Episode 30: Why IP is important: Insights from an IP advisor

Lisa Desjardins, (Lisa): You're listening to Canadian I.P. 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.

Lisa: According to research by Statistics Canada, around half of Canadian small to medium enterprises are aware of different I.P. rights like patterns and trademarks. But when asked if they own some formal I.P., not even 1 of 5 Canadian companies say that they do. Interestingly, more than half of the companies that do own I.P. say that it can increase the value of their company. It can assist them in getting financing and that it's linked to higher exports. Across the innovation system, stakeholders agree that increasing both I.P. awareness and ownership would be good for business. Both for the regional and the Canadian economy. CIPO has an important mandate to provide free I.P. education and awareness to Canadians and offer free online courses, webinars, tools and resources to this effect. CIPO also offers free meetings with their intellectual property advisors. But free products and services are only part of the solution. Of course, money is needed for the actual creation and protection of I.P. But another challenge in increasing I.P. awareness is mindset, and today I'm joined by my colleague André Gallant, who is one of CIPO's I.P. advisors. André has talked to thousands of inventors and creators over the years and knows a thing or two on how to break through this mindset. Welcome to the podcast, André.

André Gallant (André): Well, thank you, Lisa. Thanks for inviting me.

Lisa: An important portion of CIPO's workforce is examiners. But we also answer general questions about I.P. and I know you have experience from this. So, can you explain to the audience how people communicate with CIPO for I.P. awareness and education.

André: Yes, there are two points of contacts for clients with CIPO essentially. So the first point of contact would be with information agents that the Client Service Centre and the second point of contact would be members of the I.P. education and awareness team, such as I.P. advisors. So for the first point of contact, information agents, they usually receive questions from clients that already know we exist and have specific questions about possibly filing or about their files. This was my first role with CIPO. I would typically get 20 to 40 calls per day from around the world. Lasting from a few minutes to sometimes an hour depending, and that would depend on the nature of the questions and the type of questions essentially. And when I was in that group, we were around 5 to 8 information agents. With the second point of contact, especially with I.P. advisors, the focus is on only Canadians, especially those who either do not know we exist or those who vaguely know but believe that I.P. rights are not relevant to them. There are various ways to reach these individuals, as well as different ways to raise their awareness, and hopefully their usage of I.P. rights. In my new position, I am the I.P. advisor covering Atlantic Canada and I have colleagues who cover other parts of our country.

Lisa: It's an important job. I mean, one of the key challenges to increase awareness of intellectual property is the mindset. I know you've talked to thousands of entrepreneurs and creators of I.P. and that you need to break through that. What are the perceptions that you hear from them about IP?

André: That is a very important question, Lisa. Especially when one is made aware of the of different statistics like the ones you highlighted in the introduction. But first, knowing how important it is to increase both awareness and usage of informal and formal IP rights, a good place to start is to dig deeper into Canadians' perceptions. One way to do that, obviously, is ask them by using different methods. An additional way is to ask the different individuals and organizations that educate Canadians, like different parts of CIPO, but also other players and innovation sphere such as universities, colleges, incubators, business associations, innovation labs, other federal and provincial departments, and so forth. Now speaking of perceptions, which is what you were asking about. So the first misconception for many is that they do not need or would not benefit from certain forms of formal I.P. protection. We can discuss this in more detail later. A second misconception I would say is that one does not need to hire an I.P. professional to file a patent or a trademark. For example, such as a registered patent agent or a registered trademark agent. CIPO does recommend that an applicant hires such a professional to prepare their application and represent them during the application process. These applications are legal processes involving several substantive rules and many equally important procedural rules. For patents, there are different rules that would force applicants to hire registered a patent agent. I can elaborate on this later. There are also many more misconceptions about different rules surrounding the different I.P. rights. As information officers and intellectual property advisors, we've heard many of them over the years from many angles and variations with various scenarios. Our colleague, Caroline, touches upon some of these other misconceptions in podcast number 12 to illustrate part of our role as I.P. advisors. But also in other podcasts, some of our guests also highlight other misconceptions.

Lisa: If you've taken 20 to 40 calls per day, you really have had exposure to some of these misconceptions and the perceptions about I.P. So, how do you convince someone that I.P. is important?

