Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode, and a 2L JD candidate at Osgoode Hall Law School.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

On Thursday, March 24th, 2022, the Canadian Intellectual Property Office (CIPO) and the Centre for International Governance Innovation (CIGI) hosted their 5th Annual IP Data & Research Conference. For their third themed session, “IP Metrics”, experts were invited to speak about the ways they have been observing global IP trends, making IP data more accessible, and measuring the impact of IP on economic growth in Canada.

Where do Canadians Patent? Implications for Canada’s Patent Regime

Joel Blit, Professor of Economics at the University of Waterloo and CIGI Senior Fellow, kicked off the session. Blit examined the countries in which Canadian investors filed patent applications and sought to determine the extent to which the Canadian patent regime fosters domestic innovation. He found that Canadians were increasingly filing patents abroad, with more Canadians filing in at least one other country each year. Results also showed that patents filed exclusively in the US related to more advanced fields of computer sciences and technologies, while Canada-exclusive patents focused more on special-purpose machinery and the resources and energy sectors. Canadian patents also tended to belong to individual inventors rather than larger assignees, involved fewer inventors, and were cited less frequently, making them relatively less valuable in the global market for innovation.

Blit puts forward several potential explanations. One is that the Canadian patent system is providing less incentive over time for protecting domestic innovations. Another explanation is that Canadian patents are too strong, meaning it may be preferable to “weaken” them by setting higher examination standards, limiting patentable subject matter, or reducing the scope of issuable patents. That Canadians are increasingly patenting abroad could mean that Canadian inventors are becoming increasingly sophisticated, yet it could also mean that Canadian innovations and ideas are more frequently bought up by multinationals. Either way, the current Canadian patents regime seems to play a relatively minor role in promoting domestic innovation worldwide.

Identifying Artificial Intelligence (AI) Invention: A Novel AI Patent Dataset

Nicholas A. Pairolero, Economist in the Office of the Chief Economist at the United States Patent and Trademark Office (USPTO). delivered the second presentation of the session. Pairolero’s team sought to make data on AI more accessible to the public by developing a novel dataset that identified AI tech components in over 13.2 million USPTO patents and pre-grant publications.

After first determining a definition of AI, Pairolero and his team searched through USPTO’s patents using an automated machine learning (ML) model that differentiated between patent documents that did and did not contain any AI component technology. In the evaluation stage, expert AI examiners evaluated each document for AI component technology. Compared to more traditional, query-based approaches, the ML approach resulted in relatively lower precision (as a much larger number of documents were identified as containing AI), but a much higher recall (higher probability of correctly identifying AI). Moreover, both machines and humans seemed to struggle with classification at the boundaries of the various AI component technologies. However, results indicated that the ML approach achieved state-of-the-art overall performance relative to a variety of existing benchmarks from academic and policy literature, holding much promise for the future of automated processing in expediting the transmission of publicly available data.

Missions, Mandates and Metrics: What are the Right Metrics for Academic Technology Transfer?

The session concluded with a pair of presentations by Mike Szarka, Director of Research Partnerships at the University of Waterloo, and Natalie Raffoul, IP Lawyer and Managing Partner at Brion Raffoul LLP. Szarka began by suggesting that most Technology Transfer Offices (TTOs) focused on some combination of a) maximizing gross revenue and licensing income generally; b) focusing on the few projects that would maximize profits; c) maximizing knowledge mobilization and research impact; d) maximizing local economic growth, and e) maximizing client satisfaction and prioritizing the needs of faculty and students. Szarka’s surveying of TTO directors across the country demonstrated that knowledge mobilization, economic development, and service to academic communities ranked much higher in the minds of the respondents than revenue generation, indicating that commonplace TTO metrics focused on royalties do not reflect the true priorities and missions of most TTOs.

Raffoul identified several alternative metrics focused on “the betterment of Canadian society”. Average reported business expenditures invested into research and development () and have been low in Canada compared to the global stage. The greater concern is whether Canadians are owning their ideas and subsequently having the opportunity to commercialize those ideas downstream (instead of assigning their rights over to foreign firms). Raffoul suggested that TTOs ought to track the number of patents they are licensing/optioning/transferring to Canadian headquartered firms compared to foreign ones, along with the revenue generated from those licenses/options/transfers and any research collaborations with those firms. For company-sponsored academic research, co-ownership of patents ought to be held up to co-authorship of papers and publications, in order to correlate evidence of knowledge creation with the ultimate ownership and control of that knowledge.

