Androu Waheeb is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Gone are the days when businesses were valued by their ability to market tangible goods. and reported that intangible assets (IP and data) are crucial to wealth creation and represent the “world’s most valuable business and national security assets.” In 2019, they accounted for 91% of the S&P500’s value. Canada has struggled to meaningfully partake in this intangible economy.

Canada’s patent portfolio is incommensurate with its enviable workforce and publicly funded research. Domestically, Canadian patent filings decreased by 3% annually and 7% in the last ten years. Non-resident filings swelled by 1% and 4%, respectively. In 2019, Canadians contributed 12% of the patents filed in Canada, whereas Americans accounted for half. Contrarily, reports that Americans owned 60% of patents filed in the USA.

Internationally, Canadian patent filings decreased after 2012, stagnated after 2014, and are geographically clustered. In 2018, 2/3 of Canadian international applications were filed in the USA – a meagre 2% of applications filed there.

Canada’s struggle to protect ideas has dire economic consequences. As Canada’s IP footprint diminishes, Canadian corporate operations face increasingly onerous restrictions, with portfolios too anemic to leverage. Consequentially, our GDP per capita has declined by 3% since 2010 and job quality by 15% since the 1980s. New jobs generate 2/3 of the income they did in the 1980s.

and blamed this on deficiencies in IP awareness, access, resources, expertise, capacity, laws, and funding. Neither report performed competent modelling or statistical analysis, which led to inadequate recommendations. To implement those recommendations, Canada developed the ; Ontario established the and .

Meanwhile, Peter Nicholson of the blamed Canada’s inability to foster and retain innovative corporations. The technology sector, a driver for innovation, contributes only 5% of the . Conversely, the 75 technology corporations in the constitute 1/3 of the index. Without innovative corporations to develop IP, Canada will never amass the portfolio it deserves. Public funds and talent earmarked for innovation will benefit other economies to the detriment of our own, cementing Canada as an innovation farm for hire.

Innovation emigrates from Canada because of what calls its “buy versus make” economic structure which results in passive posturing and ambivalence about market dominance in Canadian C-suites. Canada’s refusal to acclimate to new global economic realities disincentivizes local innovation independently of the patent system, and the “trend of investment in innovation is not encouraging.”

Canadian innovations’ short-lived victories exemplify this. and revolutionized telecommunications, yet their failure to continue innovating led to their demise. Canada’s abandonment of the shuttered .

Canada must foster a fertile corporate environment and broad innovation incentive structures to fend off the pending economic degradation. All policy instruments must be recruited, including taxation, trade, and regulation. Unfortunately, the current strategy of developing IP awareness, access, resources, and law alone will not suffice.

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Live-Stream Shopping: The Basics

At its most basic level, “live shopping” can be anything from a live-streamed fashion show to celebrities reviewing sponsored products on their social media platforms, with the goal to encourage viewers to purchase the same item in real time.  Though numerous retailers have successfully implemented live shopping tactics into their business models, few have a fully developed “live shopping platform” or sophisticated point of sale mechanisms to support their live shopping models.

A key differentiating factor between live shopping platforms and more traditional e-commerce models is the highly interactive nature of live commerce content. Think of a Facebook or Instagram live video where your favourite influencer is showcasing their newest purchase or promoting a product. Now turn that into an entire platform with a fully developed sale system, where hundreds of “shoppers” are shopping for you, showcasing how the items are styled and fit, and responding to questions you may have about the product, all live. Furthermore, live-streaming shopping platforms provide the authenticity that buyers crave. With purchases being promoted and made in real time without video editing or Photoshopping, buyers can feel more comfortable making a purchase given that that they are seeing exactly what they will get.

Many technology start-ups have invested in research and development to establish a business model that brings live shopping as a platform directly to consumers. For instance, Toronto start-up, , is a first-mover in this area. Their shoppers “attend exclusive shopping events, sample sales and warehouse deals, and livestream [their] best finds”. With ShopThing’s point of sale platform, purchasing the deal of your dreams is a simple “swipe up”.

For the buyer, live shopping is fairly simple. For the streamer, the seller, and the platform, however, various legal considerations may arise.

The Streamers, the Sellers, and the Platform: Who are they?

Aside from the purchasers, there are three major parties that may be involved in a live-stream shopping transaction: the platform, the seller, and the streamer. When looking at the relationship between the streamer and the platform, the streamers are likely required to , as well as to potentially sign an exclusivity agreement. Depending on the arrangement, the streamer may become engaged with the platform as an employee or independent contractor. When looking at the role of the seller, it is often dependent on the type of platform. With the , sellers on live-streaming platforms can often be considered a “business operator on the platform”, and the platform an “e-commerce platform operator”. The relationship between the seller and the streamer can be slightly more nuanced, with the seller potentially being a streamer and promoting their own products, or the seller engaging an independent streamer to sell their products in which joint liability may arise under certain conditions.

Relevant Legal Frameworks in Canada

Though live-stream shopping is a novel form of commerce, it is easy to see where legal issues may arise. Canada’s current advertising, marketing, e-commerce, privacy, data protection, and intellectual property laws provide a relevant legal framework for how to address the legal considerations of live commerce. However, as the market for live-shopping continues to grow within Canada, it will be interesting to see how the current regime may be adapted or interpreted for issues arising in relation to live commerce.

