Report following the March 2013 sessions (wave three)

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Insights of SMEs and agents into the application phase

Final Report

Prepared by the Canadian Intellectual Property Office (CIPO)

July 2013


Executive summary

Background

CIPO is engaged in a series of roundtables aimed at providing insight into the needs and behaviours of Canadian small to medium-sized enterprises (SMEs) so that we can continue to support innovation in Canada. Roundtable sessions began in the summer of 2012.

During the third wave of roundtables held in March 2013, CIPO consulted about the application process with SMEs that own patents and trademarks and with patent and trademark agents. Sessions were held in three cities across Canada. There were 50 participants overall: 24 in the patent sessions (14 SMEs and 10 agents) and 26 in the trademark sessions (11 SMEs and 15 agents). Sessions were delivered in four groups: patent-owning SMEs, patent agents, trademark owning SMEs and trademark agents.

Findings

There were a wider range of insights shared by participants than in earlier roundtable waves. This is likely due to the fact that the challenges and insights gained throughout the application process were based upon individual experience working through the application process with their specific innovations rather than the more general subject areas discussed during the first two roundtables. A number of major themes emerged, namely:

  1. Filing Strategy: SMEs and agents emphasized different aspects of filing strategies, with the former focused on maximizing access to markets and the latter on the mechanics of the application process. SMEs expressed a desire to understand better the filing process, but expressed wariness at the level of detail involved.
  2. Value of IP: SMEs value IP as it helps protect their products and brands from competitors. SMEs would benefit from the availability of information on how decisions made during the application phase affect the reach and level of protection for their innovation.
  3. Online Services: SMEs and agents would be better served during the application process through an enhancement of online service offerings. They indicated that they would benefit from being able to see the status of their applications and all correspondence online in real time.
  4. Agent and SME Roles during the Application Process: agents play the role SMEs expect during the application process and are aware of the expectations of their clients. A number of participants indicated that discussions linking overall business strategy to a filing strategy typically occur only after a few years when a relationship has been well established between agent and SME. SMEs indicated that they would benefit if this advice was received earlier in the relationship.

I. Introduction

As intellectual property (IP) encourages new knowledge and innovation, the Canadian Intellectual Property Office (CIPO) has a key role to play in supporting the government's innovation agenda. As Canada's IP administrator, CIPO is working towards a better understanding of the requirements of innovators and the innovation cycle in which businesses operate, facilitating access to IP information so that it can be better leveraged, and developing an IP framework that supports innovation, increases market certainty and reduces red tape.

Currently CIPO is in the process of actively consulting with the Canadian business community as a means of becoming more familiar with the complex evolving nature of business strategy and the decision-making processes that underlie IP use. This will allow CIPO to better support innovative undertakings and business success while improving the quality of services to innovators. By conducting roundtable meetings across Canada with innovative small and medium-sized enterprises (SMEs), CIPO is gathering information to support the creation of a more robust IP system that encourages and supports innovation.

CIPO's third wave of consultations focused on the patent and trademark application phase from the perspective of SMEs and agents. This phase was defined for the consultations as activities that take place during the registration process from initial filing of the application to confirmation of registration.

This is a crucial phase for SMEs that utilize patents and trademarks. In the case of a patent owner, having considered the commercial viability of an invention and engaged an agent to navigate the application process, the innovator is best served by an efficient system that allows filing and obtaining a patent with minimal cost and disruption. Similarly, for SMEs that require a trademark to establish and protect a brand, a well-functioning application process allows them to register their IP efficiently and remain focused on running their business.

The third wave of roundtables was held in three cities across Canada in March 2013. CIPO consulted a total of 50 participants: 24 in the patent sessions (14 SMEs and 10 agents) and 26 in the trademark sessions (11 SMEs and 15 agents). Sessions were delivered in four groups: patent-owning SMEs, patent agents, trademark owning SMEs and trademark agents. Each session typically lasted up to two and a half hours. Discussions were facilitated by CIPO employees and involved either product-line representatives or a combination of a Business Development Officers (BDO) and a respective product-line representative.

II. Use of Findings

CIPO's roundtables are exploratory in nature and intended to capture insight into customer experiences with the organization. In some cases respondent comments have been grouped together from different sessions and from different areas of discussion where appropriate in order to keep like topics together.

Findings should be regarded as directional rather than conclusive. Roundtable discussions by their very nature elicit anecdotes and observations from individual experience. They are valuable for capturing details of individual experiences and the perceptions that have formed from those experiences.

III. Patent SMEs and Agents

Patent SMEs

A. Experience throughout the Application Process

Patent SMEs were asked to reflect upon key elements of their experience throughout the application process. This included identifying challenges during the application process, the quality of their interaction with agents, and finding information to help them navigate the application process.

