A Canada-do attitude

Facing unacceptable pendencies in 2003, the Canadian Intellectual Property Office dug deep to make the patent prosecution service more efficient

How far has CIPO come in reducing its application backlog? What is the current turnaround time? Has quality been affected?

In 2003, faced with its own growing backlogs, the Canadian Intellectual Property Office (CIPO) made the decision to undertake an aggressive recruitment campaign aimed at increasing its capacity of qualified examiners in order to significantly reduce its outstanding inventory of patent applications awaiting examination.

Not only did this recruitment campaign stimulate a rapid growth increase in CIPO’s patent examination capacity from 90 patent examiners to 450 between 2000 and 2012, CIPO combined this initiative with the foundation of a quality management system for its patent branch, which is currently in the final stages of obtaining International Organization for Standardisation-9001-2015 certification. ISO-9001-2015 is a certification from ISO for a quality management system.

This backlog stood at 79,969 patent applications with a request for examination awaiting a first action back in January 2004. Today, CIPO has reduced this backlog by 73 percent down to a steady state inventory of 21,866 at the end of February 2017.

Since Canada offers clients the option to defer a request for examination for up to five years after having filed a patent application, pendency is measured in two separate ways.

Using the methodology of measuring the time between the date an applicant requests examination and the date a patent is granted, CIPO achieved a 53-month average pendency in May 2007. A decade later in February 2017, this average was reduced to 34 months.

The alternative is to measure the time between the date an applicant files a patent application and the date a patent is granted. This includes the period of time between the filing date and the request for examination where no action is taken by the office. It is entirely an applicant’s choice as to how long they wish to defer their request for examination (maximum five years from filing date). Using this methodology, CIPO achieved a 90-month average pendency in May 2007. A decade later in February 2017, this average was reduced to 64 months.

What about the Patent Appeal Board’s review time?

The Patent Appeal Board aims to render decisions on rejected patent and industrial design applications within 24 months of referral.

In general, the board has reduced inventories for applications involving most technologies—the exception being applications involving computer-implemented inventions.

There is no relationship between the quality of the board’s decisions and file inventory or turn-around-times. Consistent quality is maintained through standardised Board processes.

Why are Canadians filing less in Europe and more in China? How is this reflected domestically?

We have seen a 9 percent decline in Canadian application to the European Patent Office (EPO) since 2005. When we include direct applications to national intellectual property offices in Europe the decline is 3 percent. Over the same period of time, we have seen Canadian foreign direct investment and trade to Europe increase 56 percent and 28 percent, respectively.

When looking at the level of patenting in Canada by Europeans we have seen a 7 percent decline in applications since 2005. Over the same period of time, we have seen European foreign direct investment and trade to Canada increase 103 percent and 13 percent respectively. We have seen an increase in economic activity between Canada and Europe, but we have not seen the same increase in patent activity.

With respect to China, the story is different. Since 2005, we have seen a 35 percent increase in Canadian patent applications in China. Over the same period of time, we have seen Canadian foreign direct investment and trade to China increase 476 percent and 136 percent, respectively. When looking at the level of patenting in Canada by applicants from China, we have seen a 77 percent increase since 2005. Over the same period of time, we have seen Chinese foreign direct investment and trade to Canada increase 1,774 percent and 88 percent respectively. There has been dramatic increases in economic and patenting activity between Canada and China over the last 10 years.

According to the IP Canada Report 2016: “In 2015, patent applications to CIPO filed by Canadian residents grew by 2 percent to 4,277. Our residents filed 12 percent of patent applications at CIPO, the same domestic share as in 2014.”

“Globally, the average share of patents filed in a country by its domestic residents is 67 percent. Canada’s share of applications by residents is much lower than average because Canada is a small open economy that has very close economic links to a large neighbour, the US.”

“As a result, we receive a large number of patent applications from the US, and the rest of the world. This is consistent with other countries in a similar situation, such as Australia, which has a resident application share of about 10 percent on average.”

What is CIPO doing to promote domestic innovation and filings?

CIPO continues to develop products and services to raise awareness on the importance of IP for Canadian innovators and businesses so that they can better understand, exploit and integrate IP into their business strategies.

Earlier this year, we launched a video series focused on the benefits of protecting IP. Most recently, we launched a promotional campaign around the role of IP in achieving business success. As part of this, we have begun sharing the success stories of Canadian businesses that have strategically integrated IP into their business lifecycle. These are available online.

As part of a broader Canada 150 celebration, we have also been using our Twitter account to promote Canadian inventions throughout history. In addition, CIPO offers information sessions for businesses to educate them on IP and has a network of business development officers who help raise awareness about IP and speak to its benefits in regions across the country.
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