Advertising, Marketing, and E-Commerce Laws

The federal statute regulating advertising and marketing in Canada is the . The Competition Act applies to both business and consumer advertising and marketing, with the Commissioner of Competition being the primary authority for enforcing the legislation. The Commissioner heads the Competition Bureau, and investigates both criminal and civil matters under the Act.

In Ontario, the administration and enforcement of consumer protection laws is the Ministry of Consumer Services, acting through the Minister of Consumer Services and the Director under the Consumer Protection Act.  Generally, consumer protection statutes include provisions relating to unfair practices, such as deceptive or unconscionable representations, including false advertising, cancellation or cooling-off periods for goods and services sold, unsolicited goods, and gift cards. In the circumstances of live commerce, unfair practices and deceptive representations may be of increased relevance. Additionally, the further outlines implications of selling online, specifically setting considerations of commercial transactions conducted on the Internet, electronic banking and payment systems, trade in digitized goods and services, and business-to-business exchange of data.

In addition to legislation, (ASC) is the advertising industry's self-regulatory body, maintaining the Canadian Code of Advertising Standards. Through filing a complaint with the ASC, consumers can report advertisers who violate the ASC Code.

Many live-streaming platforms have gained success through providing a live commerce platform exclusively for designer sales.  However, the Competition Act sets out volume tests to that express or implied savings claims can be substantiated against the “ordinary” or “regular” price. Therefore, it is essential to obtain adequate testing when making comparative claims with respect to pricing. This may be more difficult for live-streaming platforms, given that streamers may not be aware of the products, sales, and original prices of the products until they have already gone live.  

Privacy and Data Protection Laws

The (PIPEDA) applies to businesses and addresses the collection, use or disclosure of personal information in the course of commercial activities. PIPEDA establishes that the personal information collected by businesses must be collected for identifiable purposes and with consent, as well as used and disclosed for the limited purposes for which it was collected. With multiple players involved in the business process of live commerce platforms, and increasing development of the technology driving the sales interface of these platforms, greater care must be taken to ensure that the requirements established by PIPEDA are met.

Intellectual Property Laws

Various forms of intellectual property laws may be relevant with live-streaming platforms, including trademark, copyright, patents, and trade secrets. Whenever you are sharing your business and ideas on the Internet, there are measures that may be taken to protect your own intellectual property. However, in the case of live-streaming commerce, it is especially important that steps are taken by the live-streaming platform and its relevant players to minimize the risk of infringing on the intellectual property rights of others.

Before sharing content or materials on your live-streaming platform, it may be :

• Whether you have the right to use or copy the materials, such as images of products, on your platform
• If the material you are sharing is trademark or copyright protected, ensuring you have obtained permission for use
• Whether you have engaged in any Internet-related agreements with web developers (or the like) that outline prohibited use of content.

What’s Next for Live Commerce in Canada?

These are just a few of the potential legal considerations that may be relevant with the rise of live commerce in Canada. Issues relating to contracting online, browsewrap and clickwrap contracts, multi-jurisdictional sales, and other matters, can develop as this new means of shopping continues to gain traction in North America. Though live-streaming shopping is a newer concept, it is possible for the seller, the streamer and the platform to still find their places under existing regimes. However, it is likely that questions and concerns with respect to the various implications that this new form of shopping can have on e-commerce, intellectual property, and consumer protection laws, both domestically and globally, will continue to surface as live commerce becomes more mainstream.

Written by Alessia Monastero, IPilogue Senior Editor and Osgoode JD alumni.

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Patent protection is a crucial consideration for inventors with new innovations. It ensures that innovation persists in the marketplace, and also guarantees some form of monopoly and profit for inventors who invest in engineering new solutions. However, the recent tension between Google and Sonos forces us to consider: how useful are patents to start-up companies with limited resources?

in two federal court systems for the infringement of five patents. For a collaboration in 2013 between Google’s music services and Sonos’ home speakers, Sonos shared the blueprints to their speakers— a mistake in hindsight which led to the alleged infringement on Google’s part. Sonos is seeking financial damages and a ban on the sale of Google’s speakers, smartphones, and laptops in the United States.

Beyond patent infringement related to the company’s wireless speaker technology that allows speakers to connect and synchronize with one another, the company makes an anti-competition argument: allegedly, tech giants Amazon and Google created an environment in which Sonos would be dependent on them, only to then use their leverage to “squeeze” the smaller company. Despite attempting to enforce their intellectual property rights against Google for years, Sonos has had no luck in attaining a resolution.

This type of lawsuit between Sonos, , and Google, , is . Similar cases have occurred between in relation to anti-competitive practices and between regarding trademark infringement.

Sonos was to innovate in the wireless home speaker market in 2005. While there is a benefit to being first in the market and to attain a monopoly for a specified time period, “bigness” in the technology industry threatens the enforceability of patent rights. For example:

• When Sonos initially found that Google was infringing its patents, it approached the company with a licensing contract. Google responded with a deal that would require them to pay next to nothing for the use of the technology.
• Where tech giants infringe on patent-protected technology, they can out-compete smaller companies by offering new devices at lower prices. Google and Amazon did this by selling their speakers starting from $50, while Sonos speakers typically start at $200.
• Large companies have significant negotiation leverage when it comes to exclusivity. For example, Google has maintained that it will pull its virtual assistant from Sonos’ speakers if users can simultaneously use other assistants from services like Apple or Amazon.