A-1. Challenges of Application Process

Patent SMEs identified three general areas of challenge during the application process:

  • IT Infrastructure: a number of participants indicated that the IT infrastructure at CIPO is outdated, making the application process cumbersome and lack transparency. Several participants indicated that having the ability to log-in and view the status of their application and all correspondence would improve the application process for them, as they could self-serve rather than rely on their agents for basic information.
  • Lack of Information for SMEs: a number of participants identified the lack of information targeted at SMEs as being a challenge throughout the application process. They acknowledged that there is information on the application process, but it is not aimed at an SME audience and does not target areas of knowledge in which they require assistance. Available information focuses exclusively on describing steps in the application process rather than more strategic topics such as patentability and how to conduct effective searches for prior art.
  • Examination: the majority of comments received about the examination process were positive, with some participants indicating that they had challenges with specific elements related to correspondence. Several participants indicated that they have difficulty understanding some of the terminology in CIPO correspondence, including that used in search reports.
A-2. Agent-SME Interaction

When asked to discuss the nature of their interaction with agents, SMEs indicated that their overall experience during the application process was positive. Multiple participants stated that they were well informed by their agents and received prompt service. In general, the application process was described as a phase during which applicant and agent work together to complete all stages of the process. A number of participants indicated that they had a high level of involvement during the application process, including conducting searches and participating in drafting claims. Some participants indicated that the next time they file they will do initial searches and draft a claim on their own before approaching their agent. This is a learning process, and a number of participants appeared to be willing partners with their agents.

Despite their level of involvement, participants indicated that they rely upon their agents for a high level of expertise in navigating the application process. Several participants indicated that this is the greatest value of an agent. It is clear that agents lead in this process, and participants were generally pleased with communication and the manner of interaction.

A-3. Approach to Filing

SMEs were asked a number of questions about how they work with their agents to decide where to file first and factors that come into play in making this decision. Participants indicated that the market for their product determines where they file. The majority of participants indicated that they file in the United States due to its larger market before they file in Canada. Another reason for filing in the United States before Canada is the belief that a United States patent is more attractive to potential investors, and the appeal of the provisional patent application offered by the United States Patent and Trademark Office (USPTO). Participants indicated that they file in Canada only if there is a market for their products in this country.

A-4. Awareness of CIPO Timelines and Opportunities during the Application Process

The majority of participants indicated that they are aware of the timeline surrounding requesting an examination, although there was less awareness of timelines surrounding responses to office actions. Participants who discussed this subject indicated that in general they rely upon their agents to track and prompt them around these timelines. Participants were not aware of the timelines surrounding special order applications, which are known more formally as applications subject to advanced examination. They occur when an applicant pays an extra fee and requests that examination of their application be expedited. To be granted special order status, the Commissioner of Patents must be satisfied that failure to advance the application is likely to prove harmful to the applicant's rights.

B. Value of IP

Participants were asked to identify the expectations they had regarding the value of their intellectual property and to contrast this with their actual experience. The intangible nature of IP was reflected in discussions, which were very much on a conceptual level.

B-1. Expectations of Value of Patent

When asked what their initial expectations were for the value of their patents before filing, the majority of participants indicated that they expected that the primary value would be to establish and protect market space. The value of a patent, they noted, is in providing protection to operate in a clearly staked-out portion of the market. A number of participants indicated that the value of a patent is also derived from its ability to attract investment capital. A patent-holding SME has more credibility and leverage with investors than an otherwise sound company that does not own a patent. Finally, some participants stated that they use their patents to generate licensing income.

B-2. Impact of IP Protection

A number of participants had their expectations met with respect to owning a patent: they gained credibility with investors, distributors and customers. A participant provided an example of how he used his patent ownership to gain credibility with clients by mentioning it on his website.

The majority of participants indicated that they believe that the patenting system allows them to better focus on R&D and improve their ability to innovate. Patenting provides protection for innovations, serving as an incentive to create or refine novel inventions.

Participants expressed concern about their ability to defend their patent due to the potentially high cost. This shows that they may not be in a position to exploit the full breadth of the IP system but are relying on the deterrent value of a patent.

C. Use of/Access to Information

When participants were asked whether they use information that CIPO makes available to assist with decision-making, discussion turned to CIPO's website and resources offered by other Intellectual Property Offices (IPOs).

C-1. Awareness of Information Provided by CIPO

Participants stated that CIPO's website is not easy to use. The interface to the database in particular does not support the use of patent data as a strategic tool. Discussion indicated that there is a need to redesign the interface to the database and increase awareness around its value. One participant noted that there are four different ways to find an application using the USPTO system but only one way to do so using CIPO's database—by using the application number. In fact there are multiple ways to find patent information on CIPO's database but the discussion signalled that this not well known. Participants in general indicated that they do not make extensive use of CIPO's Patents Database. One participant stated that CIPO's database is poor for monitoring competitors. A number of participants indicated that they use information from the databases of IPOs in the United States, Brazil, China, the United Kingdom and France.