Conclusion

Though there is much work to be done for Canadian innovators and owners to remain competitive in the global market, the most recent advancements in research and technology prove that Canada is well-positioned to identify shortcomings and well-equipped to tackle them.

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Tianchu Gao is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

Session III from the focused on IP in the context of the Covid-19 pandemic. The economic impact of Covid is not as bad as expected, partly because of the prosperous IP industry in the digital world. The pandemic, in effect, accelerated the development of IP-related entrepreneurial activities. The presentations in this session look at the power of IP in economic and social growth.

In the first presentation, Carolina Arias Burgos, an economist at , discussed trademark filing as a leading indicator of the state of the European economy. Data shows that EU trademark filings correspond well with other economic indicators such as employment, domestic demand, GDP, and the overall attitude of investors toward a particular market (sentiment/confidence indicator). Domestic demand, confidence indicator for the retail sector, and Gross Capital Formation have cyclical correspondence to EU trademark filings. The values of these indicators are closely interrelated, shaped by their past values and the current and past values of other indicators (Multivariate VAR models).�� Burgos is still working on the model to include more variables and restrictions in VAR. It will hopefully generate more accurate forecasts in the future.

The second presentation examined and ‘s study taking a textual approach to analyzing trademark activity during the pandemic. They extracted the goods and services statements from around 300,000 trademark applications between 2010 and 2021, and the study looks at the topics and word meanings of these applications. Their research shows that pandemic-era trademark activities fundamentally changed in the application text context. These changes vary based on Nice class and application country origin.

and , from (ICTC), focused their presentation on the interaction between foreign direct investment (FDI) and IP in Canada. Their research employed a thematic analysis / grounded theory approach and 43 semi-structured interviews. It finds that various factors attract FDI; they include market size, talent, private investment, exit planning, government regulations, financing and innovation infrastructure, etc. Their research also identifies the aspects that can strengthen the impact of FDI on Canadian innovation, such as the VC/PE ecosystem, tax planning, procurement, IP literacy, and access.

, , and presented the they developed that educates students on IP in applied research settings. A consultation with 50 respondents from Ontario colleges undertaken early in the project indicated that 90% of them had little IP knowledge. In response to the virtual learning strategy of eCampus Ontario, they developed this online program to raise IP literacy in the context of applied research in colleges. It is an interactive module that turned out to be very effective in educating the participants.

Data shows that IP-related industries continued to prosper during the Covid-19 pandemic. Researchers are working on studies that identify and explain its development.

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Jasmine Yu is an��IPilogue��Writer and a��1L JD Candidate at the University of Toronto.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

The sixth session of the 5^th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office (“CIPO”) and the Centre for International Governance Innovation (“CIGI”), centered around IP, data, and digital platform governance. The two-part session was moderated by Michael Falk (director of the Office of the Chief Economist at IP Australia). It kicked off with a presentation on standards used in data ecosystems, followed by a panel discussion on the value of data and the processes involved in building collaborative ecosystems.

Falk’s opening remarks set the stage for this truly enlightening session. Over the past couple of years, our reliance on digital platforms has greatly increased, transforming how we do business and conduct our lives. This revolution has made data ecosystems and international standards all the more important.

Part I: Presentation

The first presentation was delivered by Sean Martineau (acting director and research economist at the CIPO) and Keith Jansa (executive director of the CIO Strategy Council).

They first highlighted several trends in intellectual property:

• Intangible assets’ growing importance
• Increased IP filings within the past two decades, both internationally and in Canada
• Growth in standard essential patents (“SEPs”) across the world, by country, and by individual standard setting organizations (“SSOs”)

Moving into a discussion on standards, they noted that standards establish accepted practices, technical requirements and, at times, modernize public policy. It is fascinating how standards are so integrated with our daily lives. The device you are reading this article on interacts with multiple technologies, implicating hundreds of SEPs! Some organization collects profits from licensing, and others to write cheques as cost to market each time that you use your device!

Jansa emphasized the importance of recognizing standards’ significance, the levers and process of standard development, and the impact that standards may have on advancing innovation. ��

Part II: Panel

��The subsequent three-person panel consisted of Evegueni Loukipoudis (strategic advisor at Digital Technology Supercluster), Peter Cowan (co-founder, director, and CEO advisor at Innovation Asset Collective, and principle consultant at Northworks IP), and Karima Bawa (strategic advisor on IP at Digital Technology Supercluster and senior fellow at the CIGI).