These factors put Sonos in the impossible position of having the right to monopolize a technology they developed, but not having any practical way to enforce these rights, due to a lack of resources and influence in the market.

This lawsuit is a reminder to start-up companies of the importance of a sound IP strategy before entering collaborations in the marketplace. It is important to consider what information should remain private and what protections contracts can ensure, such as an ability to freely collaborate with others in the marketplace (thus avoiding the exclusivity issue).

Written by Summer Lewis, a second year JD Candidate at Osgoode Hall Law School. Summer is also the Content Editor of the IPilogue.

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Intellectual property (IP) legal clinics play a crucial role in helping Canadian inventors and entrepreneurs bring their inventions to market while strengthening the foundations of the country's innovation ecosystem. IP legal clinics provide pro bono IP information and assistance to under-resourced inventors who are not served by the profession. At the same time, when based at law schools, these clinics provide experiential learning opportunities to law students who want to work in the IP profession, which contributes to their career development and increases their legal and interpersonal acumen. These client and student-facing goals improve the ability of Canadians to recognize, protect and exploit intangible assets through IP commercialization strategies, skills that have proven necessary for Canadian businesses to succeed at home and abroad.

To read the rest of the report, click .

Giuseppina D’Agostino is a senior fellow with CIGI’s International Law Research Program (ILRP), effective November 2016. She is the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

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The Canadian Intellectual Property Office (CIPO) made building IP awareness and education one of the key pillars of our . Through the program we established, we’ve been able to engage directly with partners with a keen interest in growing IP knowledge, and helping business use their IP more strategically. In particular, our IP Awareness and Education Program has made a point of reaching out to women entrepreneurs, who traditionally have been less likely to use IP, to help them become more IP savvy and give them tools for business success that flow from their IP.

Our work on awareness and education supports the Government of Canada’s Innovation and Skills Plan, as well as the National IP Strategy which was announced in April 2018. In last year’s budget, the Government also announced $85.3 million over five years to support the National IP Strategy. CIPO was very proud to have our IP Awareness and Education Program established as a foundational piece of the Strategy.

We don’t have all the answers today about why women entrepreneurs and innovators are somewhat underrepresented in terms of global IP filings. We know that in 2017, 31.2% of all applications under the Patent Cooperation Treaty (PCT) included women inventors, according to the World Intellectual Property Organization’s PCT Yearly Review.  For PCT applications originating in Canada, the number is 24.8%. Of all inventors named in PCT applications, only 16.4% were women. Data we’ve compiled at CIPO suggests that women-owned businesses are disproportionately among those with no IP.

We can take meaningful steps today to help ensure that more women have a better understanding of IP and are able to use it strategically, to try to move the needle in a positive direction. That includes continuing efforts to increase IP literacy and the strategic use of IP by women entrepreneurs and scientists through targeted initiatives like those we have in our IP Awareness and Education Program at CIPO. The Empowering Women Entrepreneurs symposium is just one outstanding example of the ways we strive to keep the dialogue alive about IP and innovation among women.

The tools and resources we offer to support businesses and innovators are free and accessible, and available at . They can help you learn about IP, from the basics of patents, trademarks and industrial designs, to more advanced topics for those further along on their IP journeys. We have a team of working in all the regions of Canada, who are there to answer questions and provide insight into IP strategies for businesses. And we’re adding more resources all the time to help Canadians get the IP knowledge they need to succeed.

We’re here to help! Reach out to CIPO any time you have questions about IP, and together we can continue to help women innovate, grow their businesses and succeed.

Written by Darlene Carreau, Director General, Business Services Branch at the Canadian Intellectual Property Office.

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Enabling women entrepreneurs to better leverage their IP was the focus of IP Osgoode's  at Osgoode Hall Law School on 11 February 2019. The symposium brought together IP experts and accomplished entrepreneurs for a full day of panels, break-out sessions, and networking opportunities. The inspiring event was the brainchild of IP Osgoode's founder & director, Professor Pina D’Agostino, and the team at Canadian Intellectual Property Office (CIPO) led by Darlene Carreau, Director General of the Business Services Branch at the CIPO.  The symposium continues the organizations’ efforts to encourage innovation and entrepreneurship across Canada.

Keynote Address and Panel Discussion

, cofounder of & , discussed challenges she overcame as a young female entrepreneur. She highlighted the benefits she experienced from having a male business partner whom she trusts and who advocates for her. Through discussions with the attendees, Rawlley advised that finding a trustworthy partner requires following your gut and looking for a personality that complements your own. In addition to having an advocate, it is essential to be confident in business interactions. You can develop confidence from self-learning and equipping yourself with new technical skills. Rawlley also balances confidence with vulnerability. She suggested that vulnerability through sharing negative experiences when networking with others is important to make meaningful connections and learn from colleagues in the industry.