Patent SMEs: Recommendations

1. Develop resources to support SME decision making during the application process.

SMEs require information products that help them better prepare for the application process. This includes clear descriptions of the steps that form part of the application process, key timelines and potential pitfalls to avoid. SMEs would also benefit from strategic information on key application topics such as the Patent Prosecution Highway (PPH) and regular, targeted information sessions. To this end, CIPO should continue to introduce education products around intellectual property but target these at the SME experience during the application process. These training products should be complemented by coaching and advice where appropriate.

2. Improve the transparency and the ability of customers to self-serve by enhancing information systems around the application process.

CIPO should act on participants' suggestions to create an online system where applicants can see the progress of their applications, including all correspondence. Participants mentioned that the USPTO system provides a good model for CIPO to follow in terms of displaying the status of an application.

3. Provide explanations of technical language used in search reports and correspondence.

Although search reports and correspondence must convey information as stated by legislation, CIPO should provide explanations of technical language either with its correspondence or through its website. Clear explanations for non-specialist readers will help innovators better understand the patent application process.

4. Improve the usability of CIPO's website.

Participants indicated that navigation and content in CIPO's website needs to be tailored to a business audience.

5. Improve the usability of CIPO's Patents Database.

The value the data contained in the Patents Database has for innovation is currently not being realized. Participants expressed a desire to use data in the Patents Database to conduct searches of existing technologies and keep track of the activities of their competitors. CIPO should consider including additional information with each database record to support these activities. Specifically, files laid open for public inspection at CIPO should be examined to determine whether additional information could be included that would be of value if accessible online. The interface to the search capability should be enhanced to include nomenclature targeted at innovators that would allow them to conduct searches more easily on companies and technologies that may be useful for competitive intelligence.

Patent Agents

A. Interactions with CIPO

When asked to share their experiences interacting with CIPO, agents provided comments related to the challenges posed by CIPO's online system, the overall quality of service at CIPO, and the impact of reducing internal pendency.

A-1. Challenges in Dealing with CIPO
  • Electronic Filing Process: agents expressed the view that CIPO's electronic filing systems have remained stagnant for far too long and are in need of major improvement. They stated that a barrier to dealing with CIPO is that they cannot see the status of files. A number of other issues with the functionality of online filing were mentioned, including the absence of an online confirmation receipt. Agents indicated that they are reluctant to file online because of the absence of an online receipt, which they require as proof of filing. As a result, they often prefer to apply on paper or via fax. One participant who does use online filing described the arduous process used in-house of saving and printing every page in PDF format so that they have a record of the application.
  • Stringency of Legislation: a number of agents indicated that CIPO is too stringent in applying legislation as it relates to the application process. Several participants indicated that greater leniency is required for exceptional circumstances and in the case of minor mistakes. Examples of what participants consider minor mistakes include the transposition of digits in an application and paying the wrong maintenance fee for the wrong case. An example of an exceptional circumstance was the Northeast Blackout of 2003 in which Toronto lost power for more than a day, but during which CIPO remained open and extensions of time were not granted. Participants indicated that this has led to abandonment in some cases.
A-2. Overall Quality of Service

Participants had a number of positive comments with respect to the overall quality of service offered by CIPO. They expressed that communication with CIPO is very good and that staff are friendly and courteous compared to other jurisdictions. They also praised the promptness in receiving calls back within 24 hours and the quality of responses received to queries submitted through the online feedback mechanism. A number of agents also praised certain aspects of the examination process, including its speed, and the new format of office actions. Some agents indicated that they were pleased that some examiners go beyond what is expected and review USPTO and European Patent Office (EPO) records, which helps ensure relevant material is submitted to the examiner.

Agents also expressed some concerns with aspects of the examination process. A number of agents indicated that CIPO adds expense and time to the application process when examiners miss an objection and raise it later in the process. They felt that objections should be raised at one time for all issues with the application rather than one at a time.

Several agents in one session expressed their concern with the topic of "special orders" as they relate to accelerated examinations. Specifically, they felt that it is too easy to misuse this feature by simply stating that failure to advance the application is likely to prejudice the person's rights.

A-3. Reply to an Office Action

When asked why it takes the maximum amount of time to respond to some office actions, agents attributed this to either their clients' decision-making process or strategic reasons. Participants indicated that they provide advice on how to respond to office actions but that the decision ultimately belongs to their client. Clients will sometimes want to reply at the last minute if they want to keep their application pending for as long as possible, or it may simply take time to reach a decision, particularly if the client is an organization requiring multiple levels of approval.

Agents pointed out that it can be advantageous to wait until the last minute to reply to an office action. Filers want all information before making decisions with respect to office actions, and this information includes the outcomes of litigation and prosecution occurring in their sector. As a result, they may wait until the last minute to act.

A-4. Reducing Internal Pendency

Agents were informed that CIPO is looking at reducing internal pendency. For example, a first action might be in 10 months rather than between 18 and 30 months depending upon discipline as is currently the case. Agents were accepting of this proposal. However, a number of participants indicated that 10 months is an aggressive target and could lead to quality issues with the examination. Specifically, they were concerned that reduced internal pendency could lead to issuance of a first action before valid prior art is published.