Loukipoudis kickstarted the panel with a discussion on the value of data, which he noted depends at least partly on who the user is, what they know about the data, and what they can do with it.

Cowan, on the other hand, discussed the importance of institutions having data strategy and proper infrastructure in place to collect, store, process, and use data properly. He also expressed concern for the inadequate literacy on data strategy in Canada.

Bawa focused largely on the legal aspect of data use. Data has become increasingly commercialized, with more entities entering into data-sharing arrangements to yield value out of data. She advised (informally!) parties in data-sharing arrangements to be aware of considerations such as the rights that stakeholders have over the data, regulatory compliance, management of cyber-attacks with limiting liability clauses, and how the data is accessed, stored, and guarded. Bawa also noted that it is wise to be circumspect with who you share data with, and how you share it.

��Conclusion

As the space-time continuum continues to shrink in our rapidly evolving world, data, standards, and privacy become even more important. The sixth session of the 5^th Annual IP Data & Research Conference rounded off a day of excellent presentations and discussions.

For start-ups, aspiring IP specialists, or those simply interested in IP strategy, check out this by CIGI: the CIGI Massive Open Online Course (MOOC) on Foundations of IP Strategy, co-created by Karima Bawa.

If you missed the conference, be sure to take a look at the materials shared by the presenters (also available in French).

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Sally Yoon is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

, organized by the (“CIPO”) and the (“CIGI”), included a session on “Clean Technologies” about the status of Canada’s IP ownership and cleantech sector. The moderators were Joel Blit (professor of economics at the University of Waterloo and senior fellow at CIGI) and Rich Corken (deputy director of economics, research and evidence at ).

Trends and Challenges in Canada’s IP Ownership and a Collective’s Role in Addressing these Challenges

Mike Mclean (chief executive officer of the (“IAC”)), Emma Start (director of intellectual property at ), and Dan Herman (founder of and special advisor on the Establishment of a Centralized Resource Entity on the Intellectual Property) spoke about Canadian small-to-midsize enterprises’ (“SMEs”) role as significant economic drivers. They outlined some of the key challenges SMEs face in participating successfully in the IP ecosystem:

1. Cost and complexity: The cost of acquiring patents and the complexity of the international system deters companies from participating.
2. Lack of focus in IP education on strategy-linked business outcomes and commercial success: There are challenges in applying theoretical IP knowledge to real-life practical situations, which shows a need to provide SMEs with more “granular, case-study-based” education.
3. Limited talent capacity available: There is a limited talent capacity available to help businesses with their IP strategies and limited connectivity to institutions and existing expert players.
4. Limited tools for support: Companies require more support to bridge the gap from starting an IP program to having a self-sufficient IP system and operation. This is also critical for international commercialization.

The IAC is taking a collective approach to tackle these challenges. Their initiatives include building a collective patent portfolio and obtaining IP insurance at cost-effective rates for members, conducting market and patent research to inform strategy development, and providing businesses with IP software tools. Moreover, Intellectual Property Ontario, a board-governed agency set to begin operations later this year, will also work towards addressing the above four issues to help clients access the market.

Clean Technologies’ Economic Impact and Innovation

Nicholas Johnston (junior policy analyst in the Strategy and Innovation Policy Sector at ) and Mazahir Bhagat (data scientist in Business Improvement Services at CIPO) shared statistics on the Canadian cleantech sector and its activity in IP.

Overall, statistics showed that the cleantech sector is steadily growing and well-funded, with nearly all financing requests made by SMEs being approved in 2017. The sector was also active in IP—cleantech firms were most likely to participate in strategic activities related to IP, and enterprises in the sector showed more overall familiarity with IP than the average enterprise. Patent filing trends related to CO2 conversion and hydrogen production showed that Canadian inventions constituted about 1-2 percent, with the U.S., China, and Japan being the leaders. Businesses formed a significant chunk of the institutions filing the patents in Canada and globally, with interestingly high participation from the academic sector.

Patent Analytics on Hydrogen and Low Emission Technologies

Catriona Bruce (head of Patent Analytics Hub at ) looked at the patent filing of low emissions technology and hydrogen. Global patent data from showed that solar photovoltaic cells had the leading number of global patents filed, with most hydrogen patent filings being direct to production and utilization. China was the leading source of invention for both solar photovoltaic cells and inverter and hydrogen patents, as well as a leading target market. Interestingly, patents filed in China mostly stayed within the country; 17264 filings out of about 30000 hydrogen filings were from China, with only 809 from outside of the country. Relatively fewer inventions came from Canada and Australia, indicating further initiative for investment in domestic capability.

