June 18, 2025 • 36 mins
This episode captures a fascinating conversation between UK and Canadian intellectual property experts exploring the unique challenges and innovations in their respective IP systems.
The discussion dives deep into Canada's uncertain landscape for patentable subject matter, where inconsistent case law and examiner interpretations create significant headaches for businesses seeking protection. Unlike Europe's relatively settled approach, Canadian companies often face unpredictability that hampers strategic planning, as one guest puts it, sometimes patent outcomes depend on "the particular examiner's mood that day."
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Episode Transcript
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Speaker 1 (00:00):
I've been a treasurer and it's the worst year in the
organisation's history.
Speaker 3 (00:04):
It's a lot of nerve-wracking.
Speaker 2 (00:06):
Was it your fault Completely.
Speaker 1 (00:09):
Oh, absolutely.
Lee Davis and Gwilym Robertsare the two IPs in a pod and you
are listening to a podcast onintellectual property brought to
you by the Chartered Instituteof Patent Attorneys.
Brought to you by the CharteredInstitute of Patent Attorneys.
Speaker 5 (00:30):
Final podcast of this little session.
Feeling all right, I saw youflagging, but we've done the
flagging joke, haven't we?
Speaker 1 (00:36):
I've just been told off for something I did in the
last podcast, so I'm justbruised.
Speaker 5 (00:39):
Oh sorry, that's all right, I'm over it.
Speaker 1 (00:42):
It wasn't really a telling off, no, it was just a
reminder that you can't say somestuff yeah, totally
legitimately.
Speaker 5 (00:47):
It's something I like to do.
I feel hurt now, in case I'veoffended you.
We're an amazing team.
Speaker 1 (00:52):
I was going to mention something that sets you
up with a really good joke.
Oh, I can Do.
You expect me to tell it ontime?
No, no, no, I've just comeacross a new thing.
When you go to a shop, I gottold I'd done a bad tap.
Bad tap, and you got reallyexcited immediately.
Speaker 5 (01:08):
Yeah, because I was going to get my bag of washers
out and kind of give you alittle fix.
Speaker 1 (01:11):
Yeah, but no, it was.
I didn't tap the machineproperly.
It just says bad tap, bad tap.
I know.
Again, I feel that all day I'mbruised everywhere I go.
I'm just getting bad.
Speaker 5 (01:20):
You've not had the best week, have you?
No, and it's only Monday.
And I think when you read, itis Monday, isn't it?
It is, yeah, it's ridiculous,isn't it?
Speaker 1 (01:28):
When you say bad tap, you feel like did I not tap
properly?
Was it me, Was it?
Speaker 5 (01:32):
my tapping.
You've got this far on in yourlife where you don't know how to
tap.
Speaker 1 (01:36):
I don't know how to tap.
Speaker 5 (01:40):
Yeah, so I was quite disappointed by it.
You get a bit of that as wellunder 10%.
Maybe we can talk about tipping.
Speaker 1 (01:45):
I just tipped 77 cents to pick a banana out of a
basket 77 cents.
Speaker 5 (01:50):
Was that to make it up to a round figure?
Speaker 1 (01:52):
no, I don't know what it is when they give you those
numbers and I press the wrongbutton.
I tipped the people for beingnear a banana and there it is
for anyone who's listening?
Speaker 5 (02:03):
if people still are listening to this podcast, I
have a banana.
It is.
Here's the banana.
Here's the banana.
Speaker 6 (02:05):
For anyone who's listening.
If people still are listeningto this podcast, I have a banana
.
Speaker 1 (02:07):
I have a banana.
Speaker 5 (02:07):
Don't understand.
It is the banana, isn't it?
Speaker 1 (02:09):
This is mine, that's the banana.
I feel like I should have hadthe 77 cents.
Oh, there we go.
Do you want to have the banana?
Speaker 5 (02:13):
No, so this is again one of our.
We always say sister, I don'tknow if that's right, is it
sibling?
Because it could be.
I mean, our organisations aregender neutral, aren't they?
So yes, they are, aren't they?
So, yeah, sibling organisations, our friends in Canada, who we
have a brilliant relationshipwith.
In fact, we have a.
We have a delegation going overto visit EPIC in Ottawa in June
(02:37):
, which we're really, reallylooking forward to.
So it's great to have threecolleagues on the podcast.
Do you want to introduceyourselves, and where should we
start?
Should we start with?
So again, everyone is pointingat one another, joanne go first
Alright, why not my name's?
Speaker 3 (02:54):
Joanne Nardi?
I'm a trademark agent.
I am on the board of Epic astreasurer.
This year They've let me countthe money, which is very
exciting.
Speaker 5 (03:02):
Do you have to keep the money?
Speaker 3 (03:06):
Just count it Sadly, just count it.
Very distressing.
Anyway, I have my own firm inToronto.
Before I started my own firm Iworked for years at Molson Coors
, so I've got my big beard I wasover in the UK regularly up at
Burton-on-Trent.
Speaker 5 (03:25):
So in terms of the way, because I can never really
remember how the officer roleswork at EPIC, is the treasurer
role a route to something else?
Are you on the journey?
I am?
Speaker 3 (03:33):
on the journey.
You're on the journey yes, it'smy first year on the executive.
I was on the board a few yearsago and was asked to join the
executive this year.
So, treasurer, is the first,then you get secretary vice
president, president, pastpresident.
Speaker 1 (03:48):
It's really choice enough being a treasurer, being
a treasurer.
I've been a treasurer and it'sthe worst year in the
organization's history.
Speaker 3 (03:55):
Well, it's a lot of nerve-wracking, but was it your
fault Completely.
Speaker 1 (04:00):
Oh, absolutely.
Speaker 4 (04:02):
Louis-Pierre, you started talking, so you might as
well introduce yourself.
Speaker 2 (04:04):
Yeah, because Excel didn't work, so Louis-Pierre
Ravel.
I'm a past president of Epic,so they've taken me out of the
closet and dusted me and broughtme here.
I work for a firm calledDipchand in Toronto.
Although I live in Montreal, Idon't have any plans on moving
to Toronto.
(04:24):
Although I live in Montreal, Idon't have any plans on moving
to Toronto and involved in a fewother organizations, among
which is FICB, which Willemknows, as well as GLIPA, which
is another organization we canultimately have a conversation
about at some point.
Yes, I'm making notes.
Speaker 6 (04:41):
Last but not least Krishna.
Hello everyone, krishna Patil.
I am actually Silicon Valleybased, although also a Canadian.
I am an IP strategist, patentlawyer and engineer.
Yeah, and I've got a longhistory with my friend here,
gwilym.
It's been over what?
Speaker 1 (05:00):
almost 25 years, gwilym, oh that's amazing and
you've been part of one of themost famous, world famous
Canadian IP stories ever.
Speaker 6 (05:06):
Of course, yeah, so my career started pretty early
with BlackBerry, or it wascalled Research in Motion in
those days, yeah, yeah, right,and we started this rather tiny
little patent portfolio and kindof grew it to quite a large
organization, let's say that,and had the fortune to work with
a number of differentcolleagues, including Pierre
(05:27):
here as well, and I thought Iknew everyone in the IP practice
in Canada.
Only today I met Joanne for thefirst time, so it's wonderful
to meet you.
Speaker 3 (05:36):
Well and it's funny because I thought I knew
everyone too it just goes toshow there's more people to meet
.
Speaker 6 (05:43):
Yeah, so I've got a few little projects underway
this year.
I'm now a board member of theIntellectual Asset Collective in
Canada.
Yes, so I'm helping to drivesome leadership in the IP space.
Right now, the member companiesare in the data-driven clean
tech space.
The member companies are in thedata-driven clean tech space.
(06:04):
It's basically trying to scaleup the IP acumen of small and
medium-sized enterprises inCanada that are going to look
more globally in the future andmake sure that they're much more
IP-savvy in the future.
Speaker 5 (06:16):
So where's a good place to start the conversation?
As I said, I think, earlier,we're on our way over to visit
you folks in June, really reallylooking forward to it.
We've a small delegation comingto talk about things like upc
litigation, education, uh, otherother topics, so we could sort
of circle around some of those.
We know privilege is a bigissue for you in canada at the
(06:37):
moment.
We also know that there's not alot of progress in that,
probably since the last time wespoke about it.
We also know you've come up toyour centenary, aren't you?
So that's all very exciting.
We might have plans to dosomething for you in that regard
, which we're not going todisclose here, but I just wanted
to drop a little.
Even you don't know what myplans are, do you?
Speaker 1 (06:55):
I'm free of fish and chips supper.
Speaker 5 (06:59):
And mushy peas.
Just wanted to drop a littleteaser into the conversation.
I just wanted to drop a littleteaser into the conversation.
Where do you want to go withthe conversation?
Where should we start?
Speaker 2 (07:06):
We can certainly talk about patentable subject matter
, which is one of thoseperennial issues we have in
Canada.
We do know that recently theSenators Coombe and Tillis in
the United States reintroducedthe PERA and PREVAIL Acts, which
aim to undo some of the damagethat the Supreme Court in the US
has done on Section 101.