André: Ah well, a magician doesn't reveal his secrets, Lisa. While we often explain that it's a good idea to formalize one's I.P. rights, we can't force it. One of the good ways to convince people is to make a stronger case in that direction, while at the same time remaining realist, objective, neutral and impartial. Accordingly, we highlight both the pros and cons on the different issues we discuss. At least we try, like we try to raise all the opportunities and the red flags as much as possible and based on the conversation. If we were to only point to the positive aspects of the different I.P. rights, it would not sound as credible and credibility is key in getting the other's trust. For example, there could be situations that trade secrets would ultimately make more sense than patents on certain creations. Again, we raised the different possibilities without, however, giving any opinion or advice. One thing to note is that information agents or intellectual property advisors do not have any quotas based on funding agreements or the number of patent or trademark applications we subsequently receive. Our job is to make sure that our clients know what to do next. In other words, if after speaking with me the client doesn't end up filing with CIPO, I still get paid. CIPO still is paying me, right Lisa?

Lisa: Yeah, I can confirm that.

André: It's good to hear, but yeah, our mandate either as information agents or I.P. advisors is to provide information and options to our clients as long as they make an informed decision based on their business objectives and quite realistically on their budget, I consider that I've fulfilled my role.

Lisa: Oh absolutely yeah, I can definitely confirm that, André.

André: Good. And that's a unique position to be in, joking aside, and then we're proud to offer free and unbiased information to clients.

Lisa: So how do you convince someone that I.P. is important?

André: Well, one way is to convince potential client by digging deeper in different positive and negative aspects of the I.P. rights in question. So we can expand on a few elements for example, so we can go in more detail about the importance of minimizing the different legal risks. Not only the risks of losing our ideas or our creation, but also of maybe stepping on someone else's turf essentially. But there are other benefits other than legal or risks. We can talk about the other ones as well. So for example, how significant it is for you to have I.P. rights in the eyes of investors, buyers and clients? And also the usefulness of using I.P. sources to gather intelligence on your current and future competitors, or even the link between educating your company about I.P. and sparking more innovations. If you do not invest in I.P. and your competitors do, that makes things even more difficult for you. And going into more detail about those benefits and risks, we rely on theory and practice in different areas, so we look at law, even traditional economics and behavioral economics and even psychology and marketing. So there are a lot of areas that are relevant and to trying to explain the importance of intellectual property. And we look at quantitative data like statistics, like you referred earlier, and then there's a lot more data out there around the world and also qualitative data. And qualitative being more like the experience like you mentioned that we interact with a lot of clients. So based on all those interactions and the way they react to the information we provide them with their hopes and aspirations and their fears and concerns, we can gather a lot of information that way as well. And one last point I want to make about data and about convincing, we also want to be aware of the environment we're in in Canada and around the world when it's we have to convince about the importance. There was a recent survey conducted by the Quebec's Innovation Council by the Léger firm and they surveyed businesses in 3 provinces, in Quebec, Ontario and British Columbia, and 35% of those businesses even stated that they did not even need to innovate. And as you know, innovation comes before I.P. In other words, in some cases to increase I.P. ownership, we also have to find ways, all of us, in the ecosystem to increase innovation.

Lisa: I mean, you mentioned that people also underestimate the actual complexity of I.P. How can information agents and I.P. advisors, like yourself, stress that I.P. rules and procedures can be quite complex for a non I.P. professional and that getting the help of an I.P. professional is actually a really good idea?

