IP Intensive: A Semester at the Canadian Intellectual Property Office

I came to law school with a pretty definitive idea that I want to explore a career within Intellectual Property, but I was not quite sure what career might be ideal for me. While I was fortunate enough to get some exposure into what a career in IP looks at a private firm; I had no idea what a career elsewhere might entail. Enter an opportunity to try six different career paths in ten weeks.

A placement at the Canadian Intellectual Property Office, as part of Osgoode’s IP Intensive program,  is a whirlwind tour of placements within six different departments of the Office. During my rotation I was placed with the Trademarks Opposition Board (TMOB), Trademarks Board (TMB), Copyright and Industrial Design (CID), Policy, Planning, International and Research Office (PIRO), Patent Practice Group (PPG) and Patent Appeal Board (PAB).

In the first week, I was appointed to a rotation in the section 45 branch of the TMOB, where a senior Hearing Officer walked me through the process of expungement proceedings and provided me an overview of his role and the department in general. Hearing officers in this department of the TMOB are the judicators of determining if a trademark has been “used” within Canada as per the requirements of s. 45. At this department I was tasked with writing draft-decisions for the hearing officer. Next up I was placed in the TMB where I received tutelage on examining trademark applications. I was also given a cursory training on section 12, section 14, section 16 and section 9 of the Trade-marks Act. I was assigned a mentor in the form of a senior trade-mark examiner who helped me though a couple of the complicated office action files. I was later assigned files where office actions and refusal letters had to be drafted. The complicated office action were the most interesting as it dealt with issues such as, (i) whether a maple leaf design is indicative of originating from Canada under section 12(1)(b) of the Act, (ii) whether a design mark whose primary composition is of a word mark, which appears to be primarily merely a surname, infringe section 12(1)(a) of the Act and (iii) sufficiency of evidence submitted under section 14 as compared to section 12(2). During my rotation in PPG, I shadowed a patent examiner for two days and receive training on patent examination and office actions. I was allowed to shadow department heads from the Patent Practice Group and Patent Administrative Policy group and peer into the daily operations of this niche branches within the government that do very interesting and challenging work. Lastly, during my rotation with the Patent Appeal Board, I was tasked with reviewing decisions issued by the Board from May 2007 to December 2015 and identify the issues, length of the procedure, result of the decision, and certain milestones in the procedure (i.e date of hearing, date of acknowledgement, date of post hearing communication, etc.) Through this exercise I was exposed to the day to day practices of the Board and was able to discuss interesting decisions which I came across with the members of the Board.

During the policy rotations, I had a chance to discuss the narratives guiding our Intellectual Property regimes with professionals who are at the forefront of implementing policies within Canada. My rotation through CID involved exploring the challenges which may be associated with implementing a two-tiered industrial design registration system within Canada. My rotation though PIRO involved writing a policy paper on the challenges and frictions in patenting nanotechnology inventions.

Another benefit of being in Ottawa is that you can attend hearings at the Supreme Court of Canada. I was fortunate to attend Astrazeneca v Apotex in the company of the Patent Practice Group and discuss the relevant issues and receive insight from the perspective of the examiners.

Another under appreciated feature of this placement is the network of connections that you will make. Darlene Carreau, the Director General – Information/Business Services, was my supervisor at the Office and is a thoroughly genuine and supportive mentor.  Even other supervisors through the rotations, understand the sacrifice a student is making to be away from Toronto and really invest their time into making the placement experience a meaningful one.

 

Gurk Singh 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

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