IP Intensive Program: Taking a Look Behind the Wizard’s Curtain – A Semester at the Canadian Intellectual Property Office

Off in the far-away land of our nation’s capital (actually, across the river in Gatineau, Quebec, to be specific) exists a mystical place. A building where applications are examined, rights are granted, and hearings are heard. I spent the better part of a semester at this office, and the experience I had there will without a doubt assist me in becoming a better and more compassionate lawyer in the future.

When applying for the IP Intensive program, I was enamoured with the possibilities that the semester would bring. Would I be placed at a pharmaceutical company? A commercialization office? While the Canadian Intellectual Property Office (CIPO) may not seem like the flashiest of placements, I am convinced that this was likely one of the most varied and beneficial experiences that a student could have had as a part of the IP Intensive program.

CIPO is a hotbed of intellectual property action and is able to cater to the most eclectic of tastes. Have a thing for patents? CIPO has you covered. Trade-mark examination more your cup of tea? CIPO’s got that too. CIPO’s examiners in its various departments are the individuals responsible for dealing with applications for protection; connecting with direct filers or the agent community in order to grant rights. Hearing officers in the Trade-mark Opposition Board (TMOB) are tasked with sorting out disputes that arise from oppositions or non-use proceedings while those from the Patent Appeal Board (PAB) conduct ex partes administrative functions to determine whether or not an application should be granted patent rights. The Policy, Planning, International and Research Office (PIRO) conducts research into IP policy and best practices in other jurisdictions. But as the point of contact between the public and Canada’s IP regime, CIPO also acts as a centre of information and assistance. In this capacity, they take calls from inquisitive parties, work on improving their social media outlets, and conduct outreach with those that they feel could benefit from an introduction to what the office does. CIPO really does it all and it’s quite amazing to have been able to experience it through the IP Intensive program.

Darlene Carreau, the Chair of the Trade-marks Opposition Board, was my main point of contact at the Office and was an absolute pleasure to work with. Not only was she a great resource when I had a question to ask, but she was also the one responsible for planning my whirlwind tour through the other departments in the office. And what a tour it was! Due to the differences between each department, the work assigned to me each week was varied and always kept me on my toes. I wrote draft s. 45 decisions for the TMOB, created a policy report for PIRO on interfirm research and development collaborations, looked at trade-mark “use” in other jurisdictions and drafted trade-mark refusals for the Trade-mark Branch (TMB), tried to define “the Register of Industrial Designs” for the Copyright and Industrial Design Branch (CID), participated in a shortened version of patent examiner training and looked at “utility model” protection around the world for the Patent Branch, and finally spent some time doing case briefs for the Patent Appeal Board.

While the work was definitely interesting, I think the real meat of my experience at CIPO lay in my ability to see the inner workings of the office, pick the brains of those who have been working on the ground floor of IP for years, and attending a variety of the meetings held in the Office. Seeing the way that an examiner approaches a file was an eye-opening experience, and being able to ask the examiners about their thought process and cases they worked on will be a perspective that most lawyers will never gain during their careers.

During my time in Ottawa I was also fortunate enough to attend a meeting for the Standing Committee on Industry, Science and Technology (INDU) where witnesses from a number of interested groups provided testimony and answered questions regarding Bill C-8, the Combating Counterfeits Act. I was also able to attend a hearing at the Supreme Court of Canada – another event that not all lawyers have the opportunity to experience.

If you are an Osgoode student interested in intellectual property, I cannot stress enough the value of the work experience and personal contacts that I have gained through spending a work term at the Canadian Intellectual Property Office. My time at the office will no doubt be a boon to me as I enter my legal career and has given me a taste for what it means to work in the intellectual property field. And who knows? Maybe one day I’ll return to that mystical place.

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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