Episode 12: How can a CIPO IP advisor help you with your IP?

Lisa Desjardins (Lisa): You’re listening to Canadian IP voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life. I’m Lisa Desjardins and I’m your host.

The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.

IP rights, like patents, registered trademarks, industrial designs and other forms of IP can be really valuable to a company. According to a 2019 survey of over 9,000 companies across Canada, more than half of businesses that own IP said it improved their business in some capacity, like increased competitive advantage, reputation and goodwill.

But for someone just starting a business or even just thinking about starting a business, IP is not always top of mind. It can be a big step to go from business planning to that first meeting with an IP agent or lawyer to discuss IP. CIPO’s online brochures, course modules, web pages, videos, and webinars are meant to give inventors, creators and start-ups a general introduction of IP so they have that basic knowledge to prepare for that first conversation about their IP with someone else.

CIPO also employs IP advisors to help disseminate this information directly to companies in seminars, presentations and online recordings. And today I’m joined by Caroline Lefebvre, who is one of CIPO’s IP advisors. Caroline is based in Gatineau in Quebec. Welcome to the podcast, Caroline!

Caroline Lefebvre (Caroline): Thank you, hello Lisa.

Lisa: Before we start this interview, I wonder if you could tell me a little bit about yourself.

Caroline: Sure! I’ve been with CIPO since 2007, so almost 14 years now, and as you said, I’m based in Gatineau and I cover what we call the National Capital Region, Northern Ontario and the province of Quebec.

Also what I can say about me is I’m a graduate from Ottawa U in political science and I’ve been with the government for about 20 years. And aside from my work, I’m a mother of a 22-year-old daughter and I’m passionate about scientific aromatherapy. So that’s, in a nutshell, who I am.

Lisa: And you work as one of our IP advisors. I wonder if you could tell me a little bit about your job. What do you do in your job?

Caroline: I guess I can divide my job in three main activities. I have one on one meetings with clients. So basically we organize a one hour conversation so that I can understand their projects, their needs relating to IP. During those conversations, it’s really demystifying IP and also recognizing which IP rights will be more relevant for them and understand their business strategy, their mid to long term strategy so we can identify OK are you exporting or you staying in Canada? What do you need in terms of activities and support? What I really like doing is also training people, either entrepreneurs and innovators or organizations, so we do webinars and seminars. Once we resume after pandemic, we’ll do them in person. We do webinars on different IP related topics where we can, again, demystify IP and go further in terms of building IP strategy, exporting, etc., etc.

Those webinars often lead to multiple one-on-ones with participants who are more inclined to have private conversations as opposed to public questions, especially when, in terms of IP, you need to keep many elements more confidential.

And the third element of my job is to attend tradeshows, again virtually for now. But hopefully in person soon, where we can reach different clients that we have, and it really helps us also to promote CIPO and their products and services.

Lisa: That’s many aspects of the role. Maybe you can also talk to some of the things that you actually do not do in your job?

Caroline: That’s a very good point. Probably because our title is being IP advisor, many people will think that we provide legal advice, which we don’t. We leave legal advice to IP professionals, such as IP agents and IP lawyers. So I will not offer an opinion on the patentability or registrability of an application. I will not draft an application for clients.

However, I describe my role as providing sufficient information so that at the end of the day they will make an informed decision on which right to apply for, and searching the databases to ensure that there’s a good potential for granting or registration of their IP. So, I don’t do the work for them, but we give them options and paths for food for thought, I would say.

Lisa: So they know what to do next.

Caroline: Yes, exactly, and sometimes a conversation say, “OK, this is information I have, these are the links you should consult. And if you have more questions before either funding on your own or meeting with an IP agent or an IP professional, come back to me and we’ll analyze those questions.” And then preparing you to, as I said, file or meet with an agent.

Lisa: And how much does this cost?

Caroline: The good news is it’s all for free. I tend to say services are free until you start applying or meeting with an agent, but CIPO’s services are free in terms of education and awareness.

Lisa: And I wonder if you could describe a typical day, if there is such a thing?