B. Interactions with SMEs

B-1. Profile of an SME Client

Participants indicated that there is no such thing as a "typical client." Some SMEs are knowledgeable about IP and prepared for the process while others are not at all prepared. SME clients generally come to agents with questions about the cost of the IP process. The primary motivation for SMEs in obtaining a patent is to protect their market space. This is consistent with what SMEs said during the roundtables. A secondary reason is to secure funding from investors. One participant indicated that as many as half of his SME clients pursue a patent in order to secure funding.

B-2. Agent's Main Role Working with an SME

Agents identified their main role in working with SMEs as twofold: providing IP knowledge and providing strategic advice. Agents see part of their role as educating clients on the IP system so that they can participate in decision making throughout the application process. Several participants described how the relationship evolves over time, namely that they become more involved in managing their client's IP portfolio. The initial relationship may focus on a single application, but this often evolves into a patent portfolio management role with more strategic advice offered by the agent.

Agents also indicated that they provide strategic advice to their clients. This takes the form of indicating where to file, the method of filing and how to target claims. As with the role of providing IP knowledge, participants indicated that the nature of their strategic advice grows over time as the relationship grows between agent and client.

B-3. Determining Factors Regarding Filing (Recommending to File or Not to File)

When asked what the determining factors are when advising a client whether or not to file, participants indicated that it comes down to patentability, commercial value and finances. Comments received during this portion of the roundtable discussions indicated that agents have different approaches to determining filing. Some agents will focus on determining whether an invention is patentable and try to dissuade their clients if a successful outcome is unlikely. Other agents will focus on the commercial viability of an invention. If their clients are able to articulate the commercial value, they will consider patentability as a secondary consideration. One participant offered the observation that it is difficult to pick winners early in the commercialization process and that SMEs tend to succeed or fail due to their overall business sense and knowledge, whether or not they have a good invention.

Patent Agents: Recommendations

  1. Enable self-service throughout the online application process. CIPO's online system should be upgraded to enable agents to view the status of applications and all correspondence online. A number of participants recommended that CIPO license the USPTO's PAIR system as it contains excellent functionality for agent self-service.
  2. Review entire application and raise any objections in first or earliest possible office action. CIPO examiners should ensure that, where possible, they raise any objections with an application at the earliest possible office action in order to allow the applicant to address all issues with one amendment.

IV. Trademark SMEs and Agents

Trademark SMEs

A. Experience throughout the Application Process

When asked to discuss their experiences throughout the application process, SMEs identified a number of challenges that they experienced as well as shared their views on the value of an agent.

A-1. Challenges of Application Process

SMEs identified the following three challenges throughout the trademark application process:

  • Finding Quality Information Tailored to the SME Environment: participants remarked on the complexity of the IP system and the challenges that this poses for SMEs. This includes increased cost, as they rely on agents, as well as time spent on understanding the trademark process better instead of on running their businesses. A number of participants remarked that they had difficulty finding information that they need to make strategic decisions.
  • The Inability to Submit Multi-jurisdictional Filings: participants indicated that they would favour a Madrid-style system where they can file in multiple jurisdictions with one application.
  • Limited Functionality of Online Application Forms: participants also indicated that there are a number of issues with the online trademark application form, including frequent timeouts and a description box that does not have enough characters to hold required information.
A-2. Value of an Agent

Participants indicated that the main value of an agent is their knowledge of the trademark process and their ability to navigate the application process. However, some participants stated that they found agent services somewhat limited in the area of providing strategic advice.

While some participants indicated that they consult a trademark agent or lawyer for strategic advice, a number of participants saw a role for CIPO in this area. They indicated that they would be better positioned to develop a business strategy if they were aware of available assistance programs targeted to SMEs by the government. The Scientific Research and Experimental Development (SR&ED) program and the Industrial Research Assistance Program (IRAP) were mentioned as examples of the type of programs that SMEs felt they would benefit from knowing about at the time of application.

B. Value of IP

B-1. Expectations of Value of trademark

Participants indicated that the primary value they expected from a trademark was protection from competitors. The identification of the primary value of a trademark as its defensive character reflects its use as a tool to protect brand value. A number of participants indicated that simply owning a trademark provides them with a sense of security that their brand is protected from infringement by competitors.

A number of participants indicated that they were unsure of when to use what type of intellectual property. While participants—all of whom own trademarks—indicated that they possessed knowledge of trademarks, they raised questions on when they should use other types of IP. Several participants stated that they use copyrights while one mentioned owning a patent. The discussion revealed a strong interest in learning more about effective use of other types of IP.

C. Use of/Access to Information

Participants indicated that they make use of CIPO's website when looking for information on trademarks. They raised a number of issues with accessing information in an effective manner due to the current state of CIPO's online presence. Consistent with findings in previous roundtable waves and in other Wave 3 sessions, participants identified the CIPO website's lack of organization as a barrier to finding strategic information. Participants indicated that the lack of an intuitive interface and targeted information make it difficult to use CIPO's website effectively.