(07:27):
And I think we're hopeful thatin Canada, if those do pass,
it's going to have a rippleeffect in finally convincing the
Canadian IP office to have amore sober look on patentable
subject matter and not stick towhat I consider to be artificial
(07:48):
and outdated ideas about whatshould and should not be
protectable by patents in Canada.
Speaker 1 (07:54):
That's interesting.
So obviously I've taken theview that Europe's settled its
position and been challenged bya large board to appear at the
UPR and come back and stillsettle its position.
Uk courts not maybe quite soadvanced.
Advanced, but there's a lot ofcertainty around.
Is that not the situation incanada?
Speaker 2 (08:09):
no, there's a little bit of uncertainty still about
it.
I mean, the supreme court ofcanada chimed in on the issue 25
years ago in both the harvardmouse case and the schmeisser
versus monsanto cases.
Since then there have beentrial division decisions and
appeals decisions that are,frankly, inconsistent and
irreconcilable, and for the timebeing, the Supreme Court has
(08:32):
refused to entertain additionalchallenges to these sections,
and so it's still uncertain.
And generally, the patent barin Canada I think is an
agreement to say that theposition adopted by the Canadian
IP office is inconsistent withthe case law, and they've pushed
back on a number of cases andsaid no, no, no, we think that
(08:56):
we've got the right solution andthat's how we're going to
continue doing it Okay.
Speaker 1 (09:01):
So certainty always makes a big difference, doesn't
it?
I mean, just advising in anuncertain environment makes it
so tricky.
Businesses don't want it.
Speaker 2 (09:09):
Well, they don't want to have that uncertainty.
They want to havepredictability and when.
Ultimately, the decision as towhether or not your patent
application is going to succeedrests on the particular examiner
that's going to be examiningyour case, and because we're all
humans, sometimes their moodthat day can affect the way they
(09:30):
look at things.
It's very frustrating.
Speaker 1 (09:34):
Joanne, what's your area of expertise then?
Speaker 3 (09:36):
I'm trademarks.
I help a lot of companies a lotof hot energy fractional
in-house outside.
Help them set up their IPdepartments and get themselves
organised when they've gone fromsmall little sleepy companies
to suddenly being billion dollarbrands, and they're trying to
(09:58):
catch up so I end up doing that,not where I thought my career
would go, but it's been a reallyfun experience and I tend to do
a really fun experience.
Speaker 1 (10:07):
I tend to do a lot of it, but you're not the imposter
of Inter, though, so INTA, whatdo we call it?
Speaker 5 (10:12):
Apparently, we can use either.
Okay, fine.
Speaker 1 (10:16):
Either, so you're among 10,000 close friends.
Speaker 3 (10:19):
Yes, I am.
That's quite nice.
I'm not a fake trademark personand how many?
Speaker 5 (10:25):
oh, oh, willem, yeah, oh.
Speaker 4 (10:26):
I like that, that's you.
That is, that's so it.
It's so it, that's not aproblem.
Speaker 1 (10:32):
How long have you been coming to the conference?
Speaker 3 (10:35):
my first one was in 1996 or 7 in Boston wow so a
long time yeah.
I haven't come.
Every year I got married.
One year I had a baby.
Another year I every year I gotmarried.
One year I had a baby anotheryear.
Speaker 1 (10:47):
Great taste, huh?
Reasonable excuses, yeah, oh,that's interesting.
Tell me, what change do you see?
Speaker 3 (10:53):
Oh, it's just massive now, you know, when I first
came in Boston, I think it waslike 2,000 registrants.
Really and everybody sort ofdid.
You know, everybody went to theopening ceremonies, everybody
went to all the receptions andnow it's just such a Quite.
Honestly, it's just a place forus to all meet at the same time
(11:15):
each year.
But the conference itself it'salmost a victim of its own
success.
Do you know what I mean?
Yeah, yeah.
Speaker 5 (11:27):
It's exhaustingly large, isn't it yes?
Speaker 1 (11:30):
I think it's the way things are going to go, though
Personally, I think conferenceshave changed their role, because
when I started going toconferences, it really was to
network and meet new people andmaybe get a little bit of
business or find an attorney ina country you didn't really know
, so that you could build arelationship to send work,
whatever it might be.
That you could build arelationship to send work,
whatever it might be, whereasnow it's just so big that you
can't really rely on serendipity.
We were looking at thenetworking space, the speed
(11:52):
networking space over there.
That's quite challenging.
There's big numbers and you'vegot to meet at number seven and
all B at such and such a time tomeet a new person and swap
cards and things.
Speaker 5 (12:04):
Can I ask Joe a quick question about so?
In the UK, whilst we don'tmajor in trademarks, we
obviously work quite closelywith uh charter trade mark
attorneys.
We do, uh they've got a bit ofa campaign going on at the
moment with the uk intellectualproperty office around over,
let's say, overseas attorneysfrom certain jurisdictions who,
because there are no, there areno limits on who can represent
(12:25):
before the UK IPO and file atrademark application, we're
getting quite a lot of floodingof the trademark register with
brand names that are lots ofunlinked letters, maybe Similar
in Canada, not as much.
Speaker 3 (12:40):
I mean you do have to be licensed by the College of
Patent and Trademark Agents topractice before.
Speaker 5 (12:46):
So there is a link between registration and
practicing before the yes yes,so that's helpful, but foreign
trademark lawyers can be members.
Speaker 3 (12:56):
I don't actually quite know how that works,
because that's something I'm notto worry about.
It's been a big issue in the US.
You could really see the floodof applications a few years ago
coming from, you know, variouscountries and just everything
and for every goods and service,and it's just.
It's insane, and a lot of markson the register that are just
(13:19):
they're not being used, they'renot being used for everything,
and it's just.
You know the register hasbecome really cluttered and
that's that happens in canada aswell, especially with no use
requirements it just makes thesystem sluggish, doesn't it?
it slows everything down yeah,yeah, although in canada they've
started um non-use proceedings.
(13:41):
Always used to be a third partywould have to request them,
okay.
And now cepO has started apilot program whereby they're
just randomly picking trademarksand so they're doing a bit of
due diligence and yeah.
Speaker 1 (13:55):
How's that been received?
Speaker 3 (13:57):
Not well.
Speaker 1 (13:58):
That's interesting.
I mean I want to talk a bitmore about policy and
governments getting involved ininnovation and so on, but this
is a good starting point forthat.
So from the outside it soundslike they're stepping in for
policy reasons to help un-futurea registry because no one else
is doing it, but it sounds likeit's not going down quite like
that Depends who you are.
Speaker 3 (14:18):
I think it's a great idea.
I really do.
I also don't have clients thathave been getting these letters
and they're annoyed by itEspecially you know.
I don't know how they decide.
Do you know how they decidewhat they're going to?
Speaker 2 (14:30):
I think it's completely random.
Speaker 3 (14:31):
I think it is random, so it's not a question of doing
any due diligence.
Speaker 2 (14:34):
It's just a question of.
Speaker 3 (14:35):
Yeah, there's no due diligence.
Speaker 2 (14:37):
Picking something out of a bowl and saying, oh, let's
send a letter to this one.
Speaker 3 (14:48):
So if I was Coca I've got a non-use proceeding
against Coke.
I'd be a little annoyed aboutthat, but I really do think it's
completely random.
I do hope that if somethinglike that came up they'd be like
it's in the vending machinedown the hall.
Speaker 1 (14:58):
we know it's in the vending machine, and is that why
it's not popular?
Because of the randomness.
Speaker 3 (15:03):
I think that's why?
Speaker 1 (15:03):
yeah, Okay, it's not government overreach or
something like that.
Speaker 3 (15:05):
Okay, it's not government overreach or
something like that.
No, I'm sure there's some ofthat too.
Speaker 2 (15:12):
It's not too much, but I think it's mostly the
randomness and it's a changealso in the behavior of the
applicants and the agents inCanada, because, as Joanne said
earlier, traditionally it was athird party that would institute
a kind of proceeding like thisbecause you're feeling some sort
of threat or you need to clearthe register.
Now it's just out of the bluethey send out these letters, and
so the applicants and theagents themselves are surprised
(15:34):
by this initiative that'spiloted by the office.
Speaker 3 (15:38):
Yeah.
Speaker 2 (15:39):
Which doesn't seem to have you know echo in other
jurisdictions.
Speaker 1 (15:44):
Yeah.
Speaker 2 (15:44):
I've not heard of anything like that in the UK?
Speaker 1 (15:47):
No, absolutely not.
I was going to roll on withthat about where the role of the
office is and everything likethat.
And, krishna, you're saying,with the intellectual asset
collective in Canada, innovation, oh sorry, intellectual asset
collective, thank you.
And again, that's kind oflooking.
The use of IP in Canada, howdoes that fit in with IPIC?
(16:07):
How does it fit in with theCIPO?
Speaker 6 (16:10):
So I think it's rooted in a number of companies
who've tried to scale beyond theCanadian borders and
recognizing that sometimes theIP side units of some of our
high-tech companies that are inthis kind of trajectory of
growth don't necessarily developin sync with their IP as they
have with their business growth.
So then there's a disconnectright where they've got this
(16:33):
growth trajectory but they don'thave the underlying IP
protected.
That's, you know, fueled thatgrowth.
So you know, the federalgovernment started the
institution a few years ago.