During the panel discussion, Darlene Carreau discussed the issues with low IP awareness and use among Canadian enterprises. IP is essential to businesses as they grow and scale. , Senior Fellow, Centre for International Governance Innovation (CIGI) and former Chief Legal Officer for Research in Motion Ltd. (RIM), contextualized the conversation by adding that even after paying registration fees, maintaining IP can be a significant cost. For example, having IP registrations can make companies a target for .

Jacqueline (Jackie Cooper), former Chief Revenue Officer at Muse, discussed how these business challenges present opportunities to find new ways to leverage IP rights. Jessica Rawlley added that IP has to be seen as an investment and not as a cost. Thinking about IP in early business stages is not typically a priority and it tends to be pushed down on a company’s list of things to do. Through her discussion questions, Professor D’Agostino highlighted issues such as the lack of innovation that aims to address women’s needs. Considering women’s perspectives in the science, technology, engineering, and mathematics (STEM) fields is a step toward this goal. One example of how women entrepreneurs have changed the way innovation addresses women’s issues is , which uses a fiber found in bullet proof vests and climbing materials to create indestructible pantyhose.

Important Conversations

The event was an incredibly unique opportunity for women entrepreneurs to obtain advice from a female perspective, instead of receiving business advice that is blind to their realities. Those that attended the event had the rare chance to receive guidance from IP professionals in circumstances that were safe and welcoming for women.

In the afternoon breakout sessions, participants were able to have direct conversations with IP experts and receive immediate feedback, without any interruptions or condescension. As we heard throughout the day, these are issues that continue to beguile women in business, especially in the technology industry. In particular, , the Waterloo Region IP Advisor at the CIPO, spoke about her experiences advising male Chief Technology Officers (CTOs) who think they know everything about IP, and the keynote, Jessica Rawlley, reflected on the times when business connections would ignore her until her male business partner repeated the same thought. This is a sad reality which hinders progress for professional women, but at the symposium participants were actually respected and heard.

The Women Entrepreneurship Symposium provided a wealth of information for women business owners. It provided resources, information, and networking opportunities for women who are accomplishing incredible things and stimulating the Canadian economy through business. But perhaps the most important takeaway was the hope and inspiration that will undoubtedly give participants the confidence they need to succeed.

Meeting so many formidable women who had started or were planning to start businesses was immensely encouraging. At the start of the day, Interim Osgoode Hall Law School Dean Mary Condon had expressed her hope that we would all leave with more “inspiration and enthusiasm” than when we arrived. And she got her wish.

Written by Gillian Burrell and Summer Lewis. Gillian Burrell is a JD candidate at Osgoode Hall Law School. Summer Lewis is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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Co-chaired by Osgoode Professor Pina D’Agostino, founder and director of IP Osgoode and the Innovation Clinic, and Darlene Carreau, Director-General, Business Services Branch, CIPO, the symposium will bring together an impressive group of successful women entrepreneurs, business leaders, and IP practitioners who will reflect on their own experiences and mentor the attendees on how to recognize, protect and commercialize their IP.

The symposium features a keynote presentation from , the co-founder of MaaS Pros and TIEIT Inc. Rawlley has been recognized for her outstanding entrepreneurship and contributions to the country’s innovation ecosystem. She is the Newmarket Chamber of Commerce’s 2018 Entrepreneur of the Year and TIEIT also received the Innovation of the Year award at the same event.

The morning panel, entitled “IP & Commercialization – Protecting and Leveraging Your Most Valuable Assets: You and Your Ideas,” will focus on the importance of having an IP strategy and best practices for leveraging some of the main areas of IP. The panel will also focus on key issues to identify and act on as well as the realities of starting a business. Chaired by D’Agostino, the panel features Darlene Carreau from CIPO, along with , former Chief Legal Officer and General Counsel at Research in Motion (Blackberry) and Senior Fellow, Centre for International Governance Innovation, and , Chief Revenue Office, Muse.

Following a networking luncheon, attendees will break into smaller groups and circulate through four IP-themed mentorship sessions. These sessions offer an interactive networking opportunity for the participants to ask questions, connect with leading experts and entrepreneurs, and receive mentorship directed at their professional and business goals. The four mentorship session themes are structured around pivotal aspects of the commercialization cycle: 1) IP identification and protection, 2) IP commercialization and strategies, 3) IP and financing, and 4) growing and scaling.

Carreau will be joined by , Associate, Bereskin & Parr LLP, and , Lawyer and Patent Agent, Norton Rose Fulbright LLP, to discuss how entrepreneurs should recognize the value in their ideas and inventions and protect them via various forms of IP law.

During the IP commercialization and strategies sessions, Karima Bawa will be joined by , Partner, Cassels Brock, to discuss how IP can be effectively leveraged and commercialized in many ways.

The IP and financing mentorship sessions will give attendees insight into the importance of having and leveraging IP to secure external funding. , Regional Innovation Officer, Innovation Canada (Innovation, Science and Economic Development Canada) and , CPA, CA, Baker Tilly Vaughan LLP, will draw from their experiences in areas such as entrepreneurship and manufacturing to guide attendees forward.

Recognizing the important role that scale-ups play in Canada’s economy, Jackie Cooper and , Partner, Norton Rose Fulbright Canada LLP, will speak to the unique challenges that entrepreneurs and start-ups face as they move towards the scale-up level.