Trademark SMEs: Recommendations

  1. Provide SME-focused information on trademarks. Although participants were able to find information on the trademarks application process, they indicated that it was difficult to find information geared towards SMEs. As such, information products should be developed that target SMEs in terms of both the subject matter and the use of straightforward language.
  2. Pursue multi-jurisdictional trademark filing. A small number of SME participants indicated that they would benefit from a Madrid-style system in which they could file for trademark protection in multiple jurisdictions.
  3. Provide integrated advice to SMEs. Although trademark agents provide strategic advice to their clients, participants were clear that there is a role for the federal government. While a whole-of-government approach is needed to provide truly integrated advice, CIPO can show leadership in this domain by directing trademark applicants to relevant government services such as the Scientific Research and Experimental Development (SR&ED) program and the Industrial Research Assistance Program (IRAP). Other relevant services should be identified for SME applicants.
  4. Provide clear advice on when it is appropriate to use what type of IP. In order to reap the full benefits of Canada's IP system, SMEs need to be aware of the most effective use of different types of IP. A video clip on CIPO's website could briefly explain each type of IP and how each is most effectively used.

Trademark Agents

A. Interactions with CIPO

Trademark agents were asked to reflect on their interactions with CIPO throughout the application process. This included identifying what went well, what were the challenges, what CIPO can do to improve the situation and how CIPO's services compare to other IPOs.

A-1. Customer Service

A number of agents indicated that one of CIPO's strong points is the quality of customer service delivered by its trademark examiners. These participants liked the fact that examiners typically call them back within a 24-hour time period and are able to resolve the majority of their issues over the phone. This was seen as being very important due to the speed in which issues can be resolved. Agents also noted that examiners are very professional and willing to help work out solutions to various problems and issues. This behaviour was identified as very important and helpful when agents and examiners have disagreements over an objection.

A-2. Quality of Examination

When asked to identify challenges and difficulties faced during the application process, quality of examination was mentioned by a number of agents. In fact, a number of agents felt that the overall quality of examination at CIPO is not at the same level as in other jurisdictions such as the USPTO. These agents indicated that they felt that this problem is likely due to lack of experience among examiners. The following issues were raised by various participants:

  • Receiving multiple office actions one after another on a file when they should have been sent together, a behaviour seen as costly to clients.
  • Language used by examiners does not correspond to Wares and Services Manual.
  • Lack of industry-specific knowledge. This was identified as a problem when trying to communicate with an examiner.
A-3. Online Systems

Agents had mixed views on the quality of CIPO's online systems. Several participants indicated that they found the system has improved over the years. Specifically, they liked the ease with which they can file an opposition online and how quickly they receive their proof of filing. Although these participants were happy with CIPO's online system, a number of agents identified problems that they experienced, namely:

  • the inability to modify requests immediately after a request has been sent to the office;
  • the ease in which mistakes can be made in the online application;
  • the inability to conduct correspondence online following initial filing; and
  • the inability to make amendments to the "declaration of use" form and download the form.

It was also noted by a number of agents that the CIPO system is not as user friendly as some other IPO systems.

A-4. Timelines

A number of participants indicated that set timelines within the registration and opposition processes can be too stringent for SMEs. These participants indicated that SMEs typically have limited resources and limited knowledge of intellectual property. When combined with a set timeline, the situation becomes problematic for SMEs to respond within the allotted time period. Furthermore, several of these agents added that other factors such as foreign registration or negotiations further complicate matters. The agents indicated that CIPO needs to be more understanding of the environment in which SMEs operate and allow for a certain degree of leniency when it comes to set timelines. The agents also indicated they do understand that extensions of time requests cannot go on indefinitely.

A-5. What Would Make CIPO Service Better?

When agents were asked what CIPO could do to help alleviate the challenges and difficulties they faced, they focused primarily on online service delivery. A number of agents indicated that they wanted the ability to carry out all aspects of the application process online and pointed to the USPTO's Trademark Electronic Application System (TEAS) and TEAS+ as good examples of systems CIPO could emulate. The ability to carry out the application process online was indicated by agents as something that would save time and money. One agent also mentioned that the World Intellectual Property Organization (WIPO) has an excellent database search tool that CIPO should consider adopting.

A-6. How Does the Quality of CIPO's Processes and Examination Compare to Other IPOs?

Little consensus was reached when comparing the quality of CIPO's processes and examination to those of other IPOs. However, agents did agree that other IPOs have more user-friendly and robust online services, especially the USPTO. A number of participants also felt that USPTO examiners did a better job of providing more detailed information in their correspondence, which allows agents to respond appropriately, whereas CIPO examiners were described as being too brief at times.

A number of agents expressed concern over Canada adopting the Madrid Protocol. These concerns focused primarily on how Canada will approach problems surrounding the use of a class system. It was felt that adopting a class system would incur greater costs for Canadian businesses due to the effort required by agents to become familiar with the system. Some participants also expressed concern with the potential complexity involved in reconciling the assignment of classifications to trademarks across jurisdictions. They indicated that it would be essential to ensure uniformity across jurisdictions in the assignment of classifications to a trademark.