IP in Climate Transformative Technology Companies: The SDTC Approach

Amber Batool (vice president and chief of staff at (“SDTC”)) spoke about how SDTC enforces business leadership through mentorship. Its education programs frame advice for companies and address the issue that very few Canadian companies have the mature IP to compete or financial ability to keep up. have been mentors in education programs to frame advice for companies. SDTC’s approach to making an impact includes thought leadership, tailored IP strategies and learning pathways, and IP capacity creation. It plans to continue collaborating with others doing valuable work in this area to meet its clients’ changing IP needs.

Canada has the lowest labour productivity of the G7 and is the only G7 country whose R&D has gone down over the last 20 years. The panel discussions provided valuable insights into Canada's current position within the cleantech sector and the next steps necessary to achieve our national objectives for the environment and economy while maintaining a globally prominent position within the IP ecosystem.

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Emily Chow is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

I attended the The panel broadly discussed how underrepresented groups navigate the IP and innovation space. I left the presentations with a better understanding of what various public service groups are doing to promote diversity, equity and inclusion (“DEI”) initiatives in their practices.

The first speaker was Peigi Wilson, research manager for the . Her presentation was titled “First Nations Data Sovereignty and the Intellectual Property Regime”. FNIGC’s mandate arose from trying to address the data gap caused by from three major national population surveys. Now, the FNIGC asserts data sovereignty and supports the development of information governance and management at the community level through regional and national partnerships.

After a brief overview of First Nations rights and sources, Wilson defined what First Nations Data is and how it is founded on the principles of . I thought it was quite powerful when she said that First Nations Data is “acquired from First Nations, by First Nations.” Some include data from resources and the environment,

With funding from Indigenous Services Canada, FNIGC is currently researching First Nations’ interests respecting orphan works and artists’ resale rights and developing possible solutions regarding opportunities to co-develop new laws or policies. Wilson emphasized that DEI initiatives are more than ensuring that First Nations have a seat at the table; it means that First Nations must have a role in the decision-making process as active participants in IP policy reform and innovation. She stressed the importance of recognizing Canada’s pluralistic foundations beyond the English/French history to include First Nations legal systems. She also called upon attendees to consider how they may shape new processes for consultation, free, prior, and informed consent, and co-development to address the economic inequality inherent in the system.

The next speakers were from the , a pilot non-profit organization whose mandate is to facilitate data-driven, clean-tech innovation amongst Canadian businesses. Lori DeGraw (vice president of partnerships and member engagement) and Julia Culpeper (program manager of education and strategy) jointly presented “Women and IP: Promoting Inclusion in the Innovation Ecosystem”. The IAC helps Canadian small-medium enterprises (“SMEs”) better understand, generate, commercialize, and protect their IP.

IAC presented the results of a on women’s underrepresentation in the Canadian IP ecosystem. Capturing qualitative data from their inaugural , the study re-emphasized the need to build capacity for women in the IP field, and, in doing so, create a framework to replicate with other equity-seeking groups. They are currently working on three programs to increase community and networking, outreach, and policy and advocacy for women.

One program aims to tackle the inequitable gender balance in patent filing by implementing a twice-annual grant for women to fund IP. $50k is available twice a year to IAC member companies led, founded, or owned by women. .

The last presentation was a partnership between the Canadian Intellectual Property Office (“”) and (“StatsCan”) on “The Awareness and Use of Intellectual Property by Underrepresented Groups in Canada: Insights from Survey and Administrative Data”. Speakers Danny Leung (director of Economic Analysis Division at StatsCan) and Eric Rowe (team leader of Service Insights at CIPO) highlighted results from two studies: the and the

The IPAU study found that 9% of female primary decision makers of businesses had IP that they chose not to formally protect, compared to their male counterparts at 5.4%. Another interesting statistic was that women clients were generally less satisfied with CIPO services overall (51%) than male clients (55%).