It's mostly an experiment to seeif, in this particular space of
data-driven clean tech, ifmember companies that are in
this space can develop aheightened level of IP savviness
(16:55):
.
It comes from training,encouraging them to file patents
, getting them a full 360 of IPdevelopment, procurement and
development and hopefully theability for these companies to
go off and develop outside ofCanada and exploit their
technology in a successful waythat doesn't have this overhang
of IP risk.
And part of this organizationincludes things like patent
(17:19):
acquisitions, getting assetsthat can be used by member
companies.
This is very much an experimentto demonstrate, to see if this
is something that can scalebeyond the particular technology
areas.
I think it's interesting and Ithink countries like the UK have
something like the patent box,if I remember correctly.
So countries like Canada arelooking to other jurisdictions
(17:42):
to see what's proven to besuccessful, what doesn't work,
and this is, let's say, a modelthat's being tested out.
Speaker 2 (17:51):
And in parallel with the initiative of the government
in the IAC, the federalgovernment also rolled out two
other programs.
One is called IP Assist and theother one is called Elevate IP,
and both programs follow a verysimilar structure, which is what
they call level one, or just anintroduction to IP basics.
And then level two is funds tohelp the companies craft at
(18:17):
least an initial IP strategy.
So at least start with doing anaudit, some basic searching,
look at some contractual issuesand sort of map out how this IP
strategy can help propel thebusiness strategy of the company
.
Level three was monies for theimplementation of that strategy,
so in certain cases they wouldactually fund the drafting and
(18:39):
the filing of patentapplications, not just in the US
but around the world.
And so I think from thatperspective the Canadian
government really finallyrecognized that there is a
knowledge gap in SMEs and ineven larger companies across the
country, and we need to addressthat, Because if we're going to
, as with other countries,really shift our economies to a
(19:01):
knowledge economy, then thatnecessarily has to go through IP
and IP assets and theprotection and defense of them.
Speaker 5 (19:08):
And is that support at each of those three levels?
Is that no strings attached?
So there's no expectation ofany kind of flow back through
government, of ownership of IPor anything like that?
No, no, that's a loadedquestion for some of the things
that we're seeing happeningRight.
Speaker 2 (19:23):
So but you know you need to think about it from the
government's perspective.
What are you trying to achieve?
And if you're trying to achievea change in the behavior of the
people, then that's the bestway to start doing it, because
you're actually giving themmoney to change their behavior
and hopefully the program isgoing to be long-term enough to
be able to affect long-termchange.
(19:44):
And we're still unsure whetheror not any of these programs,
which were initial two-,three-year programs, will have
any legs in the future.
But certainly you can'tevaluate the success of a
program like that after twoyears.
I mean, it just takes a lotlonger to evaluate whether or
not you've actually succeeded inchanging behavior in the long
term.
Speaker 6 (20:04):
That's the challenge behind patents, right, we've got
this control loop that takesthree, four-plus years before
you know you've got an assetthat's actually viable in terms
of issuance.
Then you want to see if it'sactually being adopted and has
an impact on the industry.
The control loop's even furtherout, seven-plus years, right.
So that's like going back toyour point.
That's one of the predicamentsof the patent development
process, right, it's one of thepredicaments of the patent
(20:25):
development process, right?
Yeah, it's a hard vehicle tokind of point to in terms of
return on investment in a shortwindow of time.
You have to look long-term andit's a long-term game here.
Speaker 2 (20:36):
And you're doing a marathon, you're not doing a
sprint, right, right, I remember.
Speaker 1 (20:40):
BlackBerry, you had this metric, a pipeline metric,
didn't you?
I remember that.
So, looking at patents ratherthan waiting for them to get
granted, but, quite early on,actually get into valuation,
attached to it, basically as itwas coming through, which I was
quite clever actually for acompany with extremely young
portfolio, that was the way todo, it, wasn't that?
Speaker 6 (20:57):
yeah, I mean, as companies mature, you develop a
whole set of metrics that tokind of quantify your success
rate right, one of which is likeat that time we were doing kind
of metrics applied to all ourassets from the day we filed to
the journey before it getsissued and post allowance.
It's a process that actuallyhas very successfully been
(21:17):
employed across differentcountries and companies this
week.
Speaker 1 (21:20):
I think the UK government looks at these things
and I know what you werereferring to.
I'm not going to say too much,no, but I think for me it's
interesting how far governmentsget involved.
I think it's really useful.
Speaker 5 (21:33):
The UK proved most on the SME front, isn't it that
we're looking, which is a goodstarting point, of course, but
yeah, it's just that the feelthat we're getting in the UK of
the government is that it's notalways no strings attached.
There's very often there aresort of in the small print.
There are things that perhapsSMEs need to read to fully
(21:54):
understand what it's again smallfor and what the potential
consequences might be for that.
Speaker 1 (21:58):
Let's leave it there.
Yeah, yeah, but there is somegood no strings stuff like IP
audits, so basically that youknow that really is just go in
learn about the company, kind ofthe early stage point of what
you were saying a sense of getin there, learn about it and
then give some initial advice,and that's very much no strings.
I think that does.
Do you have something similarthen, to that?
Speaker 2 (22:15):
The IP strategy that the Elevate IP and IP Assist
programs cover will do somethinglike that At least.
When you're establishing an IPstrategy from the beginning, you
need to understand where you'restarting from.
An IP strategy from thebeginning.
You need to understand whereyou're starting from, so you
need to do an audit of what thecompany has.
And then we've seen also someprovinces getting you know,
wrapping up some programs.
In Ontario, for example, ipOntario is a separate agency of
(22:40):
the Ontario government.
They also have money to providefor companies no strings
attached on IP strategy, landsca, landscaping, searching,
freedom to operate andimplementation of their ip
strategy.
The alberta government isstarting to look at some of
those initiatives and on theother flip side, we someone
talked about the patent boxearlier, but quebec, the
(23:00):
province has a, an ip boxprogram.
But you know that I think ifyou start by providing an ip box
, then you're missing out on allthe all the stuff that's
upstream of that, because inorder for you to have an ip box
you need to have predictableassets yeah, and you need to
file those applications first.
Yeah, right, so it's.
It's looking at it a little bitfrom the the reverse position.
(23:23):
Whereas, whereas the Elevate IPand IP Assist and IAC start
from the beginning, which is atthe innovation step, at the R&D
step, how do you map out thenext activities going forward?
Speaker 5 (23:37):
Can I ask a policy-related question?
You'll know where this iscoming from when I develop it
very slowly, as I'm just aboutto.
My thinking is very slow, so Ihave to develop things slowly.
I mean, obviously we have aninternational property office in
the UK.
It's two things.
It's a business in governmentin that it's selling stuff, it's
selling patents and trademarksand the like Not selling them,
(24:00):
obviously, but there's nolottery to get one right,
allowing people to buy a servicefrom it, and that generates
revenue.
So it's a business in government, but it's also the policy
engine of government.
So it's trying to do those twothings and sometimes there are
conflicts in that, I think, orinertias in that.
That we see.
But what I'm hearing here isthere's almost a third dimension
, so presumably the cipo is bothof those things as well, but
(24:24):
also you've got policy atprovince level.
How does all that tie tietogether?
Speaker 2 (24:32):
I was thinking I was thinking Good, good, good, and
that is one thing we're noticingis that sometimes those
initiatives individually arevery good, but they're not part
of an overarching goal.
They're not part of anoverarching strategy, which one
would think would make a lot ofsense.
You know, align all your ducksin the same row and map it out.
But of course, you know, theprovinces are fairly autonomous
(24:55):
in some areas, based on theseparation of powers that's
provided in our constitution,and therefore they want to
protect and encourage their ownhomegrown industries.
Speaker 5 (25:03):
So does that mean that the CIPO is less of a
policy influencer in that sense?
Speaker 2 (25:09):
So CIPO has always considered itself to be not a
policy influencer.
So, they do the administrationfor the IP rights and they do
education as well.
But the policy is done withinanother government department,
which we now know as industry,science and economic development
, and so they drive the policyaspect that then gets trickled
(25:29):
down to CIPO and elsewhere.
Speaker 1 (25:33):
It's really complicated.
I think again from myexperience in the UK.
Our IPO does advise, forexample, the innovation IP
minister directly and everythinglike that, but there are other
government bodies that alsodrive the innovation strategy,
at least.
Speaker 5 (25:48):
Sometimes it feels like that drive is slow.
Speaker 1 (25:51):
Slow and slightly disconnected, not to be far, by
the IPO, where they try veryhard to get rid of the middle.
Speaker 5 (25:55):
No, it's the fault of the machinery of government.
Yeah, and it's like a powerthing.
Speaker 1 (26:00):
Maybe I'll take this down to go for rabbit hole.
No, it's a good point.
I was going to ask about thecentenary, actually, and what
the party's going to be likeit's going to be in Ottawa.
Speaker 3 (26:09):
And it's at the Chateau Laurier, which was where
the very first Patent andTrademark Institute meeting was
held a hundred years ago.
So they're having it.
Speaker 5 (26:25):
I don't know a lot of details on it yet.
Is there a given date?
Is there a date for thecelebration?
You're doing a year-long gig?
Is it Like lots of parties?
Yeah, is it Lots of parties?
It's just never-ending.