André: I would first refer our listeners to our first podcast, podcast number one, that provides an answer to the question why use an I.P. agent? The one being interviewed is an I.P. agent. We can confirm that hiring an agent is very valuable and always recommended. So being in an education and awareness role with no sales quotas as mentioned earlier. Again, I can confirm that CIPO's official position is that we do recommend hiring an I.P. professional. We understand that clients are trying to save money and they have to spend money not only on I.P. but on so many things, especially in the earlier stages. However, an I.P. professional could offer different alternative strategies that could save you time and money now or down the road. Some of these strategies would be cheaper, for example, in some cases you may even qualify for some financial assistance to get I.P. rights. I will give you 2 different examples to illustrate how difficult it is to do it yourself. One example is involving a Canadian patent application. The other one is about filing a trademark application. And I usually illustrate that with clients during one-on-one meetings or during presentation. So let me start with the patent example. Over 90% of applications files in Canada are done with an agent. In many cases, Canadian patent law requires that the client hires an agent. Okay, so for example, if your list of inventors is not the same as your list of applicants, or if the applicants or the inventors transferred their legal rights into the invention to someone else… In those cases, it would be mandatory to hire a patent agent, but we often talk to the other 10%. And so the way we start is we say that it's even difficult to understand all the rules. And to file a proper application, it's even difficult for patent agents, for lawyers and intellectual property lawyers and judges, and essentially to start with clients, I show them the 3 big rules and what is patentable. So you have to be the first in the world. The invention has to be useful. And then the invention cannot be obvious to someone in the field of invention. And it goes into more detail than that for those 3 big rules. But there are also a lot of rules about the format of documents, the procedure and the strict deadlines. And then to illustrate the complexity, I would bring the clients to eventually, not at first, but I would bring them to a 400 plus page detailed patent manual with over 30 chapters. It's called the CIPO's Manual of Patent Office Practice. Or we call it the MOPOP. In one chapter, for example, we go in more detail about the drawings, the rules of surrounding the drawings. In another chapter, we go on about the rules about the detailed description. The detailed description has to be filed with your application and in this particular chapter it's very eye opening for clients when I want to bring them even one more step into to show them that it's complex. And it's a section that deals with once you submit your application, what are the rules around what you can amend in your description without having to file a brand new application and get a later filing date. So it's very risky to not lawfully use an agent even at the first step of when preparing your application. And this MOPOP that's over 400 pages, I tell clients it's just a tip of the iceberg. All the Canadian patent jurisprudence and the court cases on the different legal patent rules are not all in this detailed manual. We did not even talk about international considerations yet and which would probably be its own podcast. Quickly moving to the trademark example. So I usually start with clients as to what is not trademarkable under a Canadian trademark law, either because it was determined not to be fair among competitors or in order to protect consumers. So all the rules that are there are either essentially to either protect competitors from each other or to protect consumers. Okay, so one of the big rule is the rule of confusion. And in a trademark guide somewhere in there we give an example of what we would consider that would be confusion. That would be that would confuse consumers and that would be denied. So let's say there was a company that was already selling frozen water products and their name was South Pole, like at the bottom of the planet, South Pole. And then another company came later on and wanted to sell ice cream. Not exactly the same product, but similar, and they wanted to call themselves North Pole. Well, we would deny the second one. Even though it's not exactly the same words, there's one word that's different… Even if it was not spelled exactly the same way… There may be confusion and that could be a big problem with your application or there could be a big problem beyond the application process. Okay, and so that rule of confusion and there are other rules, but the rule of confusion is do the trademarks look alike or sound alike when you say it out loud or when you pronounce it? Do they suggests similar ideas or are they with respect to also similar goods or services? So that's the high level. But then when I want to show them that there are many rules that would help determine whether there's confusion. I bring them to once again the detailed manual. This time it's not over 400 pages, but it's still over 60 pages long and there are 4 pages, 4 detailed pages on the concept of confusion alone. And again, this is only the tip of the iceberg. There's court cases and so forth. Why is it so complicated? Well, it's because of all the legal disputes that have occurred over the years between private parties and also it's there to protect consumers like I mentioned, and to protect competitors. And just to give you an idea of when I want to dig deeper and say all that. It must be rare. Well, it's not the majority of cases that there would be a dispute, but if we go back to the year 2020 to 2021 in the 12-month period. The Trademark Opposition Board received 462 oppositions. Mind you that that year the trademark branch received over 76,000 applications. But then there are also appeals before the different levels of courts, and these numbers do not, however, tell the whole story… Stories we hear from all those clients that call after facing legal challenges from competitors. We can't give them legal opinion at that point. We can provide some broad information, but at that point it gets even more, it's even more important to consult a trademark lawyer. So either you keep on with the dispute if that happens or you let go of your trademark and you have to rebrand. But rebranding can be expensive. And one last point I want to mention that is that applicants represented by an I.P. professional normally increased their likelihood of getting to trademark registration by successfully going over the 2 legal hurdles in the application process. This came out, for example, in a recent study published in 2021 in the Southern California Law Review. Okay, about trademarks and the odds of success with or without a lawyer. It would arguably also reduce the risk of getting into legal trouble post trademark registration. It's true that you cannot reduce the risk to 0% even with a professional, but you should generally reduce the risk. And that's been my experience in another career. I had as a tax lawyer when I was studying on represented taxpayers, similar studies and similar data showed that if you represent yourself, your odds of success are lower. It makes sense intuitively.

Lisa: And yeah it's also, I mean, our priority is to issue quality rights. So we don't want people to lose their rights once we've issued them. Thanks for sharing the statistics on oppositions. You deliver free educational services and do so both through presentations and individual meetings to someone who doesn't know about these services. Can you explain what the difference is?