The two studies found that firms that file for patent applications are disproportionately more often owned by men. They also found that women-owned businesses are less likely to have their applications for funding granted (54.8%) as compared to their male counterparts (56.1%). More promisingly, however, patent applications by women-owned businesses grew by 133% from 2001 to 2015. Women-owned business were more likely to file patent applications in chemical engineering and medical technology than men-owned businesses. Further research on women’s experiences filing patents could be useful in understanding the trends in the data.

Overall, the presentations were a significant reminder that we still have so much more to do to level the playing field for women-owned and First Nations-owned businesses. However, with organizations like the IAC and FNIGC spearheading new programs and tools, one can be cautiously optimistic about the future of innovation in Canada.

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Suryast painting generated by the AI tool RAGHAV. Photo by Sukanya Sarkar (ManagingIP.com)

Nikita Munjal is an IP Innovation Clinic Fellow, a Student Editor with the Intellectual Property Journal, and a third-year JD/MBA Candidate at Osgoode Hall Law School.

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

��In September 2021, the IPilogue that India’s copyright office recognized the RAGHAV Painting App (“RAGHAV”), an artificial intelligence (“AI”) tool, as an author of the copyright-protected artistic work, Suryast. The work (reproduced above) was “created” using a base dataset of Vincent van Gogh’s Starry Night painting and a photograph taken by Ankit Sahni, the IP lawyer who created RAGHAV and the work’s listed co-author. Like a natural person, AI might use a painting or photograph as inspiration for their work; unlike a natural person, however, AI can “create” work at an exponentially fast pace. AI’s capability to outperform natural persons is just one of the reasons why its authenticity as an author, sole or joint, is controversial. Labelling the work as a “creation”, as opposed to an “output” or “generation”, has been .

Following registration in India, Mr. Sahni also achieved success in registering RAGHAV as his co-author for Suryast with the (“CIPO”) in December 2021 (CIPO, registration number 1188619). This registration marks the first time Canada has attributed copyright authorship to a non-human, signaling a victory for stakeholders who firmly support an amendment of Canada’s Copyright Act (“t��� Act”) to support the changing needs of innovators and consumers in a high-tech world. Recognizing AI as an author may spark further in the Canadian AI sector.

On the contrary, some scholars, including Osgoode Hall Professor Carys Craig, expressed disdain over CIPO registering AI as an author before the government released the conclusions of their (IoT). Concerned stakeholders had from to submit evidence on whether and how amendments to the Act should be made to achieve its underlying policy objectives while ensuring that Canada’s economy “” The discussed three possible approaches for recognizing AI authorship in the Act:

1. Attribute authorship of AI-generated works to the person who arranged for the work to be created;
2. Clarify that copyright and authorship applies only to works generated by humans (i.e., requiring some human participation for AI-generated works to receive authorship); and
3. Create a new set and unique set of rights for AI-generated works.

It seems that CIPO’s registration of Suryast signals the Canadian government’s enthusiasm for the second proposed framework, since RAGHAV is a listed co-author along with its human counterpart Mr. Sahni. However, since the submissions have yet to be publicly shared, some find that this registration amounted to CIPO “jumping the gun” and undermines the purpose of running a public consultation.

While recognizing AI as an author can lead to further innovation in AI-generated works, many drawbacks exist. Some of the most notable arguments are included in a on the public consultation by 14 Canadian IP scholars. They recommended against recognizing AI as an author and argued that AI-generated works should remain in the public domain. There are technical arguments that the language of the Act implies human authorship and that AI-generated works cannot meet the threshold of “originality” required for copyright subsistence. Further, scholars emphasize that “giving copyright to AI-generated outputs serves none of the [public interest] purposes of copyright protection.” As the Supreme Court of Canada noted in , copyright is usually presented as “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellectual and obtaining a just reward for the creator” (at paras 11-12). Where a work lacks significant human involvement (i.e., is truly AI-generated), the scholars argue that no author is denied their “just reward”, as an act of authorship is missing. Similarly, they argue that there is no reason to assume that AI-generated works will be under-produced in the absence of copyright protection, and so the incentive copyright is meant to provide is absent.��

It is important to remember that once an applicant files their registration with CIPO, the office conducts a formal check of the details submitted in the application. Neither this oversight process nor the certificate of copyright registration amounts to a guarantee of the legitimacy of ownership or that the originality of the work will remain unchallenged. The lack of critical examination throughout the process is significant and may not be the victory for AI that many proclaim it to be. Theoretically, granting registration imparts onto the AI “author” the same rights and remedies that a human author would receive under the Act. An AI could enforce its copyright if a user is infringing. However, a user could challenge an AI’s copyright-protected work on the grounds that it lacks originality and, therefore, lacks copyright altogether. While this is a hypothetical situation, given the amount of controversy this registration has generated, it would be unsurprising if legal action followed.