Well, it'll be during theannual meeting.
Speaker 3 (26:39):
I'm not quite sure what the dates are.
Speaker 5 (26:41):
September-ish time September.
Speaker 3 (26:43):
October-ish.
Speaker 5 (26:45):
I'll be there when you're out there In June.
No, no, no.
So June is the joined-upleadership meeting that we have
where we reciprocate.
But, yeah, no, I always try andget along to the annual meeting
.
Can't get there this yearbecause we've got a class of
conferences.
We've scheduled ours for thesame time.
Speaker 3 (26:59):
Oh, no, yeah, that's why I'm missing out on Saskatoon
.
Speaker 5 (27:04):
Yeah, I'm not missing out on trying to get there
though.
Speaker 3 (27:06):
No, well, that's more difficult for you.
Speaker 1 (27:09):
yes, no direct flights from Heathrow.
No, no, no.
I recall the SEPA had a verygood band on for their 125th
anniversary.
Speaker 5 (27:18):
Yeah, we had a very good band.
Speaker 3 (27:19):
It's a pressure.
Speaker 1 (27:21):
No, we were offering the band oh you were offering
the band.
Speaker 3 (27:23):
That's great fun, Interesting.
That could help our budget.
I mean the treasurer, that'simportant, so personally you've
actually got a different badgeon label.
Speaker 6 (27:36):
Tell us about the inventors foundation.
Oh wonderful, I'll tell you.
Definitely take advantage ofthis opportunity.
So you know, going back to thisearlier conversation about
these organizations in canadathat are helping to basically
change the behavior of companies, inventors foundation is really
focusing on stepping back evenfurther to change the behavior
of inventors, people who theintellectual property like
(27:58):
warriors, these intellectualwarriors who make our lives
possible.
Yeah, right, we often have thisconversation about companies.
We seldomly talk about thoseinnovators, those inventors who
strip away from their day-to-daypractice of engineering or
their science engineering workto then work with patent
attorneys and other IPprofessionals.
(28:19):
And you know we all recognizethat it's sometimes a big chore.
In fact, when I was in thecouncil of various different
companies, about 30% of our timewas convincing the engineers to
take time out of their day andwork with the patent attorneys
and it was a chore.
And a big part of that is therecognition element.
(28:41):
Sometimes they're notnecessarily recognized from a
performance standpoint that theyfiled a set of patents.
Sometimes the top levelmanagers are not fully
recognizing the effort that goesinto participating in the
patenting process.
So this Inventors Foundation isa foundation focused on
celebrating and recognizinginventors, their contributions
to the ecosystem, the fact thatthey participate in protecting
(29:01):
their innovation through patentsor other intellectual property.
So you know, especially thisday of AI and the fact that AI
is getting into the ecosystem ofthe creation process, I think
it's even more important todaythat we celebrate and recognize
that human creativity.
And that's what InventorsFoundation is about is to
celebrate and put a spotlight oninventors.
(29:23):
We're going to be doingstorytelling of patents.
Yeah yeah, yeah.
Just to give you an example andwe all know this the four
corners of these patentdocuments are sometimes a little
bit stale, kind of Not the mostreadable document.
We're going to bring it to life.
Do a little bit of storytellingon all the patents.
Do interviews with inventorsand give them a platform to show
(29:46):
off their innovation.
Speaker 5 (29:48):
Yeah, we're a wee bit fortunate there, Raghav,
because we have an Earthshotnominator.
So we link our work on thiswith those Earthshot nominations
.
So we do case studies of thenormally kind of green tech
startups in the sustainabilityspace.
So we'll be doing case studiesand telling their stories.
But it feels like a similarthing.
It's about telling that storyExactly.
Speaker 6 (30:07):
Exactly.
Speaker 1 (30:08):
Although I think we've taken your point.
I think we celebrate thecompany and we have many, many
inventors on the inventory, butI'm not sure we completely
severed it out.
So one of the things we know.
I don't think we've ever donethis actually is the whole point
about reward andincentivization systems.
We should probably do some moreabout that.
We've never really talked aboutit.
Speaker 6 (30:26):
So on that point, gollum, one of our first
exercises with this foundationis to do a benchmarking and a
case study of what it takes foran inventor to be incentivized
to participate in the patentingprocess.
I think all of us have comeacross some companies who have
some sort of remunerationprogram.
Or in our heydays at BlackBerry, we used to have the patent
banquet.
(30:46):
Hey, if you filed a patent, youwere invited to the banquet.
And then over years it was okay, you've got a patent issued,
you're invited to the banquet.
Okay you've got three patentsissued now you're invited.
But of course this just madethat.
This event became such a who'swho event and everyone was
elbowing to get into thatmeeting and doing whatever they
could to be invited to thepatent banquet.
(31:07):
Unfortunately, as important asthe banquet was, it's not
scalable and many companies whodid it have stopped it because
it's awfully expensive, notscalable.
Speaker 2 (31:17):
So again, the foundation is there to make sure
it's company agnostic,technology agnostic and just
laser focus on the inventors andmaking sure that we celebrate
their contribution, and there isa direct correlation, I think,
between recognizing the work ofthe inventors and the success of
the company, the underlyingcompany.
(31:38):
There's a few companies inMontreal that have these
inventors hall of fame wallswhere everyone that gets a
patent or publishes a patentapplication gets a plaque on a
wall and they get together oncea month or once twice, three
times a year and celebrate theaccomplishments of the inventors
.
And that changes the culture.
It really does, because it itprovides recognition but also a
(32:02):
bit of an impetus to to get yourname on that wall.
So you want to submit thoseinvention disclosures, yeah.
Speaker 5 (32:14):
You know I'm timekeeper on the podcast.
I'm conscious that we're sortof coming towards time.
What I did want to ask was whenwe had, when we did this
podcast last year, all eyes wereforward on a election and lots
of, lots of things being put onthe back burner until that
election was settled.
It's all settled now, isn't it?
You're kind of you're in aplace of certainty politically.
So what's big on the epic radarand what are you going to
(32:36):
achieve with the new government?
Speaker 3 (32:37):
well privilege privilege, yeah that's still
very much on the table.
And then there's some hope that, uh, the strides we made before
the parliament was uh dissolvedbefore the election it was
positive, wasn't?
Speaker 5 (32:51):
You were in a positive place, yeah yeah, it
was looking cautiouslyoptimistic.
Speaker 3 (32:56):
Yeah, yeah, shall we say.
And you know, one of the goodthings about the same party
going back into government isthey're more likely to pick that
up again.
Speaker 5 (33:05):
You're not starting those conversations afresh.
Yeah, yeah exactly.
Speaker 3 (33:09):
So you know, we certainly have some hope on that
, that, and then there's theusual dealing with SIPO and
getting them to change theirways on things that make sense,
like you know get rid of yourfax machine and give us a
Dropbox Things like that.
Speaker 5 (33:28):
We're just going through digital transformation,
aren't we?
So be careful of what you wishfor.
Yeah, we're going to get faxmachines back.
You never know.
Go through digitaltransformation, aren't we?
Speaker 1 (33:32):
So be careful of what you wish for yeah, we're going
to get the fax machines back?
You never know.
Speaker 2 (33:36):
And we do know that SIPO did have a significant
exercise in digitaltransformation, at least on the
patent side.
They've got a new servicethat's online now.
It's going through some growingpains, which is kind of normal
in it, but it does helppractitioners because often
we're the front line.
We're kind of normal in it, butit does help practitioners
because, you know, often we'rethe frontline, we're the first
client of CBO, not it's not theapplicants, right?
(33:58):
and it's the same thing in theUK, it's the.
It's your patent and trademarkagents that are right there in
front of the office's face, andso if you can make those
people's lives easier thaneveryone, is having, and
certainly on the trademark frontin the past year.
Speaker 3 (34:12):
They've digitized all the records and you know, you
can automatically see everythingon the file and that's so
helpful.
Yeah, because you can go backand just even for researching
you know other marks and forwhatever just to see what
happened at the time when it wasexamined.
That's incredibly helpful to beable to just access that
without having to call and ordera file.
(34:33):
You know, because sometimes youdon't know what you're looking
for until you've found it.
Yeah, yeah, that's been areally good push that they it's
taken forever because you canimagine they've digitized
everything.
So that's, you know hundreds ofwell, maybe not hundreds of
years, but a couple hundredyears worth of files.
(34:54):
So, yeah, that was such a greatinitiative.
I'm really proud of them fordoing that, because it must have
been easy to pick up.
You don't need to do that.
Speaker 6 (35:05):
Joanne, do you mind if I share a story when I was
younger in my career.
It relates to SIPO and this ageof socialization.
So I was an already cleanstudent.
I was sent off to the CanadianPatent Office to do some
searching.
I met up with an examiner andshe's like well, I can meet up
with you in a few minutes.
Let me just move some of myfiles.
(35:26):
She pulled out what looked likea seal club.
A seal club.
She hooked it onto a box andthen dragged this box along the
carpet from one cubicle to theother.
And then she rifled through herbox and found the file.
And I'm like that is scary.
(35:47):
That's exactly how they movedtheir files years ago.
They had a box they draggedacross the carpet with the seal
club like an instrument.
Speaker 5 (35:58):
I guess we still drag and drop, don't we?
