What Does the Canadian Intellectual Property Office Do?
IP is an umbrella term that includes patents, trademarks, copyright, industrial designs, plant breeder’s rights and integrated topographical circuits.
Prosecuting IP applications and related responsibilities
CIPO’s primary mandate is to process and prosecute IP applications in a timely and efficient manner to promote greater certainty in the marketplace. Under this mandate, some of the services rendered by CIPO include the granting of rights for various types of IP such as patents, trademarks, industrial designs and integrated circuit topographies; providing administrative services for patent and trademark agents; and maintaining online patents, trademarks and copyright databases containing information on patents and patent applications, registered trademarks and trademark applications, copyright registrations, respectively.
The processing of IP applications and the grant of IP rights are governed by federal legislation, regulations, practices and guidelines of CIPO. The relevant rules are found in, for patents, the Patent Act, the Patent Rules, the Manual of Patent Office Practice (MOPOP) which is CIPO’s interpretation of the Patent Act, and patent practice notices; for trademarks, the Trademarks Act, the Trademark Regulations, Olympic and Paralympic Marks Act and the Olympic and Paralympic Marks Regulations, the Trademark Examination Manual (TEM) and trademarks practice notices; for copyright, the Copyright Act and the Copyright Regulations; for industrial designs, the Industrial Design Act and the Industrial Design Regulations; and for integrated circuit topographies, the Integrated Circuit Topography Act and the Integrated Circuit Topography Regulations.
A patent is granted for inventions, which may be a product (e.g., a bottle), a composition (e.g., laundry detergent formula), a machine (e.g., for making bottles), a process (e.g., method for making bottles), or an improvement on any of the aforementioned. Patent holders have the exclusive right to exclude others from making, constructing, using and selling the patented invention. The Patent Branch of the CIPO office processes patent applications, conducts examinations, grants patent rights, and refuses patent applications. If a patent application is refused, applicants may appeal the refusal to the Commissioner of Patents, who is part of the Patent Appeal Board, an administrative body within CIPO.
A trademark protects words or a combination of words, sounds or designs used to distinguish the goods and/or services of one party from another party in the marketplace. The Trademark and Industrial Design Branch is responsible for processing applications, conducting examinations, registering trademarks, and refusing trademark applications. Applicants whose trademark applications are refused may appeal the decision to the Federal Court of Canada. For applications that have been approved, the Trademarks and Industrial Design Branch will advertise the application in the Trademarks Journal. If an opposition is filed during the advertisement stage, the application will be passed on to the Trademarks Opposition Board, an administrative body within CIPO, which will adjudicate on the merits of the filed opposition. However, if no opposition is filed within two months or the opposition filed is rejected, then the applied for mark will be registered. Trademark owners will be required to maintain the trademark every ten years by paying the requisite renewal fee.
Copyright provides protection for literary, dramatic, musical and artistic works. CIPO administers the Copyright Act and Copyright Regulations. Generally, subject to the requirements for copyright, copyright subsists in a work upon creation without the need for registration. However, copyright registration may be beneficial to prove ownership. Other CIPO services relating to copyright include processing copyright registrations, recording assignments and licences.
Industrial designs protect the original visual features of products, but not the functionality of the products. The relevant legislation administered by CIPO includes the Industrial Design Act and the Industrial Design Regulations. CIPO processes industrial design applications, prosecutes applications, grants industrial design rights and refuses industrial design applications. If an industrial design application is considered for refusal, the applicant may appeal the decision to the Patent Appeal Board. If the Patent Appeal Board issues an ultimate refusal, an applicant may appeal the decision to the Federal Court.
Integrated circuit topographies protect three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs. The relevant acts administered by CIPO include the Integrated Circuit Topography Act and the Integrated Circuit Topography Regulations. CIPO processes integrated circuit topography applications and records assignments as well as licences.
Gathering the perspective of various stakeholders
One of CIPO’s roles is to consult stakeholders through various CIPO consultations and discussions. CIPO consultations help CIPO in gathering feedback and further information relating to changes in IP legislation, regulations, practices and operational procedures. Some examples of consultations include consultations on the proposal for increasing fees and implementing a governing framework for IP agents.
Providing IP education for the general public and businesses
CIPO also provides Canadians with access to informative IP educational resources. Through these educational resources, CIPO aims to increase general awareness of what IP is; help businesses and individuals learn more about IP and how to effectively use and leverage IP; foster and support innovation among the general public and businesses.
The education resources cover various IP topics including an introduction to IP, why IP matters, how to commercialize IP, how to protect your IP, different IP strategies and management of IP. In addition, CIPO offers other resources such as IP Academy which has learning modules for business owners to understand the value of IP; the IP Hub which is a collection of helpful resources relating to Canadian and international IP rights; the IP Toolbox which offers handy IP guides and roadmaps; the CIPO Events page which lists CIPO’s webinar offerings; information on government encouraged innovations such as clean technology; the CIPO Blog which features IP tips and insights into IP trends; and the CIPO statistics page which track the number of IP applications for each year since 2018.
The following is a brief introduction to several IP resources and programs offered by CIPO that business owners and innovators may find instructive.
An introduction to Intellectual Property
This guide is a good primer on IP for business owners wanting a high-level understanding of IP. The guide explains the basics of intellectual property drawing from commonly encountered brands, inventions, works and products.
Build an intellectual property strategy
For business owners who are thinking of leveraging their IP to accelerate business growth, it is essential to implement an IP strategy. This resource provides a list of helpful questions to consider when businesses are trying to craft an effective IP plan. In addition, businesses could also take the Plan your IP strategy quiz, which will generate a custom IP guide based on the answers given.
Business owners who wish to learn more about profiting from their IP may consult this guide, which features a collection of valuable resources on licensing, franchising, technology transfers and non-disclosure agreements (NDA).
Prove who owns new ideas and creations
Ownership of IP can be a complex issue for businesses. This resource explains the definition of an inventor, an author and a designer and best practices to ensure IP ownership is well defined.
Protect IP Outside of Canada
This resource is a practical guide which provides a list of critical considerations for businesses looking to expand abroad and planning to seek global IP protection.
IP data and research at CIPO
Keeping abreast of IP trends and statistics can help businesses identify exciting opportunities and keep track of competitors and new developments in industries key to your business.
Establishing and Maintaining ties with other countries through IP treaties
CIPO plays a central role in Canada’s innovation ecosystem and strengthens the local system by establishing and maintaining ties with other parties from around the world. Through international IP treaties, CIPO provides Canadian businesses with increased opportunities to protect and secure their inventions abroad, become more competitive globally, and promote Canada’s IP interests. Consequently, businesses are able to expand their business in international markets as well as attract more significant investment opportunities. Canada has signed on, implemented and ratified several international treaties, including the TRIPS Agreement and the Paris Convention for intellectual property; the Patent Law Treaty, the Budapest Treaty, the Patent Cooperation Treaty, the Strasbourg Agreement and the UPOV Convention for patents; the Hague Agreement for industrial designs; the Madrid Protocol, the Singapore Treaty and the Nice Agreement for trademarks; the WIPO Convention for trademarks and copyright; the Berne Convention, the Rome Convention and the Marrakesh VIP Treaty for copyright.
CIPO plays a central role in Canada’s IP landscape. CIPO wears many hats–from prosecuting IP applications to gathering the perspective of stakeholders to inform IP policy, to providing IP education for the general public and businesses and to establishing and maintaining ties with foreign counterparts through IP treaties. Business owners and innovators will benefit from CIPO’s expansive database of IP resources.
If you would like our assistance with developing an IP strategy or securing IP rights, contact us now for a complimentary and confidential initial telephone appointment.