Although the reach of this registration is limited, it does showcase the growing uncertainty around how AI interacts with copyright laws. Only time will tell where Canada stands on AI authorship as we await the results of the public consultation. Regardless of the position taken, the government must act urgently to address AI and copyright. These questions only become more complex as technology evolves.

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This semester, I had the opportunity to participate in Osgoode’s Intellectual Property (IP) and Technology Law Intensive Program. The program involves a 10-week placement as a legal intern to gain real-world experience in IP law. I had the opportunity to be placed at the Canadian Intellectual Property Office (CIPO). CIPO is a special operating agency of Innovation, Science, and Economic Development Canada (ISED) and is responsible for the administration of intellectual property in Canada.

As a student, I worked with the Policy, International Affairs, and Research Office (PIRO), which is part of the Corporate Strategies and Services Branch (CSS) at CIPO. PIRO provides advice and guidance on policy, regulatory, international, and economic issues to CIPO’s Executive Office and the Deputy Minister and Minister of ISED. PIRO is divided into three teams: Policy and Regulatory Affairs Office (PRAO), International Relations Office (IRO) and the Economic Research and Strategic Analysis Unit. If you didn’t already notice – yes, the federal government has an affinity for acronyms; I learned this on day one of my placement!

My main role was to conduct research to support the PIRO team. I researched intellectual property trends in free trade agreements and identified areas where negotiations are focused. While my main focus was on trade agreements which Canada is party to – including Canada-United States-Mexico Agreement (CUSMA), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), and Comprehensive Economic and Trade Agreement (CETA) – I also learned about the negotiations and IP standards set in other regions of the world by other agreements such as the Regional Comprehensive Economic Partnership (RCEP) and the recent African Continental Free Trade Area (AfCFTA).

My research was also related to meetings that I attended throughout the semester, where I was not only exposed to various areas in international intellectual property law but also to issues the Canadian government is facing regarding implementation of recent trade agreements. For example, I had the opportunity to learn about the process CIPO is taking to implement patent term adjustment obligations as required under Article 20.90 of the CUSMA. It was fascinating to sit-in on discussions of the most current issues that the office is facing as well as being introduced to topics that would never be discussed in the classroom.

I further had the opportunity to attend various meetings on behalf of CIPO’s PIRO team. This includes those held by the Intellectual Property Centre of Expertise (IPCE), an organization established as part of Canada’s national IP strategy in order to provide IP advice and educational support across the federal government. Discussions included considerations that need to be taken when conducting research and the role of federal servants in federal research as dictated by the Public Servants Inventions Act (PSIA). Not
only was this an opportunity to learn about a career of IP in the public sector, but I was also given hands-on experience on how to create effective memoranda when communicating information to the chief executive officer – something that is done regularly as a CIPO analyst.

Working as a student at CIPO has been an incomparable experience. Not only was the work unique, but it was a great skill-building challenge to work independently in areas where I am inexperienced – especially in the remote environment. I want to thank my supervisors, Shawn Tippins and Zorn Pink, who provided me with numerous opportunities to engage with the department. In addition to what I learned from the work, I have gained valuable mentors and lasting relationships. Although I wasn’t able to meet them in person, the team provided a warm and welcoming environment where I felt comfortable asking questions and participating in discussions. I look forward to applying the skills I’ve learned into my career and hope future students will take advantage of this opportunity as well.

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Position: Hearing Officer,

Employer: , Innovation, Science and Economic Development Canada, Government of Canada,

Location: 50 Victoria Street, Gatineau, QC, K1A 0C9

(flexible but preference for candidates located or able to relocate to the Ottawa-Gatineau area)

Tenure: Full-time or Part-Time

Annual Salary Range: $71,599 to $77,368

Description:

Delegated by the Registrar of Trademarks, the Hearing Officer presides over legal proceedings and renders legally binding decisions to enforce and foster compliance with the Trademarks Act and trade agreements (e.g. CETA, CUSMA), and determines whether a party will maintain exclusive and monopolistic commercial trademark rights across Canada by issuing clear and well reasoned decisions appealable to the Federal Court.

Hearing Officers are expected to preside over hearings individually and render decisions on 30 to 40 cases per year as well as prepare and issue correspondence with parties.

