Canadian Intellectual Property Office Assumes Enhanced International Status and Influence

Effective July 26, 2004, the Canadian Intellectual Property Office (CIPO) will be operating as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) administered by the World Intellectual Property Organization (WIPO). Canada is one of only 11 WIPO member states to acquire this special status.

The ISA/IPEA recognition reflects the expertise CIPO provides in the realm of intellectual property and further strengthens its commitment toward improving Canada's innovation performance.

"This is a significant step in moving Canada further into the vanguard of nations who utilize intellectual property as a vehicle for promoting invention, creativity and innovation in the pursuit of socioeconomic well-being," said David Tobin, Commissioner of Patents, Registrar of Trade-marks and Chief Executive Officer of CIPO. "This development will affirm Canada's position as a leading player within WIPO and establish a basis from which it will become even more prominent on the international stage."

The status was approved by members of the PCT Union on September 27, 2002, at the annual meeting in Geneva of member states of WIPO. Since that time, Canada has focused its resources to implement the administrative infrastructure for the new status and commencement of ISA/IPEA services.

In order to better support ISA/IPEA services, CIPO developed an automated processing system, which will increase efficiency through the integration of all international activities relating to the PCT. Included in the implementation plan is the training of all patent examiners and affected operations' employees, based on WIPO's recently revised guidelines.

ISA/IPEA status reinforces Canada's commitment to continuous improvement in the range and quality of intellectual property services it delivers to clients.

The acceptance and accessibility of CIPO as an ISA/IPEA recognizes Canada's qualifications for this privilege. This vote of confidence requires a commitment on behalf of CIPO to continue to demonstrate that it meets and exceeds the demanding criteria to function as an ISA/IPEA under the PCT.

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For more information, please contact:

Barney de Schneider
Canadian Intellectual Property Office
(819) 997-1947

BACKGROUNDER

Impact of International Searching Authority and International Preliminary Examining Authority Status

The global, knowledge-based economy of the 21st century depends on innovation and the investments that countries make in promoting the creativity and talents of their people. In recent years, intellectual property (IP), a fundamental pillar of the knowledge economy, has grown substantially in both importance and awareness. It is a fundamental lever of public policy, plays a pivotal role in stimulating economic growth and enhances social welfare on a global scale.

The timely granting of intellectual property rights supports and encourages innovation and the creative spirit. The Canadian Intellectual Property Office (CIPO) is responsible for the administration of various intellectual property statutes governing patents, trade-marks, copyrights, industrial designs and integrated circuit topographies in Canada.

Intellectual property offices around the world are facing increased demand for products and services. Patent applications have risen at unprecedented rates worldwide, leading to growing backlogs and workloads for national authorities, including those in Canada.

These developments have led Canada to examine its role in the global IP community - and the service levels provided to Canadian applicants. As a result of this exercise, CIPO has become increasingly committed to building an internal functional capacity to meet the highest standards of excellence and service. Canada has also assumed international leadership and cooperation roles that reflect its rising prominence and status among global IP offices.

The rapid development of the patent system has been mirrored by the extraordinary success of the Patent Cooperation Treaty (PCT). The PCT, administered by the World Intellectual Property Organization (WIPO), is designed to facilitate the acquisition of patent protection in multiple countries around the world through the filing of a single international application.

Such an application has the same effect as a national patent application filed in each of the designated states, however, the granting of a patent remains the responsibility of the national offices. Benefits of the PCT are only available to nationals of its 123 contracting states. These benefits have been available to Canadians since 1990.

Canadian patent applicants, like most worldwide, have embraced the PCT system. Since the ratification of the PCT, CIPO has seen international PCT filings by Canadians rise at a rapid pace - 465 applications in 1990, 732 in 1995, 1590 in 2000 and over 2100 during 2003. To meet the additional workload, CIPO has embarked on an aggressive campaign to hire more examiners. CIPO had 100 examiners in 2000, currently employs 267 and is projecting a complement of some 350 by 2007.

Under the PCT, international applications are subjected to a search and written opinion by one of 11 International Searching Authority (ISAs) and, at the applicant's option, a preliminary examination by an International Preliminary Examining Authority (IPEA). Patent applicants can then seek to obtain patents in a large number of countries whose national offices may benefit from these search and examination reports. The European Patent Office (EPO) has conducted both ISA and IPEA services for Canadian PCT applicants until July 26, 2004.

In addition to Canada, the other 10 ISAs are Australia, Austria, China, Japan, Republic of Korea, Russian Federation, Spain, Sweden, United States and the EPO. Finland is expected to make this elite group an even dozen at the end of 2004.

The ISA produces a report containing citations of published documents relevant to the patentability of the invention claimed in the international application as well as a written opinion giving the applicant a primary indication of the defects the examiner feels exist in the application.

The applicant also has the option of requesting an international preliminary examination. In addition to the international search, the international preliminary report on patentability, which follows a similar format to the written opinion, provides a preliminary, non-binding opinion on the patentability of the claimed invention.

CIPO meets the PCT requirements to function as an ISA/IPEA under the PCT on the basis of the following attributes:

• a highly qualified, competent and growing corps of patent examiners who possess bilingual or trilingual language capabilities;
• modern and efficient automated patent processing system, supported by a forward-thinking and comprehensive information technology infrastructure;
• a vast collection of patent documents and online resources, which permit Canada to meet minimum documentation requirements; and
• an organizational commitment to the pursuit of excellence in client service delivery, and a quality management system aimed at continuous improvement of products and services.