I admit I was a little anxious about spending ten weeks in Ottawa Hull. The experience of staying in Hull is a story in its own right, so the first day (before starting at CIPO) had me really questioning my life choices. But it didn’t take long to realize that CIPO is a great place to be.
In my ten weeks there as part of Osgoode’s Intellectual Property Law & Technology Intensive Program (IP Intensive), I rotated through seven different branches: Business Services; Copyright and Industrial Design; the Policy, International and Research Office (PIRO); Trade Marks; the Trade Mark Opposition Board (TMOB); Patents; and the Patent Appeal Board. Each rotation seemed to me to be the new best thing. With so many choices and a word limit it’s difficult to decide what to talk about. So I will just mention two rotations
I spent two weeks in PIRO reviewing IP-related issues that may affect technology transfer from academic institutions to industry to identify ways in which CIPO might help to reduce barriers to technology transfer. I took advantage of the public submissions the Standing Committee on Industry, Science and Technology sought for their study on technology transfer from academic institutions to industry. This project was of particular interest to me because of my background in scientific research – there are a number of factors that are crucial to bringing an innovation to the public that I was never aware of as an academic researcher.
As I was undertaking this review I had the opportunity to put myself in the shoes of my former self and ask what it would have taken for me to consider IP protection as a priority for the public interest. As a researcher I was always interested in how things work (or more accurately how things break, with an eye to getting them working again). In my mind it worked like this: make the medical breakthrough and a treatment will follow because obviously there is a market for new or better treatments. For researchers in medical-related fields who are motivated by factors other than personal gain it doesn’t seem obvious that IP protection would be more likely to result in a benefit to the public. Yet without the market exclusivity provided by patent protection it is unlikely that potentially life-saving technologies will ever undergo the clinical trials necessary to bring the technology to market.
Knowing when and why IP protection needs to be considered is just the first of many barriers to getting technologies out of academic institutions and into the marketplace. Different issues arise at other points in the technology transfer process. This experience really opened my eyes to all of the barriers that exist between an idea and market success.
During my time in the TMOB I had the opportunity to draft a decision, grappling with such legal issues as the distinction between a biscuit and a cookie. I drew Venn diagrams for myself – what kinds of biscuits are also cookies and what kinds of cookies are also biscuits? And where do crackers fit in? I reviewed the evidence - what evidence was provided for the sale of either cookies or biscuits? In the end what mattered in this case was whether the term had been used in the invoices and on the product packaging.
I also had the opportunity to sit in both an opposition hearing and a section 45 hearing. In the opposition hearing the issue was whether the proposed mark was confusing with an existing mark, since the products were related enough that a consumer might have believed the products to have come from the same source. In the section 45 hearing the issue was whether the products sold by the owner of the mark could be considered the type of product the mark was registered for. One of the analogies given in the hearing was whether a mark registered for use with “freezers” could be maintained where the products sold were combination refrigerator/freezers.
I had many other projects that I worked on in my time at CIPO that I don’t have space to talk about. In the end I am incredibly grateful for the opportunity to have sampled so many different areas of intellectual property policy and practice – just like a kid in a candy store, I’m happy to have tried everything!
Andrea Uetrecht is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.