The ‘Empowering Women Entrepreneurs: Effective Strategies for IP Commercialization and Success’ symposium continues the efforts of IP Osgoode and CIPO to encourage and empower entrepreneurs across Canada. IP Osgoode and CIPO staff will be on hand to connect with attendees looking to access services and tools such as IP Osgoode’s and the CIPO’s new .

Founded in 2010, the Innovation Clinic is the largest pro bono IP legal clinic and the first of its kind in Canada. In collaboration with and , the Innovation Clinic provides experiential learning experiences for Osgoode students in the areas of IP and technology law while at the same time providing pro bono one-to-one IP law information and support to inventors, entrepreneurs, and start-up companies in Toronto, 91��ɫ Region, Waterloo Region, and beyond.

CIPO’s IP Awareness and Education Program serves as a one-stop shop that helps connect Canadians with the IP tools, resources and experts they need at every stage of their IP commercialization journey.

The symposium is free of charge and open to all members of the 91��ɫ community and anyone interested in learning more about IP law and the role of IP in commercial success.

About IP Osgoode

Conceptualized & founded in 2008 by Professor Giuseppina D’Agostino, IP Osgoode, the Intellectual Property (IP) Law and Technology Program at Osgoode Hall Law School, is an independent and authoritative voice which explores legal governance issues at the intersection of intellectual property and technology. IP Osgoode cultivates interdisciplinary, comparative and transnational research, collaboration, policy-thinking and practice on the basis of a tight connection between teaching, research and clinical action. IP Osgoode has put Osgoode and 91��ɫ on the map in the global IP debate. We aim to influence the IP debate in Canada and internationally by educating our students and collaborating with the IP community in Canada and worldwide. Together, we have built an innovative program that is cutting-edge and completely unique to Osgoode

About 91��ɫ

91��ɫ champions new ways of thinking that drive teaching and research excellence. Our students receive the education they need to create big ideas that make an impact on the world. Meaningful and sometimes unexpected careers result from cross-disciplinary programming, innovative course design and diverse experiential learning opportunities. 91��ɫ students and graduates push limits, achieve goals and find solutions to the world’s most pressing social challenges, empowered by a strong community that opens minds. 91��ɫ U is an internationally recognized research university – our 11 faculties and 25 research centres have partnerships with 200+ leading universities worldwide. Located in Toronto, 91��ɫ is the third largest university in Canada, with a strong community of 53,000 students, 7,000 faculty and administrative staff, and more than 300,000 alumni.
91��ɫ U's fully bilingual Glendon Campus is home to Southern Ontario's Centre of Excellence for French Language and Bilingual Postsecondary Education.

About CIPO

The Canadian Intellectual Property Office (CIPO) is a Special Operating Agency (SOA) of (ISED). CIPO is responsible for the administration and processing of the greater part of  (IP) in Canada. CIPO's areas of activity include trademarks, patents, copyright, industrial designs and integrated circuit topographies. CIPO's mandate is to deliver high quality and timely IP services to customers, and to increase awareness, knowledge and effective use of IP by Canadians.

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It was a “hallelujah moment,” so to speak, when the Government of Canada announced its national Intellectual Property (IP) Strategy, highlighting IP as a priority for the country. After decades of neglect, IP is finally getting the attention it rightly deserves from Ottawa. The , announced on February 27, 2018, in the 2018 , promises $85.3 million over five years with $10 million yearly after that to support the strategy.

The IP Strategy underscores the need to ensure Canadians are IP-savvy and able to compete in today’s new big-data, tech-driven and knowledge-based economy. While the government highlights conventional mechanisms such as law reform, there is a welcome focus on fixing the very system of IP in Canada. Canadian policy makers must be attentive to the institutional frameworks and socio-cultural and economic processes relating to IP from the very early inventive stages to the later commercialization stages and must craft solutions and provide resources to improve the .

Rationale for a Canadian IP Strategy

To date, Canadian residents have a poor record of registering for IP protection. The 2017 World Intellectual Property Organization (WIPO) report ranks Canada as twentieth in terms of patents, sixteenth for trademarks and forty-third for designs, and there are no Canadian companies in the top 100 patent applicants worldwide.

The Canadian government’s vision of leveraging IP for macroeconomic growth is also consistent with the findings of the Organisation for Economic Co-operation and Development (OECD), which “now, more than ever, policy makers need to harness drivers of growth like the creativity and ideas contained in intellectual property to stimulate economic growth and foster social well-being.” IP allows rights holders to protect and commercialize their knowledge-based capital, which the as a key factor for increasing productivity and improving living standards.

The government rightly recognizes that a holistic and integrated strategy on IP increases the competitiveness and growth potential of firms, especially in the context of start-ups and small and medium-sized enterprises (SMEs). Indeed, research shows that IP, especially in the form of patents and trademarks, is positively related to firm outcome factors, including firm valuations,[1] firm survival[2] and venture capital funding.[3] However, acquiring IP does not guarantee commercial success. Inventors, entrepreneurs and companies use different IP strategies and processes depending on their unique . As such, any successful IP strategy must be mindful of mechanisms offering a tailored approach to innovation from the grassroots.