B. Interactions with SMEs

B-1. Knowledge Level of Clients

Participants indicated that SMEs in general have a low level of IP knowledge when they begin the trademark application process. Agents indicated that most of their clients are not aware of the level of effort required and the potential costs associated with registering a trademark. Some agents noted that this is not the case for all SMEs; industry and size of business within an industry can play a large role.

B-2. Agents' Primary Role Working with SMEs

Agents indicated that their primary roles were to provide legal advice, act as a guide throughout the application process, provide strategic advice in terms of where, when and how to file, manage their client's IP portfolio, and assist in the creation of a plan that is cost effective. In one session a couple of agents indicated that they also assist in the creative process of developing and designing the trademark.

In one session a couple of participants noted that new trends in how SMEs file have started to appear, specifically among smaller businesses. Smaller businesses have increasingly been declining initial search services offered by trademark professionals and either completely forego the initial search process or conduct simplistic initial searches on their own. Participants indicated that they believe this is done as a cost-saving measure.

B-3. Determining Factors Regarding Filing (Recommending to File or Not to File)

Participants indicated that before recommending that a client file for a trademark, they assess the client's willingness to defend the mark, make the client aware of the costs associated with the application process, and ask the client what their future business plans are in order to help determine a filing strategy that works for that client.

Some participants indicated that they advise a client not to file for a trademark if the mark is clearly descriptive, if surnames are being used, or if they believe the mark to be ineligible for registration in any way, such as a section 9 mark.

B-4. Timeline of Responding to Office Actions

When asked why some responses to office actions are submitted at the last minute, participants indicated that this was due to the time it takes for their clients to respond as they are focused on running their businesses. A number of agents stated that they use a variety of approaches to ensure that office action deadlines are met, including issuing deadline updates or reminder notices to their clients, recommending solutions to speed up the process, and carrying out the reply on their own unless it is absolutely necessary to contact the client.

Trademark Agents: Recommendations

  1. Creation of a completely online, user-friendly application process. CIPO's online application process should be upgraded to include all aspects of the process in a user-friendly manner. Participants suggested that CIPO look to other IPOs for examples of user-friendly websites and databases, such as the USPTO's TEAS and TEAS+ systems or WIPO's database search system.
  2. Consistency of examination. Agents raised a number of issues with the consistency of examination at CIPO, suggesting that examiners need to include more comprehensive and robust descriptions in office actions and possess more industry-specific technical knowledge. CIPO should consider these recommendations with a view to addressing concerns about consistency of examination.
  3. Develop trademark education products that target SMEs. Agents indicated that SMEs tend to possess a fairly rudimentary knowledge of the trademark application process and system. CIPO should target education products at trademark SMEs, which in turn will assist them navigate the application process with their agents. The result will be a smoother application process.

V. Conclusion

CIPO received a range of input during the third wave of roundtables that reflects the varying experiences that occur during the application process. Among the messages that CIPO heard from participants were the following:

  • SMEs and agents would benefit throughout the application process from enhanced online offerings such as the ability to access the status of applications and all correspondence.
  • SMEs would benefit from a general articulation of how different filing strategies and options can enhance their market reach and therefore the value of their IP.
  • The desire for coaching expressed by numerous SMEs during the second wave of roundtable meetings should include information on the strategic elements of the filing process that may be helpful prior to commencing the process.
  • There are a variety of examination and administrative issues that SMEs and agents face at CIPO that need to be addressed to maximize the quality of the application process.

Participants were clear that there are opportunities for CIPO to enhance the filing process and information around the process to make it more effective for Canadian innovators.

