when they are released into the public domain.”

In addition, CIPO will analyse businesses by using information in its IP databases. Laporte says CIPO will be able to provide reports containing IP trends, information about IP growth in specific industries and technology areas, and data to support “evidence-based policy decision-making”.

Five years from now, Laporte believes CIPO will have a better understanding of Canadian innovators’ needs and, as a result, will be a more “customer-centric” organisation. Within a more efficient and effective IP framework, customers will have better access to innovative knowledge, allowing them to use this information strategically.

While Laporte has had to deal with high-profile and, in some cases, controversial issues on his watch, he will hope the Business Strategy reflects his own ideas and methods—and will set out a clear path on which CIPO assists IP owners in Canada.

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