In the new strategy, the government recognizes underserviced groups often absent from the innovation landscape, such as women and Indigenous communities, and is consciously taking an evidence-based approach to resolving problems. The strategy highlights grassroots initiatives such as university-based IP legal clinics as a win-win: such clinics are nimble, offer tailored solutions to help underserviced groups and start-ups for free, and train law students to improve their knowledge of IP, client-facing skills and ultimate employability.

While Canada’s IP Strategy boasts some holistic ideals, it still has work to do in eschewing the existing siloed approach and linking its mechanisms and eventual data findings to similar exercises within the budget. The IP Strategy must resonate with other initiatives that share a similar end goal: to enhance economic growth by creating and sustaining innovative jobs and talent in Canada.

Unpacking Canada’s IP Strategy

The long-awaited strategy highlights the need for Canadian businesses, creators, entrepreneurs and innovators to understand, protect and access IP. The strategy identifies three main mechanisms to ensure that these objectives are met: IP awareness, education and advice; strategic IP tools for economic growth; and IP law.

IP awareness, education and advice: The government plans to continue to support the work of the Canadian Intellectual Property Office (CIPO) in deploying outreach, learning and advice programs; gathering evidence through a survey on IP awareness and use; and funding IP legal clinics based at Canadian universities that are training the next generation of IP practitioners. At the same time, the strategy advances the provision of quality IP education, awareness and assistance to Canadian businesses, and assists Indigenous peoples to engage meaningfully in policy discussions on the protection of traditional knowledge at the WIPO negotiations. Finally, a new team of advisers to help innovators improve their IP proficiency.

Strategic IP tools for economic growth: The government proposes several , including expedited IP resolution before the Federal Court and the Copyright Board of Canada, a patent collective pilot project, cooperation with the Standards Council of Canada on the standards-setting process, and improving companies’ global competitiveness. The government also aims to create a centralized IP database, which will contain IP held by government and academia for businesses to license and commercialize.

IP law: The government proposes some legislative changes to clarify acceptable practices and prevent misuse of IP rights. These changes include new requirements for demand letters in both patent and copyright law; a new research exception in the Patent Act to allow research and development of patented technology without the need to pay for a licence or triggering infringement; and the expansion of patent licensing protection to bankruptcy and insolvency law. Finally, a new College of Patent and Trademark agents will be created to better regulate the profession.

Prioritizing Knowledge in a Knowledge-based Economy

It isn’t a coincidence that the government highlights IP awareness and education among the first of its strategy mechanisms. There is a need to understand the level of knowledge and practices at the grassroots level of Canada’s inventors, creators and businesses. All too often, IP is not understood or articulated well — it’s not uncommon for patents to be called copyrights or vice versa. Further, IP awareness has been an area of weakness for Canadian start-ups and SMEs. According to , 83 percent of Canadian SMEs indicated that IP was not relevant to their business when citing reasons for not seeking IP rights. This problem is compounded for traditionally underserviced groups. Here, the government aptly shines the spotlight on women and Indigenous entrepreneurs.

The deployment of a survey on IP awareness and use will be a helpful start for policy makers, researchers and IP professionals to ensure that IP services are tailored to the needs of all Canadians. Improvements have been made on involving more women in the IP process, but more work is needed. In particular, that the number of Patent Cooperation Treaty (PCT) applications filed by female inventors originating in Canada has increased by 377 percent between 1997 and 2015. However, female inventors are still outnumbered by men seven to one, and the share of inventors who are women in Canada has trailed the world average since 2011. Even more discouraging figures persist for Indigenous communities. More information is needed to target initiatives through meaningful consultation and recognition.

With those facts in mind, the IP Strategy’s recognition of the need for increased research funding is encouraging. This empirical work is critical to create evidence-based IP policies going forward. For related initiatives to be successful, it is necessary that the power of all the data gathered be harnessed and used for purposeful intervention (not merely shelved or used by unscrupulous third parties). The IP Strategy provides some means for correcting this knowledge gap, largely by funding Statistics Canada work, but time is of the essence to ensure Canada does not lose ground to other countries. Further, while funding Statistics Canada work is useful for some big picture findings, resources must also be afforded to university-based IP legal clinics, fueled by legal experts and their students. These clinics are on the front lines of IP commercialization and understand the pain points of starting up and scaling companies, and can more readily access meaningful data points for analysis.

Spurring Innovation from the Grassroots

The government rightfully identifies university-based IP legal clinics as a win-win for Canada. Legal clinics provide its underserviced clients the ability to recognize, protect and exploit technology and other inventions from the grassroots for free. Indeed, financial constraints constantly plague a specialized field such as IP law, where obtaining a patent (and there are many other forms of IP) can — a price range that is more accessible to large, foreign-owned firms with a wealth of expertise and deep pockets.

Legal clinics can help to bridge those gaps for smaller firms, so that IP-savvy inventors and entrepreneurs can more readily market their skills and creations to attract more funding or higher wages.

IP legal clinics offer access to justice tools that address economic mobility: they provide legal support to under-resourced and marginalized communities. Even when entrepreneurs and small business owners recognize the importance of IP, budget pressures may force them to underinvest in IP protection and commercialization strategies, if they do so at all.