Annex A — Discussion Guide for Roundtables with SMEs: Patents

1. SME Experience and Knowledge throughout the Application Process

  • What worked for you? What went well? What was useful?
  • What were your challenges/frustrations, if any? What was difficult?
    • Probe:
      • Did you find there were many delays during the process? Please explain.
      • Were you aware of the wait times attached to the application process and what the impact would be?
  • From the time that you selected an agent up until the application was filed, did you feel that you were kept informed by the agent? Did you know the status of your application throughout the process? Explain.
    • Probe:
      • Did your agent share the results of CIPO's actions with you (e.g., correspondence, reports)? If not, would you appreciate or see added value in having access to this information? Explain.
      • Did you discuss a filing strategy with your agent? Explain.
        • Probe:
          • Did your agent tell you that you can file for protection internationally through the PCT?
          • Did the agent recommend applying internationally? (PCT)
          • Did you use a strategy of filing in another country to start with (before Canada)? If yes, why (marketability, speed, cumbersomeness of process, quality of examination)? If no, why not?
  • During the application phase, what did you do versus what did the agent do?
    • Probe:
      • How involved were you during the application drafting phase of your IP application? Explain.
      • Who does the IP research (you or your agent)? Why?
  • To what extent did you understand the process the agent was following on your behalf? Did you feel that you knew enough to contribute to the process with the agent? Explain.
  • What was the greatest value that the agent brought you? Why?
  • Are you aware of the timelines to request examination? Probe.
  • Do you know the different timelines for responding to CIPO's various requests? Probe. (If you are aware of the timelines, this can contribute to accelerating the process.)
  • Are you aware that CIPO has programs to accelerate examinations? If so, how were you made aware of this?
  • Are you aware that there are accelerated examination programs available through CIPO in cooperation with other countries?
  • Are you aware that some of these accelerated examination programs are free of charge? (Free: PPH and Green.)
  • Are you aware that a request for an examination can be paid at any time by the applicant and does not need to be submitted by the agent (cost savings)?
  • Did you do any searches on patentability on your own (after seeing an agent)? How did that go? If not, why not?
    • Probe:
      • Where did you look (e.g., databases, Google)?
  • Even during prosecution, are you doing searches (e.g., Patents Database) to follow the evolution of IP activities related to your product (i.e., do you keep track of what is being granted out there)? If so, how is that going? If not, why not?

2. Value of IP to SMEs

  • What were your expectations regarding the value that your patent would bring you?
  • Do you feel that you realized the benefits you were expecting? Did it bring you the revenues you expected? Was it profitable? Has IP provided you with the protection you hoped for?
  • Did you gain any value or benefits (marketability) just from having filed for a patent, even before granting? Explain.
    • Probe:
      • What would you have liked to have known or understood better throughout the process? What knowledge would have made you a better contributor to the process?
  • Has IP motivated you to innovate? Did IP become a lever or a hindrance for your innovation as an SME?
  • Having had the experience, would you apply for a patent again? Why? Why not?

3. Use of/Access to IP Information (Time Permitting)

  • What do you know about the information that CIPO provides in terms of helping to make such strategic decisions?
  • During the application process, did you access the CIPO database? If so, for what purpose? Did it help you? If so, how did it help you? If not, why not? If you are not accessing the CIPO database, why not?
  • Do you know that IP information is publicly available? And why that is?
  • Are you leveraging other IPOs to conduct your IP research?

Annex B—Discussion Guide for Roundtables with Agents: Patents

1. Agent Interactions with CIPO

  • When working with CIPO throughout the application phase, what works well? What was useful?
  • What are your challenges in working with CIPO throughout the application phase? What is difficult?
  • How would you rate the quality of service you receive from CIPO?
  • What would make the CIPO service better?
    • Probe the following if not mentioned:
      • When in need of general info, how do you contact CIPO?
      • When you have a question for us, to what degree are you satisfied with our responses?
      • In terms of information we provide you, how useful is it? Is there anything else you would like to receive?
      • How does the quality of CIPO's processes and examination compare to other IPO's?
      • How could we streamline and/or clarify CIPO's administrative framework and procedures?
      • Tell us about your experience using the Patent Prosecution Highway.
      • CIPO is aiming at reducing internal pendency. For example, a first action would be sent 10 months after registration. What are your thoughts on this? What are the pros and cons?
      • When a reply to an office action takes the maximum amount of time, is this your decision or that of the client?

2. Agents' Work with Clients

  • Describe the typical profile of an SME that comes to you for services (sector, size, well prepared, knowledgeable).
  • How knowledgeable are your clients when they approach you about filing?
  • What would you say is your main role in working with SMEs?
  • What is the gamut of services and advice that you offer clients?
    • Prompt: do you see it as your role to provide advice on how to align the filing strategy with the business strategy?
  • On what basis do you come to a decision as to whether or not you will recommend filing? What are the determining factors?
  • What do you see as the most important value you bring to SMEs?

Annex C — Discussion Guide for Roundtables with SMEs: Trademarks

1. SME Experience and Knowledge throughout the Registration Process

  • What worked for you? What went well? What was useful?
    • Probe:
      • Are there any services offered by your trademark agent that were particularly useful?
      • What worked well while working with CIPO in any particular stage of the registration process? Any specific areas of strength?
  • What were your challenges/frustrations, if any? What was difficult?
    • Probe:
      • Probe on challenges/frustrations from CIPO on any particular stage of the registration process. Any specific pain points?
      • (If not mentioned) are there any services offered by your trademark agent that you feel should be offered by CIPO? Why?
      • Do you feel the requirement that a trademark must be used before it can be registered in Canada is problematic? Why?
  • Did you feel that you knew enough to be an informed "client" to contribute to the trademark registration process with the agent?
    • Probe:
      • To what extent did you understand the process the agent was following on your behalf? Did you know what stage the agent was at throughout? Did you feel informed enough? Why/why not?
      • What would you have liked to have known or understood better throughout the process? What knowledge would have made you a better contributor to the process?
      • Did you discuss a filing strategy with your agent? Explain.
      • Did you ever contact CIPO directly because you needed information and if so, did you receive the information you were looking for?
      • Did you consult CIPO's website to get additional information about the status of your trademark application? What was your experience?
      • What did you do on your own? What did you ask your agent to do? Why?
      • Would you consider completing a trademark application on your own? If no, why not? If yes, what information and/or tools would you need to support you in accomplishing this task?
      • Did you consult any of CIPO's online information sources? If so, how useful were they?
      • Any improvements that you would like to see from CIPO to support decision-making with your agent?
      • Are you familiar with CIPO's fees for registering a trademark?
  • (Optional—ask if it has not been covered) what was the greatest value that the agent brought you? Why?
  • Having filed for a trademark, how likely are you to go through the trademark process again? Why?