André: I'll start by saying that in some of my elementary school report cards or some parent-teacher meetings when I was a kid, the teachers would say that I talked too much in class, so I guess I still do to  varying degrees, so I will keep it short this time just to show I can learn. So with presentations I get to talk to a whole group and I get to take advantage of the group dynamic, so it helps with the learning for everyone, so everyone can benefit from the participants asking their general questions. But with the one-on-one meetings, I get to go a bit deeper with the client situation in a confidential way. Because again, in a group setting we tell clients not to divulge any confidential information, but in a one-on-one meeting, or if it's the company… There's a few employees that are aware of the confidential information, that's not a problem. And then we can have subsequent one-on-one meetings and they're all free of charge. So we can continue the conversation and the relationship. And even if they have agents, we can still help, so we can still hopefully play the education part so they can save money as opposed to the lawyer doing it. And hopefully it also reduces the risk of miscommunication between the client and their lawyers, which hopefully then would reduce their legal risks and because of that, miscommunication.

Lisa: We're going to shift the topics somewhat now. I know that you're also a creator, so as an I.P. expert and a creator, I was wondering if you'd like to share how you have protected your own I.P.

André: Well, being a creator myself actually helped me in a lot of conversations with other creators. So for example, my piano compositions, the articles and chapters I have written that were public. Some were owned by me, some were owned by my employers, with editors also involved. I remain the author for all of it, however, but not necessarily the owner. If I take the piano compositions as an example, at the time, I was more in tax law, so even myself, I consulted a copyright lawyer. At least the initial conversation is not that expensive. It's good to have a good initial as to how to better protect it. And I also got the registration certificate for at least my first album and that's something that I can give as an example to clients that I did it for myself, and I didn't trust myself to give myself an opinion on copyright law at that time. And also, I've been creating different work in the past. It also helps me relate to our clients to some extent about their hopes, their dreams and concerns.

Lisa: Do you have a favourite tool in our I.P. toolbox that you would like to share or that you do often share with entrepreneurs?

André: Well, my personal favourite tool on our website as a whole, well, may be this podcast we're doing now. But I do personally like the different podcasts and videos where we hear different perspectives from internal and external stakeholders. We get to stretch our knowledge about I.P. a bit further. I also think that all of our different tools on our website can be helpful depending on what our clients are trying to achieve or how I use them to make certain points to clients. I have many examples of this in our different interactions with clients. And I've provided a few examples earlier when I talked about the patent and trademark example. What I also like about our website is that there's an attempt to keep information up to date and to come up with new and innovative ways to raise I.P. awareness, to educate, to raise red flags and to point to different opportunities. In other words, as an organization at the centre of innovation, we also try to innovate ourselves.

Lisa: Thank you. Very interesting to hear your thoughts, André. Do you have any final thoughts to share?

André: Well, since I have the microphone, I would make a few additional points that in my view are related to our discussions. The first one is about the balance between having to sometimes be scaring clients with all the risks. But at the same time, inspiring clients about all the opportunities and about outplaying competitors in the I.P. arena. We've seen examples again of both sides of this balance in our different podcasts, including during our discussion today. The second point I want to make is that the fact that CIPO and other stakeholders do try to provide some sort of access to justice. Through I.P., legal education and awareness and my interest in access to justice. That includes the middle class and small and medium businesses dates back to when I was in law school, which I first put in practice with tax laws. This helps explain at least partly why I'm so passionate about working at CIPO. Another big inspiration for me is to be able to witness. All the clients ingenuity, the passion and their courage, I feel I learn more from them than they learn from me. And I also am very grateful for putting their trust into all of us. So thank you to you all. Thank you to CIPO, and thank you, Lisa.

Lisa: Thank you, André. It's been really, really nice and the privilege to talk to you today. Thank you, André.

You've listened to Canadian I.P. Voices where we talk intellectual property. In this episode we met with André Gallant, a former tax lawyer who is now working at CIPO as an I.P. advisor where he meets with Canadian creators and inventors to explain the importance of protecting their intellectual property. Some of the challenges André sees in his job relate to the perceptions of I.P. and how André and his colleagues often need to go to greater depths of the criteria, procedures and laws around I.P. to bust some of the myths around I.P. and explain to their clients why protecting I.P. is a serious matter that often requires expertise and skill of a qualified I.P. professional like a patent or a trademark agent. If you want to meet with an I.P. advisor from CIPO, visit Canada.ca/ip-advisors to contact the I.P. advisor near you.