Unfortunately, there such IP legal clinics in Canada. The IP Osgoode Innovation Clinic, founded in 2010 at Osgoode Hall Law School, and the International Intellectual Property Law Clinic, a program of the University of Windsor Law and the University of Detroit Mercy School of Law, are two examples that have made all the difference. They increase the IP literacy of the average Canadian inventor, entrepreneur or business owner while training the next generation of Canada’s IP practitioners. Importantly, IP legal clinics are also education and awareness facilitators: they provide information sessions for free to companies and members of the public on a range of IP issues. Similarly, they can easily partner with other groups where necessary and tailor educational and hands-on events to help women and Indigenous communities. In this way, they are effective solutions to the challenges identified in the government’s IP Strategy.

While little detail is currently available on how the money promised in the IP Strategy will be spent, government funds should help support the operational expenses of legal clinics to ensure sustainable and scalable models across Canada. Clinics face a sizable challenge in obtaining operational funding to serve the innovation community. So far, the government has noted that “funding will also help clinics obtain resources and tools to improve the quality of the prior art searches,” but in reality, legal clinics need funding for the salaries of administrative staff to run the daily operations of the clinic. And in reality, while clinics advance meaningful educational programs and can conduct valuable research work, these too lack funding.

Big-picture Challenges

Reversing the country’s IP oversights will take time, patience and financial investment within the IP space and related areas. Linking an IP strategy to other government policy is necessary for success.

For example, the reviews of the Copyright Act and the Telecommunications and Broadcasting Act should take innovation challenges into account and ensure that any recommendations are in accordance with the national IP Strategy. The National Digital and Data Consultations must also mesh with the IP Strategy. A government on the consultations raises an important question: “How do we best protect the intellectual property of entrepreneurs in an era of increasingly digital innovation and invention and support businesses as they develop new products and services for domestic and global markets?” However, this is the only mention of IP in the paper.

Balancing public and private interests in the IP Strategy will be a hurdle; the government needs to reassure Canadians that their private information and data will remain secure while it provides opportunities for new ways of using this data, to stimulate economic growth and social betterment. Awareness about the importance and appropriate uses of proprietary data and resultant IP is crucial.

Conclusion

Innovators go through a “gap period” — the stage of commercialization between the idea and the proof of principle. If innovators cannot make it across this gap, they cannot attract investment from private financing. This isn’t an easy task in a relatively investor environment. The 2018 federal budget does provide some access to capital — notably for women entrepreneurs under its Innovation and Skills Plan — but more significant resources are needed.

If Canada wants to be a true leader in innovation and IP commercialization — it is currently behind on innovation metrics among OECD countries — the government must be willing to pay for it. Canada’s new IP Strategy is a good and necessary first step in remedying the issue.

[1] Philipp G. Sandner & Joern Block, “The Market Value of R&D, Patents, and Trademarks” (2011) 40:7 Research Policy 969; Christine Greenhalgh & Mark Rogers, “Trade Marks and Performance in Services and Manufacturing Firms: Evidence of Schumpeterian Competition through Innovation” (2012) 45:1 Australian Economic Rev 50.

[2] Raji Srinivasan, Gary L. Lilien & Arvind Rangaswamy, “Survival of High Tech Firms: The Effects of Diversity of Product–Market Portfolios, Patents, and Trademarks” (2008) 25:2 Intl J Research in Marketing 119; Christine Helmers & Mark Rogers, “Innovation and the Survival of New Firms in the UK” (2010) 36:3 Rev Industrial Organization 227.

[3] Joern H. Block et al, “Trademarks and Venture Capital Valuation” (2014) 29:4 J Business Venturing 525.

Giuseppina D’Agostino is a senior fellow with CIGI’s International Law Research Program (ILRP), effective November 2016. She is the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

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Prof. D’Agostino helped to link the two federal initiatives, describing Canada as a country home to entrepreneurial talent but lacking the ecosystem and infrastructure necessary to capitalize on these resources domestically. Earlier, Mr. Paikin had stated that the innovation or knowledge-based economy represented the “future economy”. This is primarily true, as information-based, knowledge-intensive industries and technologies affect a growing number of sectors. However, as Prof. Breznitz helped to highlight that outside of Canada, other companies and their home countries — such as Google in the United States (US) — are already reaping the rewards of knowledge-based research and development, some of which Canadian universities originally generated.

Answering Mr. Paikin’s question about tackling the widening pay gap, Prof. D’Agostino highlighted the work of the . “You do need the patents, the IP, so with patents come all the other associated IP rights,” said Prof. D’Agostino, “you also need that ecosystem.”

Speaking to her experience with law students in both Canada and the US, Prof. D’Agostino argued that Canada is lacking a culture of innovation. “In many ways, when we look to other countries or when I go back to my time in the [Silicon] Valley, you saw that there: they go to law school, they want to make millions. They want to be the next Facebook. When students go to law school here, they want to go work in a law firm or make policy or other options but they don’t really come to law school to make that big company. So, I think there needs to be a cultural shift and that’s something that takes time. That’s something more on the ground.”