There you go.
Thank you all for coming on.
It's been an absolute pleasure.
Enjoy the rest of Inter.
Thank you, I'm sure you'rehaving a good time so far, you
as well.
We'll see you on the next oneVery soon, very soon.
Thank you guys.
(36:56):
Outro Music
I've been a treasurer and it's the worst year in the
organisation's history.
Speaker 3 (00:04):
It's a lot of nerve-wracking.
Speaker 2 (00:06):
Was it your fault Completely.
Speaker 1 (00:09):
Oh, absolutely.
Lee Davis and Gwilym Robertsare the two IPs in a pod and you
are listening to a podcast onintellectual property brought to
you by the Chartered Instituteof Patent Attorneys.
Brought to you by the CharteredInstitute of Patent Attorneys.
Speaker 5 (00:30):
Final podcast of this little session.
Feeling all right, I saw youflagging, but we've done the
flagging joke, haven't we?
Speaker 1 (00:36):
I've just been told off for something I did in the
last podcast, so I'm justbruised.
Speaker 5 (00:39):
Oh sorry, that's all right, I'm over it.
Speaker 1 (00:42):
It wasn't really a telling off, no, it was just a
reminder that you can't say somestuff yeah, totally
legitimately.
Speaker 5 (00:47):
It's something I like to do.
I feel hurt now, in case I'veoffended you.
We're an amazing team.
Speaker 1 (00:52):
I was going to mention something that sets you
up with a really good joke.
Oh, I can Do.
You expect me to tell it ontime?
No, no, no, I've just comeacross a new thing.
When you go to a shop, I gottold I'd done a bad tap.
Bad tap, and you got reallyexcited immediately.
Speaker 5 (01:08):
Yeah, because I was going to get my bag of washers
out and kind of give you alittle fix.
Speaker 1 (01:11):
Yeah, but no, it was.
I didn't tap the machineproperly.
It just says bad tap, bad tap.
I know.
Again, I feel that all day I'mbruised everywhere I go.
I'm just getting bad.
Speaker 5 (01:20):
You've not had the best week, have you?
No, and it's only Monday.
And I think when you read, itis Monday, isn't it?
It is, yeah, it's ridiculous,isn't it?
Speaker 1 (01:28):
When you say bad tap, you feel like did I not tap
properly?
Was it me, Was it?
Speaker 5 (01:32):
my tapping.
You've got this far on in yourlife where you don't know how to
tap.
Speaker 1 (01:36):
I don't know how to tap.
Speaker 5 (01:40):
Yeah, so I was quite disappointed by it.
You get a bit of that as wellunder 10%.
Maybe we can talk about tipping.
Speaker 1 (01:45):
I just tipped 77 cents to pick a banana out of a
basket 77 cents.
Speaker 5 (01:50):
Was that to make it up to a round figure?
Speaker 1 (01:52):
no, I don't know what it is when they give you those
numbers and I press the wrongbutton.
I tipped the people for beingnear a banana and there it is
for anyone who's listening?
Speaker 5 (02:03):
if people still are listening to this podcast, I
have a banana.
It is.
Here's the banana.
Here's the banana.
Speaker 6 (02:05):
For anyone who's listening.
If people still are listeningto this podcast, I have a banana
.
Speaker 1 (02:07):
I have a banana.
Speaker 5 (02:07):
Don't understand.
It is the banana, isn't it?
Speaker 1 (02:09):
This is mine, that's the banana.
I feel like I should have hadthe 77 cents.
Oh, there we go.
Do you want to have the banana?
Speaker 5 (02:13):
No, so this is again one of our.
We always say sister, I don'tknow if that's right, is it
sibling?
Because it could be.
I mean, our organisations aregender neutral, aren't they?
So yes, they are, aren't they?
So, yeah, sibling organisations, our friends in Canada, who we
have a brilliant relationshipwith.
In fact, we have a.
We have a delegation going overto visit EPIC in Ottawa in June
(02:37):
, which we're really, reallylooking forward to.
So it's great to have threecolleagues on the podcast.
Do you want to introduceyourselves, and where should we
start?
Should we start with?
So again, everyone is pointingat one another, joanne go first
Alright, why not my name's?
Speaker 3 (02:54):
Joanne Nardi?
I'm a trademark agent.
I am on the board of Epic astreasurer.
This year They've let me countthe money, which is very
exciting.
Speaker 5 (03:02):
Do you have to keep the money?
Speaker 3 (03:06):
Just count it Sadly, just count it.
Very distressing.
Anyway, I have my own firm inToronto.
Before I started my own firm Iworked for years at Molson Coors
, so I've got my big beard I wasover in the UK regularly up at
Burton-on-Trent.
Speaker 5 (03:25):
So in terms of the way, because I can never really
remember how the officer roleswork at EPIC, is the treasurer
role a route to something else?
Are you on the journey?
I am?
Speaker 3 (03:33):
on the journey.
You're on the journey yes, it'smy first year on the executive.
I was on the board a few yearsago and was asked to join the
executive this year.
So, treasurer, is the first,then you get secretary vice
president, president, pastpresident.
Speaker 1 (03:48):
It's really choice enough being a treasurer, being
a treasurer.
I've been a treasurer and it'sthe worst year in the
organization's history.
Speaker 3 (03:55):
Well, it's a lot of nerve-wracking, but was it your
fault Completely.
Speaker 1 (04:00):
Oh, absolutely.
Speaker 4 (04:02):
Louis-Pierre, you started talking, so you might as
well introduce yourself.
Speaker 2 (04:04):
Yeah, because Excel didn't work, so Louis-Pierre
Ravel.
I'm a past president of Epic,so they've taken me out of the
closet and dusted me and broughtme here.
I work for a firm calledDipchand in Toronto.
Although I live in Montreal, Idon't have any plans on moving
to Toronto.
(04:24):
Although I live in Montreal, Idon't have any plans on moving
to Toronto and involved in a fewother organizations, among
which is FICB, which Willemknows, as well as GLIPA, which
is another organization we canultimately have a conversation
about at some point.
Yes, I'm making notes.
Speaker 6 (04:41):
Last but not least Krishna.
Hello everyone, krishna Patil.
I am actually Silicon Valleybased, although also a Canadian.
I am an IP strategist, patentlawyer and engineer.
Yeah, and I've got a longhistory with my friend here,
gwilym.
It's been over what?
Speaker 1 (05:00):
almost 25 years, gwilym, oh that's amazing and
you've been part of one of themost famous, world famous
Canadian IP stories ever.
Speaker 6 (05:06):
Of course, yeah, so my career started pretty early
with BlackBerry, or it wascalled Research in Motion in
those days, yeah, yeah, right,and we started this rather tiny
little patent portfolio and kindof grew it to quite a large
organization, let's say that,and had the fortune to work with
a number of differentcolleagues, including Pierre
(05:27):
here as well, and I thought Iknew everyone in the IP practice
in Canada.
Only today I met Joanne for thefirst time, so it's wonderful
to meet you.
Speaker 3 (05:36):
Well and it's funny because I thought I knew
everyone too it just goes toshow there's more people to meet
.
Speaker 6 (05:43):
Yeah, so I've got a few little projects underway
this year.
I'm now a board member of theIntellectual Asset Collective in
Canada.
Yes, so I'm helping to drivesome leadership in the IP space.
Right now, the member companiesare in the data-driven clean
tech space.
The member companies are in thedata-driven clean tech space.
(06:04):
It's basically trying to scaleup the IP acumen of small and
medium-sized enterprises inCanada that are going to look
more globally in the future andmake sure that they're much more
IP-savvy in the future.
Speaker 5 (06:16):
So where's a good place to start the conversation?
As I said, I think, earlier,we're on our way over to visit
you folks in June, really reallylooking forward to it.
We've a small delegation comingto talk about things like upc
litigation, education, uh, otherother topics, so we could sort
of circle around some of those.
We know privilege is a bigissue for you in canada at the
(06:37):
moment.
We also know that there's not alot of progress in that,
probably since the last time wespoke about it.
We also know you've come up toyour centenary, aren't you?
So that's all very exciting.
We might have plans to dosomething for you in that regard
, which we're not going todisclose here, but I just wanted
to drop a little.
Even you don't know what myplans are, do you?
Speaker 1 (06:55):
I'm free of fish and chips supper.
Speaker 5 (06:59):
And mushy peas.
Just wanted to drop a littleteaser into the conversation.
I just wanted to drop a littleteaser into the conversation.
Where do you want to go withthe conversation?
Where should we start?
Speaker 2 (07:06):
We can certainly talk about patentable subject matter
, which is one of thoseperennial issues we have in
Canada.
We do know that recently theSenators Coombe and Tillis in
the United States reintroducedthe PERA and PREVAIL Acts, which
aim to undo some of the damagethat the Supreme Court in the US
has done on Section 101.
(07:27):
And I think we're hopeful thatin Canada, if those do pass,
it's going to have a rippleeffect in finally convincing the
Canadian IP office to have amore sober look on patentable
subject matter and not stick towhat I consider to be artificial
(07:48):
and outdated ideas about whatshould and should not be
protectable by patents in Canada.
Speaker 1 (07:54):
That's interesting.