Education and Experience

Essential:

• A Law degree from a recognized university in a relevant field of study or an acceptable combination of education, job-related training and/or experience
• Experience in applying legislation, regulations and jurisprudence/legal precedents in writing documents
• Experience as an adjudicator (presiding hearings and rendering legally binding and final decisions)

Asset:

• A law degree from a recognized post-secondary educational institution would be considered an asset
• Experience in trademark prosecution or examination would be considered an asset

Abilities:

• Effective communication (written & oral)
• Ability to draft rulings
• Judgement
• Analytical thinking
• Attention to detail
• Service excellence
• Relationship management and collaboration
• Results orientation

Contact: Martin Béliveau, Chairperson, Trademarks Opposition Board

(martin.beliveau@ised-isde.gc.ca)

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Photo Credits: (Pexels)

Meena Alnajar is an��IPilogue��Writer, IP Innovation Clinic Fellow,��and a 2L JD Candidate at��Osgoode��Hall Law School.��

��

Lawyers across Canada have started to take note of the Canadian Intellectual Property Office’s (CIPO) backlog of trademark applications. Of the which have been filed since April 2018, as of May 2021. COVID-19 has created a more competitive online marketplace and marks can be better protected in these spaces if they are registered. Canada’s backlog thus affects applicants who wish to protect their mark in the online sphere. In response, CIPO released and . The option to request expedited examinations, however, may not be as accessible or efficient in solving the extreme delay.

Why the Backlog

While COVID-19 has added to the delays, the trademark backlog has less to do with COVID and more to do with what legal professionals are calling the In 2019, CIPO released the to allow applicants to at the parties’ office of origin (i.e. CIPO for Canadian applicants), to gain protection in several countries. Since certain deadlines are imposed on Madrid applications, some believe that , which caused a backlog for non-Madrid applications. Most non-Madrid trademark applications that in 2021 were filed sometime in 2018.

CIPO’s Notices

On May 3, CIPO released two notices in an attempt to resolve the backlog issue. The first permitted in the form of an affidavit or statutory declaration setting out the circumstances and reasons for an expedited examination request. While these requests had no fees attached, they had to be drafted on paper, mailed or faxed, and listed by CIPO:

1. Court action is expected or underway in Canada with regards to the goods or services listed in the application.
2. The applicant is combating counterfeit products at the Canadian border with respect to their trademark and the goods or services listed in the application.
3. The applicant requires the trademark registration to protect their intellectual property from being disadvantaged in the online marketplace.
4. To preserve the claim to priority within a defined deadline and following a request by a foreign intellectual property office.

The second notice entails in trademark examination, with to CIPO’s practices:

1. Fewer examples of goods or services that are acceptable in the statement of goods or services will be provided with the examiner’s first report.
2. Applications that have statements of goods or services from the Office of the Registrar of Trademarks’ pre-approved list will be examined more quickly.
3. Examiners will issue fewer reports prior to a refusal; thus, applications will be refused in a more timely manner.

Issues with Accessibility and Expediency

While CIPO has the purported goal of expediting trademark applications, the added steps to request an expedited examination could create even more barriers and further delay registration. Upon filing a request, and send written correspondence explaining the reasons for rejection. With no guarantee of expediting the process, CIPO’s recent measures may prove ineffective at ameliorating the trademark backlog. Further, expedited examination requests which may take time and expenditures to acquire, thereby causing further delays and limiting accessibility as well. If applicants are not able to obtain sworn evidence, they will have to to register their mark in Canada. As a result, their intellectual property will be at risk and left without protection.

A possible solution would be to expedite all applications and use these measures to improve timeliness as opposed to requiring applicants to first meet the criteria for expedited requests and . The current steps to combat a backlog may have the opposite effect in practice by extending Canada’s trademark registration timeline. The additional notices may become added barriers depending on how CIPO interprets each of the four criteria for expedited examination requests. If interpreted narrowly, trademark applicants are divided into classes of expedited and non-expedited requests. The non-expedited applicants will then be disadvantaged because they will not be able to protect their marks. If interpreted broadly, the notice may result in most applications approved for expedited examination, thus maintaining the trademark backlog. Time will tell if CIPO will successfully play catch-up with .