2. Value of IP to SMEs

  • What were your expectations regarding the value that your trademark would provide when you went into the process?
    • Probe on protecting corporate identity, legal title to IP and evidence of ownership.
  • Do you feel you realized the benefits you were expecting?
    • Probe:
      • Is there a benefit to obtaining a filing date and having a pending trademark? Please explain.
      • What are the business benefits of having filed a trademark (e.g., brands)?
      • Is a strong brand of importance to you? If yes, how could CIPO help you?
      • How important is protecting your trademark versus other forms of IP (patent, copyright, ID)?
      • Did you apply for any other IP type in relation to your trademark? Why?

3. Use of/Access to IP Information

  • What do you know about the information that CIPO can provide in terms of helping to make strategic decisions on selecting your trademark?
    • Probe:
      • Who does the IP research, you or your agent? Why?
  • IP Research tools—Preliminary Search. Are you using these tools to:
    • Recognize trends: do you use it to find out who your competitors are and what they are doing, and develop a comparative analysis of goods or services? Why/why not?
    • Locate partners: do you review businesses in your industry or related industries that may be identified as potential partners? Do you use the trademark records to contact them and explore possibilities of working together? Why/why not?
    • Develop branding: when developing your branding strategy, do you use IP databases to review the symbols and names that have already been registered in your industry? Why/why not?
    • If searching the trademarks Database, what are you searching for (e.g., trademarks name/design, goods and services in relation to trademark status, ownership of mark, office actions)?
    • Are you leveraging other IPOs to conduct your IP research? How so?
  • Are you familiar with the guidelines of what can or cannot be considered as a trademark?
  • Probe on knowledge of online trademark tools: Wares and Services Manual, trademarks Journal and online database.
    • If conducting the search without the help of an agent, where do you search? Why? How was this experience for you?
  • Have you ever conducted a Goods and Services Search? If so, what improvements would you like to see to differentiate your goods and services from those of your potential competitors in the marketplace, to develop your branding or to follow established industry trends/terminology? If not, why not?
  • Do you monitor other trademarks that have been approved in the trademarks Journal to assess marks that may cause confusion, damage or take unfair advantage of the reputation of your pending or registered mark?
    • Probe:
      • Are there any specific improvements that you would like to see put in place?
      • Are you familiar with the opposition process in Canada? Probe.
      • Would an inventory of applications being opposed be of value? Why? Why not?
  • Were you aware that a registration may be expunged if the mark has not been in use in Canada during the past three years and there are no special circumstances justifying the lack of use?

Annex D — Discussion Guide for Roundtables with Agents: Trademarks

1. Agent Interactions with CIPO

  • In working with CIPO throughout the application phase, what works well? What is useful?
  • What are your challenges in working with CIPO throughout the application phase? What is difficult?
  • How would you rate the quality of service you receive from CIPO?
  • What would make CIPO service better?
    • Probe:
      • When in need of general info, how do you contact CIPO?
      • When you have a question for us, to what degree are you satisfied with our responses?
      • In terms of information we provide you, how useful is it? Is there anything else you would like to receive?
      • How does the quality of CIPO's processes and examination compare to other IPOs?
      • How could we streamline and/or clarify CIPO's administrative framework and procedures?
      • CIPO is aiming to reduce internal pendency. For example, a first action would be sent four months after filing. What are your thoughts on this?

2. Agents' Work with Clients

  • Describe the typical profile of an SME that comes to you for services (sector, size, well prepared, knowledgeable).
  • How knowledgeable are your clients when they approach you about filing?
  • What would you say is your main role in working with SMEs?
  • What is the gamut of services and advice that you offer clients?
    • Probe:
      • Do you provide advice on filing strategies to your clients?
  • On what basis do you come to a decision as to whether or not you will recommend filing? What are the determining factors?
  • When a reply to an office action takes the maximum amount of time, is this your decision or that of the client?
  • What do you see as the most important value you bring to SMEs?

Annex E — Participant Demographics

Fifty individuals participated in the March 2013 roundtable discussions. The following table displays the geographic distribution of participants.

Geographic Distribution of the March 2013 roundtable discussions
City Patents Participants Trademarks Participants
SMEs Agents SMEs Agents
Calgary 4 4 4 4
Quebec 6 2 2 2
Toronto 4 4 5 9
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