So obviously I've taken theview that Europe's settled its
position and been challenged bya large board to appear at the
UPR and come back and stillsettle its position.
Uk courts not maybe quite soadvanced.
Advanced, but there's a lot ofcertainty around.
Is that not the situation incanada?
Speaker 2 (08:09):
no, there's a little bit of uncertainty still about
it.
I mean, the supreme court ofcanada chimed in on the issue 25
years ago in both the harvardmouse case and the schmeisser
versus monsanto cases.
Since then there have beentrial division decisions and
appeals decisions that are,frankly, inconsistent and
irreconcilable, and for the timebeing, the Supreme Court has
(08:32):
refused to entertain additionalchallenges to these sections,
and so it's still uncertain.
And generally, the patent barin Canada I think is an
agreement to say that theposition adopted by the Canadian
IP office is inconsistent withthe case law, and they've pushed
back on a number of cases andsaid no, no, no, we think that
(08:56):
we've got the right solution andthat's how we're going to
continue doing it Okay.
Speaker 1 (09:01):
So certainty always makes a big difference, doesn't
it?
I mean, just advising in anuncertain environment makes it
so tricky.
Businesses don't want it.
Speaker 2 (09:09):
Well, they don't want to have that uncertainty.
They want to havepredictability and when.
Ultimately, the decision as towhether or not your patent
application is going to succeedrests on the particular examiner
that's going to be examiningyour case, and because we're all
humans, sometimes their moodthat day can affect the way they
(09:30):
look at things.
It's very frustrating.
Speaker 1 (09:34):
Joanne, what's your area of expertise then?
Speaker 3 (09:36):
I'm trademarks.
I help a lot of companies a lotof hot energy fractional
in-house outside.
Help them set up their IPdepartments and get themselves
organised when they've gone fromsmall little sleepy companies
to suddenly being billion dollarbrands, and they're trying to
(09:58):
catch up so I end up doing that,not where I thought my career
would go, but it's been a reallyfun experience and I tend to do
a really fun experience.
Speaker 1 (10:07):
I tend to do a lot of it, but you're not the imposter
of Inter, though, so INTA, whatdo we call it?
Speaker 5 (10:12):
Apparently, we can use either.
Okay, fine.
Speaker 1 (10:16):
Either, so you're among 10,000 close friends.
Speaker 3 (10:19):
Yes, I am.
That's quite nice.
I'm not a fake trademark personand how many?
Speaker 5 (10:25):
oh, oh, willem, yeah, oh.
Speaker 4 (10:26):
I like that, that's you.
That is, that's so it.
It's so it, that's not aproblem.
Speaker 1 (10:32):
How long have you been coming to the conference?
Speaker 3 (10:35):
my first one was in 1996 or 7 in Boston wow so a
long time yeah.
I haven't come.
Every year I got married.
One year I had a baby.
Another year I every year I gotmarried.
One year I had a baby anotheryear.
Speaker 1 (10:47):
Great taste, huh?
Reasonable excuses, yeah, oh,that's interesting.
Tell me, what change do you see?
Speaker 3 (10:53):
Oh, it's just massive now, you know, when I first
came in Boston, I think it waslike 2,000 registrants.
Really and everybody sort ofdid.
You know, everybody went to theopening ceremonies, everybody
went to all the receptions andnow it's just such a Quite.
Honestly, it's just a place forus to all meet at the same time
(11:15):
each year.
But the conference itself it'salmost a victim of its own
success.
Do you know what I mean?
Yeah, yeah.
Speaker 5 (11:27):
It's exhaustingly large, isn't it yes?
Speaker 1 (11:30):
I think it's the way things are going to go, though
Personally, I think conferenceshave changed their role, because
when I started going toconferences, it really was to
network and meet new people andmaybe get a little bit of
business or find an attorney ina country you didn't really know
, so that you could build arelationship to send work,
whatever it might be.
That you could build arelationship to send work,
whatever it might be, whereasnow it's just so big that you
can't really rely on serendipity.
We were looking at thenetworking space, the speed
(11:52):
networking space over there.
That's quite challenging.
There's big numbers and you'vegot to meet at number seven and
all B at such and such a time tomeet a new person and swap
cards and things.
Speaker 5 (12:04):
Can I ask Joe a quick question about so?
In the UK, whilst we don'tmajor in trademarks, we
obviously work quite closelywith uh charter trade mark
attorneys.
We do, uh they've got a bit ofa campaign going on at the
moment with the uk intellectualproperty office around over,
let's say, overseas attorneysfrom certain jurisdictions who,
because there are no, there areno limits on who can represent
(12:25):
before the UK IPO and file atrademark application, we're
getting quite a lot of floodingof the trademark register with
brand names that are lots ofunlinked letters, maybe Similar
in Canada, not as much.
Speaker 3 (12:40):
I mean you do have to be licensed by the College of
Patent and Trademark Agents topractice before.
Speaker 5 (12:46):
So there is a link between registration and
practicing before the yes yes,so that's helpful, but foreign
trademark lawyers can be members.
Speaker 3 (12:56):
I don't actually quite know how that works,
because that's something I'm notto worry about.
It's been a big issue in the US.
You could really see the floodof applications a few years ago
coming from, you know, variouscountries and just everything
and for every goods and service,and it's just.
It's insane, and a lot of markson the register that are just
(13:19):
they're not being used, they'renot being used for everything,
and it's just.
You know the register hasbecome really cluttered and
that's that happens in canada aswell, especially with no use
requirements it just makes thesystem sluggish, doesn't it?
it slows everything down yeah,yeah, although in canada they've
started um non-use proceedings.
(13:41):
Always used to be a third partywould have to request them,
okay.
And now cepO has started apilot program whereby they're
just randomly picking trademarksand so they're doing a bit of
due diligence and yeah.
Speaker 1 (13:55):
How's that been received?
Speaker 3 (13:57):
Not well.
Speaker 1 (13:58):
That's interesting.
I mean I want to talk a bitmore about policy and
governments getting involved ininnovation and so on, but this
is a good starting point forthat.
So from the outside it soundslike they're stepping in for
policy reasons to help un-futurea registry because no one else
is doing it, but it sounds likeit's not going down quite like
that Depends who you are.
Speaker 3 (14:18):
I think it's a great idea.
I really do.
I also don't have clients thathave been getting these letters
and they're annoyed by itEspecially you know.
I don't know how they decide.
Do you know how they decidewhat they're going to?
Speaker 2 (14:30):
I think it's completely random.
Speaker 3 (14:31):
I think it is random, so it's not a question of doing
any due diligence.
Speaker 2 (14:34):
It's just a question of.
Speaker 3 (14:35):
Yeah, there's no due diligence.
Speaker 2 (14:37):
Picking something out of a bowl and saying, oh, let's
send a letter to this one.
Speaker 3 (14:48):
So if I was Coca I've got a non-use proceeding
against Coke.
I'd be a little annoyed aboutthat, but I really do think it's
completely random.
I do hope that if somethinglike that came up they'd be like
it's in the vending machinedown the hall.
Speaker 1 (14:58):
we know it's in the vending machine, and is that why
it's not popular?
Because of the randomness.
Speaker 3 (15:03):
I think that's why?
Speaker 1 (15:03):
yeah, Okay, it's not government overreach or
something like that.
Speaker 3 (15:05):
Okay, it's not government overreach or
something like that.
No, I'm sure there's some ofthat too.
Speaker 2 (15:12):
It's not too much, but I think it's mostly the
randomness and it's a changealso in the behavior of the
applicants and the agents inCanada, because, as Joanne said
earlier, traditionally it was athird party that would institute
a kind of proceeding like thisbecause you're feeling some sort
of threat or you need to clearthe register.
Now it's just out of the bluethey send out these letters, and
so the applicants and theagents themselves are surprised
(15:34):
by this initiative that'spiloted by the office.
Speaker 3 (15:38):
Yeah.
Speaker 2 (15:39):
Which doesn't seem to have you know echo in other
jurisdictions.
Speaker 1 (15:44):
Yeah.
Speaker 2 (15:44):
I've not heard of anything like that in the UK?
Speaker 1 (15:47):
No, absolutely not.
I was going to roll on withthat about where the role of the
office is and everything likethat.
And, krishna, you're saying,with the intellectual asset
collective in Canada, innovation, oh sorry, intellectual asset
collective, thank you.
And again, that's kind oflooking.
The use of IP in Canada, howdoes that fit in with IPIC?
(16:07):
How does it fit in with theCIPO?
Speaker 6 (16:10):
So I think it's rooted in a number of companies
who've tried to scale beyond theCanadian borders and
recognizing that sometimes theIP side units of some of our
high-tech companies that are inthis kind of trajectory of
growth don't necessarily developin sync with their IP as they
have with their business growth.
So then there's a disconnectright where they've got this
(16:33):
growth trajectory but they don'thave the underlying IP
protected.
That's, you know, fueled thatgrowth.
So you know, the federalgovernment started the
institution a few years ago.
It's mostly an experiment to seeif, in this particular space of
data-driven clean tech, ifmember companies that are in
this space can develop aheightened level of IP savviness
(16:55):
.
It comes from training,encouraging them to file patents
, getting them a full 360 of IPdevelopment, procurement and
development and hopefully theability for these companies to
go off and develop outside ofCanada and exploit their
technology in a successful waythat doesn't have this overhang
of IP risk.