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On April 26, 2021, the theme of World IP Day 2021 is “”. Since I founded the IP Innovation Clinic in 2010, the Clinic has helped countless innovators, entrepreneurs, and small businesses to do exactly that. Our students have provided basic legal information to clients who otherwise would not have any access to it. To date, the Clinic has subsidized over $2,000,000CDN of legal fees that would otherwise have been paid by those without access to resources. This past year, the Clinic has expanded its impact through the recently launched , a free legal chatbot which uses a vast database of credible IP information to answer users’ initial IP questions and guide them to the type of legal help they need. This is only the beginning of the ChatBot’s story.

In a critical time of Covid-19 isolation, I aim to ensure that the IP Innovation ChatBot’s content is accessible and attuned to the unique realities of underrepresented communities in Canada’s intellectual property (IP) innovation ecosystem; namely, women and indigenous peoples. Having assisted clients in these underrepresented groups in the IP Innovation Clinic, and through my own research and writing in this area, I have seen first-hand the distinct struggles these groups confront in the traditional IP innovation ecosystem and the distinct challenges they face to bring their innovations to society; from being silenced in their ideation phase to lacking adequate resources and know-how to develop IP strategies attuned to their unique needs and perspectives.

This AI-powered initiative has been launched thanks to the Canadian government’s , and supports its mandate to increase IP awareness and education by making IP information more accessible. These learnings can easily be applied to other areas of the law.

The ChatBot has been realized due to visionary IP Innovation Clinic champions backing our work, Innovation 91��ɫ at 91��ɫ, Ontario Centre of Innovation (OCI) at the very outset and Bergeron Entrepreneurs Science and Technology (BEST) Program at Lassonde School of Engineering and Norton Rose Fulbright (NRF) Canada LLP. Indeed, the technical and legal expertise of Partner, Maya Medeiros, and Al Hounsell at NRF, and our Osgoode JD team of students led by Ryan Wong, class of 2021. It is also an honour to work closely with other leaders in the federal government such as the Konstantinos Georgaras, CEO (Interim) at the Canadian Intellectual Property Office (CIPO) and Jennifer Miller, Erin Campbell and their teams at Innovation, Science and Economic Development (ISED), who understand and work hard to overcome the challenges Canadian innovators face.

I previously uncovered the various challenges that underrepresented communities face in the IP innovation system and how grassroots initiatives, such as IP legal clinics, can assist in and in more recent work to use the power of artificial intelligence (AI) to build an IP Innovation ChatBot to make IP law more accessible. Going forward, I plan to expand on this foundational and empirical work to build the IP Innovation Clinic and the ChatBot to make the IP innovation ecosystem more accessible.

Ultimately, in an era of increasing technological disruption and lingering societal inequality and pandemic isolation, I hope to influence future legal education and make our justice system accessible to all Canadians.

Indeed, AI applications, including legal chatbots, use machine learning to make the law more understandable, manageable, useful, accessible, predictable, and efficient. Legal chatbots increase access to justice through their wider reach and lower costs. Many underrepresented communities receive either inadequate or no legal help at all. Technology currently cannot provide complex legal advice, but AI-powered online legal services can cost-effectively deliver accessible, basic legal help. Some, like our IP Innovation ChatBot, do so for free. Chatbots can thus democratize access to basic legal services for the underserved, and therefore deserve greater study and adoption.

Since its January 29, 2021 launch, the IP Innovation ChatBot has been a magnet for public use. Several members of the legal community have already inquired to learn how to emulate it. With the information from these analyses, I plan to design and build an enhanced, interactive, dynamic, and accessible portal powered by next-generation artificial intelligence operating on big data curated by our pioneering IP Innovation ChatBot.

The ChatBot will remain a free, sophisticated, and smart online tool, driven by AI and designed to cater to underrepresented and disenfranchised innovators. It will soon house key IP resources and information, leading updates, and links to Canadian and international government IP resources. The ChatBot’s scaled-up national platform will analyse its amassed archive of data and identify common IP knowledge translation problems to devise and anticipate solutions. Adapted for the COVID-19 era and beyond, the ChatBot will support the next generation of lawyers, educate and stimulate innovation from underrepresented communities, provide start-up entrepreneurs with access to IP resources, and be the public’s go-to tool for independent and impartial IP knowledge.

Prof Pina D’Agostino is Associate Professor at Osgoode Hall Law School and Founder and Director of IP Osgoode, the IPilogue, the IP Innovation Clinic, and officially since January 2021 the recently launched IP Innovation Clinic ChatBot.

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