The IP Osgoode Innovation Clinic, conceived and founded by Prof. D’Agostino, seeks to build off of the burgeoning ecosystems in the Toronto, 91��ɫ, and Waterloo regions to help develop the next generation of commercialization-savvy IP practitioners. By having Innovation Clinic Fellows assist student start-ups at , in particular the at the , inventors at incubators and accelerators, such as ventureLAB and , and entrepreneurs in the Waterloo Region and elsewhere who are in need of pro bono assistance to protect and formalize their ideas and IP, the IP Osgoode Innovation Clinic is helping to build an ecosystem based on IP awareness, support, and inclusivity.

Under the supervision of partners at , the Innovation Clinic Fellows take carriage of their own files and provide IP information and support to Canadian start-ups and entrepreneurs as they work to scale-up and commercialize their products or provide publicly oriented tools and services to disadvantaged communities.

At the same time, Innovation Clinic Fellows are able to hone their understanding of IP law and commercialization practices, enabling them to provide more value to their Clinic Clients and those they will work with during their future careers as legal practitioners. A small number of similar clinics operate in Canada, including the University of Detroit Mercy School of Law and Windsor Law’s . As Prof. Myra Tawfik and Jim Hinton have argued in a number of places (see , , and ), these pro bono IP law clinics help address a gap in Canada’s innovation ecosystem.  Mr. Paikin and Mr. Ciruiak both note that this ground-up approach may be a generational project. But in just over 7 years of operation, the IP Osgoode Innovation Clinic has already demonstrated success, providing services to hundreds of clients and having trained close to a hundred law students from .

This summer’s as well as the Canadian Intellectual Property Office’s new highlight the need to improve education, build IP awareness and outreach, and improve IP savviness and access to IP advice. As Prof. D’Agostino points out, the federal government will need to demonstrate a long-term financial and public commitment to increasing capacity in these areas. If expanded and networked across the country, IP law clinics, such as the IP Osgoode Innovation represent ground up ways to fill a gap in the country’s innovation ecosystem.

The IP Osgoode Innovation Clinic is operating with support from the Centre for International Governance Innovation, Osgoode Hall Law School,  and Norton Rose Fulbright LLP.

If you would like more information about the Clinic or are interested in engaging the services of the Clinic, please contact us: IP Osgoode Innovation Clinic, Osgoode Hall Law School, 91��ɫ, 4700 Keele Street, Toronto, ON M3J 1P3, Email: ipinnovationclinic@osgoode.yorku.ca, Tel: (416) 650-8449, Fax: (416) 736-5736, Website:

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brought its claim after the Canadian courts revoked two of the company’s patents on the basis that these patents lacked utility. The courts applied “” to invalidate the patents on the basis that the patents lack . In ISA,   argued that the Canadian test for utility of the patent is arbitrary “judge-made law” and thus constitutes a violation of Canada’s international obligations under NAFTA. The company advanced its challenge against Canada on two accounts. First, Eli Lilly claimed that the judicial interpretation of utility in Canada (the so-called “promise doctrine”) contradicts the meaning “capable of industrial application” under NAFTA, Chapter 17. Second, the company alleged that Canada’s utility standard has abruptly changed over the years. According to Eli Lilly, such “dramatic” change in the judicial interpretation of the utility standard is problematic because it violates Chapter 11 of NAFTA. Both arguments questioned the traditional role of the domestic courts in interpreting and applying the patentability criteria. Ultimately, Eli Lilly’s argument failed in ISA. In short, the ISA arbitrators concluded that failed to produce sufficient evidence to support its allegations.

For the Government of Canada, however, it may be too early to celebrate this victory. The reasons become evident after appreciating the context of the Eli Lilly’s claim. First, the Eli Lilly’s dispute lasted more than five years. NAFTA does not provide parties to a dispute with procedural mechanisms to dismiss the claims early, akin to the summary judgment or a failure to state a claim provisions in common law jurisdictions. Accordingly, NAFTA permits claims that may eventually lack any legal or factual foundations without providing an opportunity to  curb such claims early to minimize the costs. Second, the tribunal did not explicitly address whether a change in the judicial interpretation of the state’s patent law can potentially violate this state’s international legal obligations, including those under IIAs. In practice, it means that the doors for claims similar to Eli Lilly’s remain open. The consequences are significant for states parties to ISAs. to defend the investment claims average at US 5 million dollars per one dispute. Losing such a claim is an even more expensive option for states for two reasons. First, the monetary costs may be substantial. For example, Eli Lilly demanded in damages. Second, losing a claim may result in reputational harm for a state as a potential destination for foreign investment. As a result, some states prefer a settlement of the dispute over facing a foreign investor in the ISA process.

These factors combined create a structure that encourages foreign investors to bring IP claims in ISA against states in hope to achieve a favourable settlement in a fashion similar to the “patent trolls”.  The claims similar to Eli Lilly’s can become a tool for speculation. In particular,  the claimants can allege that the states’ patent laws dramatically change and such change constitutes a violation of an applicable IIA. If an effective mechanism for the early dismissal is not available, a state has to defend its claim for a prolonged period of time and face substantial costs. Some states, however, lack financial or expert capacity to uphold such defence. From a policy perspective, the concern the Eli Lilly’s type claims may inspire foreign investors to file claims against states not to vindicate their property rights, but rather to use such claims as a bargaining chip to achieve profitable settlements. Such procedural use of IP rights (and particularly patents) fundamentally contradicts the purpose of the national IP systems that  grant IP rights for the benefit of society and not merely “”.

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