And part of this organizationincludes things like patent
(17:19):
acquisitions, getting assetsthat can be used by member
companies.
This is very much an experimentto demonstrate, to see if this
is something that can scalebeyond the particular technology
areas.
I think it's interesting and Ithink countries like the UK have
something like the patent box,if I remember correctly.
So countries like Canada arelooking to other jurisdictions
(17:42):
to see what's proven to besuccessful, what doesn't work,
and this is, let's say, a modelthat's being tested out.
Speaker 2 (17:51):
And in parallel with the initiative of the government
in the IAC, the federalgovernment also rolled out two
other programs.
One is called IP Assist and theother one is called Elevate IP,
and both programs follow a verysimilar structure, which is what
they call level one, or just anintroduction to IP basics.
And then level two is funds tohelp the companies craft at
(18:17):
least an initial IP strategy.
So at least start with doing anaudit, some basic searching,
look at some contractual issuesand sort of map out how this IP
strategy can help propel thebusiness strategy of the company
.
Level three was monies for theimplementation of that strategy,
so in certain cases they wouldactually fund the drafting and
(18:39):
the filing of patentapplications, not just in the US
but around the world.
And so I think from thatperspective the Canadian
government really finallyrecognized that there is a
knowledge gap in SMEs and ineven larger companies across the
country, and we need to addressthat, Because if we're going to
, as with other countries,really shift our economies to a
(19:01):
knowledge economy, then thatnecessarily has to go through IP
and IP assets and theprotection and defense of them.
Speaker 5 (19:08):
And is that support at each of those three levels?
Is that no strings attached?
So there's no expectation ofany kind of flow back through
government, of ownership of IPor anything like that?
No, no, that's a loadedquestion for some of the things
that we're seeing happeningRight.
Speaker 2 (19:23):
So but you know you need to think about it from the
government's perspective.
What are you trying to achieve?
And if you're trying to achievea change in the behavior of the
people, then that's the bestway to start doing it, because
you're actually giving themmoney to change their behavior
and hopefully the program isgoing to be long-term enough to
be able to affect long-termchange.
(19:44):
And we're still unsure whetheror not any of these programs,
which were initial two-,three-year programs, will have
any legs in the future.
But certainly you can'tevaluate the success of a
program like that after twoyears.
I mean, it just takes a lotlonger to evaluate whether or
not you've actually succeeded inchanging behavior in the long
term.
Speaker 6 (20:04):
That's the challenge behind patents, right, we've got
this control loop that takesthree, four-plus years before
you know you've got an assetthat's actually viable in terms
of issuance.
Then you want to see if it'sactually being adopted and has
an impact on the industry.
The control loop's even furtherout, seven-plus years, right.
So that's like going back toyour point.
That's one of the predicamentsof the patent development
process, right, it's one of thepredicaments of the patent
(20:25):
development process, right?
Yeah, it's a hard vehicle tokind of point to in terms of
return on investment in a shortwindow of time.
You have to look long-term andit's a long-term game here.
Speaker 2 (20:36):
And you're doing a marathon, you're not doing a
sprint, right, right, I remember.
Speaker 1 (20:40):
BlackBerry, you had this metric, a pipeline metric,
didn't you?
I remember that.
So, looking at patents ratherthan waiting for them to get
granted, but, quite early on,actually get into valuation,
attached to it, basically as itwas coming through, which I was
quite clever actually for acompany with extremely young
portfolio, that was the way todo, it, wasn't that?
Speaker 6 (20:57):
yeah, I mean, as companies mature, you develop a
whole set of metrics that tokind of quantify your success
rate right, one of which is likeat that time we were doing kind
of metrics applied to all ourassets from the day we filed to
the journey before it getsissued and post allowance.
It's a process that actuallyhas very successfully been
(21:17):
employed across differentcountries and companies this
week.
Speaker 1 (21:20):
I think the UK government looks at these things
and I know what you werereferring to.
I'm not going to say too much,no, but I think for me it's
interesting how far governmentsget involved.
I think it's really useful.
Speaker 5 (21:33):
The UK proved most on the SME front, isn't it that
we're looking, which is a goodstarting point, of course, but
yeah, it's just that the feelthat we're getting in the UK of
the government is that it's notalways no strings attached.
There's very often there aresort of in the small print.
There are things that perhapsSMEs need to read to fully
(21:54):
understand what it's again smallfor and what the potential
consequences might be for that.
Speaker 1 (21:58):
Let's leave it there.
Yeah, yeah, but there is somegood no strings stuff like IP
audits, so basically that youknow that really is just go in
learn about the company, kind ofthe early stage point of what
you were saying a sense of getin there, learn about it and
then give some initial advice,and that's very much no strings.
I think that does.
Do you have something similarthen, to that?
Speaker 2 (22:15):
The IP strategy that the Elevate IP and IP Assist
programs cover will do somethinglike that At least.
When you're establishing an IPstrategy from the beginning, you
need to understand where you'restarting from.
An IP strategy from thebeginning.
You need to understand whereyou're starting from, so you
need to do an audit of what thecompany has.
And then we've seen also someprovinces getting you know,
wrapping up some programs.
In Ontario, for example, ipOntario is a separate agency of
(22:40):
the Ontario government.
They also have money to providefor companies no strings
attached on IP strategy, landsca, landscaping, searching,
freedom to operate andimplementation of their ip
strategy.
The alberta government isstarting to look at some of
those initiatives and on theother flip side, we someone
talked about the patent boxearlier, but quebec, the
(23:00):
province has a, an ip boxprogram.
But you know that I think ifyou start by providing an ip box
, then you're missing out on allthe all the stuff that's
upstream of that, because inorder for you to have an ip box
you need to have predictableassets yeah, and you need to
file those applications first.
Yeah, right, so it's.
It's looking at it a little bitfrom the the reverse position.
(23:23):
Whereas, whereas the Elevate IPand IP Assist and IAC start
from the beginning, which is atthe innovation step, at the R&D
step, how do you map out thenext activities going forward?
Speaker 5 (23:37):
Can I ask a policy-related question?
You'll know where this iscoming from when I develop it
very slowly, as I'm just aboutto.
My thinking is very slow, so Ihave to develop things slowly.
I mean, obviously we have aninternational property office in
the UK.
It's two things.
It's a business in governmentin that it's selling stuff, it's
selling patents and trademarksand the like Not selling them,
(24:00):
obviously, but there's nolottery to get one right,
allowing people to buy a servicefrom it, and that generates
revenue.
So it's a business in government, but it's also the policy
engine of government.
So it's trying to do those twothings and sometimes there are
conflicts in that, I think, orinertias in that.
That we see.
But what I'm hearing here isthere's almost a third dimension
, so presumably the cipo is bothof those things as well, but
(24:24):
also you've got policy atprovince level.
How does all that tie tietogether?
Speaker 2 (24:32):
I was thinking I was thinking Good, good, good, and
that is one thing we're noticingis that sometimes those
initiatives individually arevery good, but they're not part
of an overarching goal.
They're not part of anoverarching strategy, which one
would think would make a lot ofsense.
You know, align all your ducksin the same row and map it out.
But of course, you know, theprovinces are fairly autonomous
(24:55):
in some areas, based on theseparation of powers that's
provided in our constitution,and therefore they want to
protect and encourage their ownhomegrown industries.
Speaker 5 (25:03):
So does that mean that the CIPO is less of a
policy influencer in that sense?
Speaker 2 (25:09):
So CIPO has always considered itself to be not a
policy influencer.
So, they do the administrationfor the IP rights and they do
education as well.
But the policy is done withinanother government department,
which we now know as industry,science and economic development
, and so they drive the policyaspect that then gets trickled
(25:29):
down to CIPO and elsewhere.
Speaker 1 (25:33):
It's really complicated.
I think again from myexperience in the UK.
Our IPO does advise, forexample, the innovation IP
minister directly and everythinglike that, but there are other
government bodies that alsodrive the innovation strategy,
at least.
Speaker 5 (25:48):
Sometimes it feels like that drive is slow.
Speaker 1 (25:51):
Slow and slightly disconnected, not to be far, by
the IPO, where they try veryhard to get rid of the middle.
Speaker 5 (25:55):
No, it's the fault of the machinery of government.
Yeah, and it's like a powerthing.
Speaker 1 (26:00):
Maybe I'll take this down to go for rabbit hole.
No, it's a good point.
I was going to ask about thecentenary, actually, and what
the party's going to be likeit's going to be in Ottawa.
Speaker 3 (26:09):
And it's at the Chateau Laurier, which was where
the very first Patent andTrademark Institute meeting was
held a hundred years ago.
So they're having it.
Speaker 5 (26:25):
I don't know a lot of details on it yet.
Is there a given date?
Is there a date for thecelebration?
You're doing a year-long gig?
Is it Like lots of parties?
Yeah, is it Lots of parties?
It's just never-ending.
Well, it'll be during theannual meeting.
Speaker 3 (26:39):
I'm not quite sure what the dates are.
Speaker 5 (26:41):
September-ish time September.
Speaker 3 (26:43):
October-ish.
Speaker 5 (26:45):
I'll be there when you're out there In June.