Caroline: I would say, it may sound very cliché, but there’s no typical day. A day could be filled with offering a webinar and then it could be followed by three or five one on one sessions. And in the meantime, you kind of work on back burner projects, identifying new organizations that could be possible.

I’m a huge fan of Facebook. So I search for organizations and people, and sometimes I just use those contacts to promote CIPO services. So there’s no typical day, and that’s what makes our job very exciting. You could be travelling one day and then, the next day, you’re training people. And then another day, you’re back to work in the office. Then you’re offering webinars and then one-on-ones and training. Colleagues will come to me and ask questions and ask for my views on different topics or activities.

Lisa: With so many years of experience and so many clients that you've met, what are the typical questions that you always find yourself answering?

Caroline: Often clients will be confused in the different types of IP that could protect the projects. For instance, someone would ask me how can I patent my logo. So then you just backtrack and explain difference between patents and trademarks. The cost is also often discussed, and I try to limit the conversation to administrative fees because these are the ones we can control and that are set.

And what I really like is when you have clients that are planning to go abroad. It’s to build that strategy over time as to where to file, identifying which countries you need to file in, for instance. Unfortunately many people are hoping to file in all the countries in the world, and then when we go into the cost and the length of time, they say, “Oh okay, I don’t need to file in every countries in the world.” An example I often use in my presentations is, if one individual or one company has developed a winter sport technology and, unless they manufacture in a country like China or Mexico, they should focus their patent strategy and trademark strategy in the country where they do have winter sports.

So that’s a kind of conversation we have, and trying to offer the best picture as possible. So at the end of the day again, it comes back to building an IP strategy that’s aligned to their business objectives and that’s reasonable in terms of cost and effort.

Lisa: What are the best conversations that you have with your clients?

Caroline: All of them, I really, really like when you have the feeling that you make a contribution to the inventors, the entrepreneur, the artist, the creator. Some people come to me referred by an organization. They have no clue what is IP and they’re just entering a maze, if I can say, and it’s to understand their project and to say, “Okay, you’re at point A now. We’ll get you to point B,” which point B for me is ready to file on their own or meeting with a pattern agent. It’s also to see the potential of the project. It’s building that relationship. There’s nothing like a client calling back or writing back saying, “Thank you so much. Our conversation was really helpful,” and that it almost changed the course of their business endeavour, if I can say.

Lisa: What about the more challenging parts of your job? What could be the most challenging part?

Caroline: The most challenging is to say no to clients when you have to explain that there’s limitation to the service we offer, that we will not draft a claim. They understand, but it’s hard to say no to someone or to say, “I can’t help you with this because it’s outside the scope of my work and I would be in conflict of interest if I go any further.” So for me, it’s that that I find difficult because we’re dealing with human beings and you know you’re disappointing them to some extent. So for me, it’s very difficult.

But it’s also a challenge that I encountered, especially this year, the past year with being virtual. For some reason, there’s one day where everyone will be asking for my collaboration. For me, it’s, again, calling an organization that I’ve been working with and saying, “Well, I won’t be there, but my colleague will be there, replacing me.” So that’s very challenging.

Because I cover large territory ranging from Kingston to Eastern Quebec and whatnot, there’s a lot of requests, and it’s hard sometimes to juggle them and to see where I should be prioritizing my time versus asking someone else to replace me. And it’s tough to do that because I like all my clients, you know?

Lisa: We’re speaking about the clients. If I’m an inventor and I don’t want to talk about my secrets, but I still need help, can you tell me how you deal with the secrecy and the confidentiality?

Caroline: Yes, absolutely. One technical aspect I would say that, as an IP advisor working for CIPO, I belong to a union, the professional Institute of the Public Service of Canada, and with that, I’m bound by secrecy. And also I’ve got my secret code, and so whatever conversation I have is secret with my clients. And I tell them that this is the guarantee that I offer them and I need to understand the project, so they have to share with me the information so I can understand exactly if this is a patent or is it an industrial design? So, after 14 years, I’ve heard so many, so many projects that, if I had disclosed one, I could have lost my job, which is not in my interest.