No, no, no.
So June is the joined-upleadership meeting that we have
where we reciprocate.
But, yeah, no, I always try andget along to the annual meeting
.
Can't get there this yearbecause we've got a class of
conferences.
We've scheduled ours for thesame time.
Speaker 3 (26:59):
Oh, no, yeah, that's why I'm missing out on Saskatoon
.
Speaker 5 (27:04):
Yeah, I'm not missing out on trying to get there
though.
Speaker 3 (27:06):
No, well, that's more difficult for you.
Speaker 1 (27:09):
yes, no direct flights from Heathrow.
No, no, no.
I recall the SEPA had a verygood band on for their 125th
anniversary.
Speaker 5 (27:18):
Yeah, we had a very good band.
Speaker 3 (27:19):
It's a pressure.
Speaker 1 (27:21):
No, we were offering the band oh you were offering
the band.
Speaker 3 (27:23):
That's great fun, Interesting.
That could help our budget.
I mean the treasurer, that'simportant, so personally you've
actually got a different badgeon label.
Speaker 6 (27:36):
Tell us about the inventors foundation.
Oh wonderful, I'll tell you.
Definitely take advantage ofthis opportunity.
So you know, going back to thisearlier conversation about
these organizations in canadathat are helping to basically
change the behavior of companies, inventors foundation is really
focusing on stepping back evenfurther to change the behavior
of inventors, people who theintellectual property like
(27:58):
warriors, these intellectualwarriors who make our lives
possible.
Yeah, right, we often have thisconversation about companies.
We seldomly talk about thoseinnovators, those inventors who
strip away from their day-to-daypractice of engineering or
their science engineering workto then work with patent
attorneys and other IPprofessionals.
(28:19):
And you know we all recognizethat it's sometimes a big chore.
In fact, when I was in thecouncil of various different
companies, about 30% of our timewas convincing the engineers to
take time out of their day andwork with the patent attorneys
and it was a chore.
And a big part of that is therecognition element.
(28:41):
Sometimes they're notnecessarily recognized from a
performance standpoint that theyfiled a set of patents.
Sometimes the top levelmanagers are not fully
recognizing the effort that goesinto participating in the
patenting process.
So this Inventors Foundation isa foundation focused on
celebrating and recognizinginventors, their contributions
to the ecosystem, the fact thatthey participate in protecting
(29:01):
their innovation through patentsor other intellectual property.
So you know, especially thisday of AI and the fact that AI
is getting into the ecosystem ofthe creation process, I think
it's even more important todaythat we celebrate and recognize
that human creativity.
And that's what InventorsFoundation is about is to
celebrate and put a spotlight oninventors.
(29:23):
We're going to be doingstorytelling of patents.
Yeah yeah, yeah.
Just to give you an example andwe all know this the four
corners of these patentdocuments are sometimes a little
bit stale, kind of Not the mostreadable document.
We're going to bring it to life.
Do a little bit of storytellingon all the patents.
Do interviews with inventorsand give them a platform to show
(29:46):
off their innovation.
Speaker 5 (29:48):
Yeah, we're a wee bit fortunate there, Raghav,
because we have an Earthshotnominator.
So we link our work on thiswith those Earthshot nominations
.
So we do case studies of thenormally kind of green tech
startups in the sustainabilityspace.
So we'll be doing case studiesand telling their stories.
But it feels like a similarthing.
It's about telling that storyExactly.
Speaker 6 (30:07):
Exactly.
Speaker 1 (30:08):
Although I think we've taken your point.
I think we celebrate thecompany and we have many, many
inventors on the inventory, butI'm not sure we completely
severed it out.
So one of the things we know.
I don't think we've ever donethis actually is the whole point
about reward andincentivization systems.
We should probably do some moreabout that.
We've never really talked aboutit.
Speaker 6 (30:26):
So on that point, gollum, one of our first
exercises with this foundationis to do a benchmarking and a
case study of what it takes foran inventor to be incentivized
to participate in the patentingprocess.
I think all of us have comeacross some companies who have
some sort of remunerationprogram.
Or in our heydays at BlackBerry, we used to have the patent
banquet.
(30:46):
Hey, if you filed a patent, youwere invited to the banquet.
And then over years it was okay, you've got a patent issued,
you're invited to the banquet.
Okay you've got three patentsissued now you're invited.
But of course this just madethat.
This event became such a who'swho event and everyone was
elbowing to get into thatmeeting and doing whatever they
could to be invited to thepatent banquet.
(31:07):
Unfortunately, as important asthe banquet was, it's not
scalable and many companies whodid it have stopped it because
it's awfully expensive, notscalable.
Speaker 2 (31:17):
So again, the foundation is there to make sure
it's company agnostic,technology agnostic and just
laser focus on the inventors andmaking sure that we celebrate
their contribution, and there isa direct correlation, I think,
between recognizing the work ofthe inventors and the success of
the company, the underlyingcompany.
(31:38):
There's a few companies inMontreal that have these
inventors hall of fame wallswhere everyone that gets a
patent or publishes a patentapplication gets a plaque on a
wall and they get together oncea month or once twice, three
times a year and celebrate theaccomplishments of the inventors
.
And that changes the culture.
It really does, because it itprovides recognition but also a
(32:02):
bit of an impetus to to get yourname on that wall.
So you want to submit thoseinvention disclosures, yeah.
Speaker 5 (32:14):
You know I'm timekeeper on the podcast.
I'm conscious that we're sortof coming towards time.
What I did want to ask was whenwe had, when we did this
podcast last year, all eyes wereforward on a election and lots
of, lots of things being put onthe back burner until that
election was settled.
It's all settled now, isn't it?
You're kind of you're in aplace of certainty politically.
So what's big on the epic radarand what are you going to
(32:36):
achieve with the new government?
Speaker 3 (32:37):
well privilege privilege, yeah that's still
very much on the table.
And then there's some hope that, uh, the strides we made before
the parliament was uh dissolvedbefore the election it was
positive, wasn't?
Speaker 5 (32:51):
You were in a positive place, yeah yeah, it
was looking cautiouslyoptimistic.
Speaker 3 (32:56):
Yeah, yeah, shall we say.
And you know, one of the goodthings about the same party
going back into government isthey're more likely to pick that
up again.
Speaker 5 (33:05):
You're not starting those conversations afresh.
Yeah, yeah exactly.
Speaker 3 (33:09):
So you know, we certainly have some hope on that
, that, and then there's theusual dealing with SIPO and
getting them to change theirways on things that make sense,
like you know get rid of yourfax machine and give us a
Dropbox Things like that.
Speaker 5 (33:28):
We're just going through digital transformation,
aren't we?
So be careful of what you wishfor.
Yeah, we're going to get faxmachines back.
You never know.
Go through digitaltransformation, aren't we?
Speaker 1 (33:32):
So be careful of what you wish for yeah, we're going
to get the fax machines back?
You never know.
Speaker 2 (33:36):
And we do know that SIPO did have a significant
exercise in digitaltransformation, at least on the
patent side.
They've got a new servicethat's online now.
It's going through some growingpains, which is kind of normal
in it, but it does helppractitioners because often
we're the front line.
We're kind of normal in it, butit does help practitioners
because, you know, often we'rethe frontline, we're the first
client of CBO, not it's not theapplicants, right?
(33:58):
and it's the same thing in theUK, it's the.
It's your patent and trademarkagents that are right there in
front of the office's face, andso if you can make those
people's lives easier thaneveryone, is having, and
certainly on the trademark frontin the past year.
Speaker 3 (34:12):
They've digitized all the records and you know, you
can automatically see everythingon the file and that's so
helpful.
Yeah, because you can go backand just even for researching
you know other marks and forwhatever just to see what
happened at the time when it wasexamined.
That's incredibly helpful to beable to just access that
without having to call and ordera file.
(34:33):
You know, because sometimes youdon't know what you're looking
for until you've found it.
Yeah, yeah, that's been areally good push that they it's
taken forever because you canimagine they've digitized
everything.
So that's, you know hundreds ofwell, maybe not hundreds of
years, but a couple hundredyears worth of files.
(34:54):
So, yeah, that was such a greatinitiative.
I'm really proud of them fordoing that, because it must have
been easy to pick up.
You don't need to do that.
Speaker 6 (35:05):
Joanne, do you mind if I share a story when I was
younger in my career.
It relates to SIPO and this ageof socialization.
So I was an already cleanstudent.
I was sent off to the CanadianPatent Office to do some
searching.
I met up with an examiner andshe's like well, I can meet up
with you in a few minutes.
Let me just move some of myfiles.
(35:26):
She pulled out what looked likea seal club.
A seal club.
She hooked it onto a box andthen dragged this box along the
carpet from one cubicle to theother.
And then she rifled through herbox and found the file.
And I'm like that is scary.
(35:47):
That's exactly how they movedtheir files years ago.
They had a box they draggedacross the carpet with the seal
club like an instrument.
Speaker 5 (35:58):
I guess we still drag and drop, don't we?
There you go.
Thank you all for coming on.
It's been an absolute pleasure.
Enjoy the rest of Inter.
Thank you, I'm sure you'rehaving a good time so far, you
as well.
We'll see you on the next oneVery soon, very soon.
Thank you guys.
(36:56):
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