And I even tell them, if we discuss a project with different organizations around the table and I meet some of my partners from outside organizations or if we meet on the street, we will not discuss a client’s project if it’s not working hours. And on the practical side, working from home, if there’s anyone else in the house, my door is shut so that they don’t hear even a tiny bit of the conversation. So, that’s what I tell my clients, and I even show them the door is shut so they understand that the privacy is ensured. And for me, that’s very important.

Lisa: Because dealing with secrets, if you don’t deal with the secret well, you can lose it all. So what would you say to someone who is about to disclose their secret outside your conversation?

Caroline: Make sure they really have to disclose and to disclose a very minimal part of information. Something like, tell them what it does, but don’t tell them how it works and how it’s being built. So, at least, they will spark the interest on the functionality. That’s part of things I would say. And have those NDAs and confidentiality agreements with their employees and NDAs with partners, so that, at least, there’s some mechanism if someone discloses, voluntarily or not. So at least get as much protection as possible.

Unfortunately, there are a lot of, I would say, scam organizations that promote themselves as the best alternative to IP agents. And, sadly, I’ve got clients that either lost everything in terms of potential patent and potential patented invention because they dealt with the wrong organization. So I referred them to the list of agents to find the best IP agent fit for them.

Some clients will ask me, “Should I trust their these agents?” And I always say it’s the same as talking to me in the sense that they’re also bound by secrecy. And they’re professionals, so they’re at risk of losing their job if they disclose something in any way. Like, if they disclose any information, they could lose their job and their reputation is at risk. So it’s dealing with a system that’s there to protect the inventor, and they should trust that system.

Lisa: So you have a lot of clients, you have a lot of conversations, you have a lot of experience. How would one prepare before they meet with you?

Caroline: Ideally, clients would have browsed the CIPO website, would understand, at least in a minimum level, what is IP. If they need a patent or a trademark or industrial design, they have done some reading and then they ask their questions.

But most of the time, it’s really exploratory conversations. So, they expose me the projects and, provided that I have the time, and that’s what I try to do every time is I go on the company’s website, I try to understand their vision, their mission and what they’re planning to do. So at least I’ve got an idea. Will we be discussing patents? Will we be discussing trademarks? Or either or? Or both? So typically, I would go through the project and explain my role and limitations and then we discuss the different IP rights. And if I feel that there will be another conversation, then, again, I say, “Do some research then come back to me when you’re ready and we’ll discuss again.” And then we’ll see where that leads you. And then, “Are you ready to file now or should you wait a bit more?” Or “Do you need some more research?” So it really depends on the scope of their projects. And, I would say also, is it complex or not? And sometimes they will call me again to say, “Okay, I just filed. Thank you so much, and I’ll let you know what’s going on.” And sometimes I say, “Okay, the patent was granted or the trademark was registered,” things like that.

So they can prepare by doing some research, and then we’ll see if they need to do some more research, guiding them to other IPOs around the world if they want to file in different countries, etc. That’s how they should prepare. And post-meeting, they always have homework to do.

Lisa: Well, thank you so much for describing your work and your approach to how you meet and talk and provide educational services to people that are wanting to learn and understand IP a little bit better. Thank you, Caroline. It’s been a pleasure.

Caroline: Thank you Lisa, and I’m passionate about IP so I love to talk about this.

Lisa: Thank you!

Caroline: Thank you.

Lisa: You’ve listened to Canadian IP Voices ,where we explore intellectual property. In this episode, you met with Caroline, who works as an intellectual property advisor at the Canadian Intellectual Property Office in Gatineau. CIPO’s IP advisors help creators, inventors and entrepreneurs understand the strategic value of their IP and can provide information and guidance as they develop a plan for how they can protect and use IP to reach their business goals. If you wonder how to use IP in your business, visit canada.ca/ip-academy to learn the basics about IP, and go to Canada.ca/ip-advisors to book a free meeting with an IP advisor near you.