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      DATE: June 27, 1997




First Session

Geneva, July 14 to 18, 1997


Memorandum of Canada

1. The Challenge

CIPO welcomes the opportunity to provide comments and ideas in response to the invitation issued by the WIPO General Assembly in document WO/GA/XX/3 of March 21, 1997. CIPO considers that the time is opportune to address the many issues of intellectual property automation, particularly in view of the rapid changes taking place in the information technology arena. Systems that could not have been contemplated even as little as two or three years ago now seem feasible, thanks to advances in electronic communications, hardware and software, and to the enormous growth in the use of the Internet. Intellectual property offices are being challenged to take advantage of the new possibilities and to effect new ways of working interdependently. It is in this spirit that CIPO is presenting its position.

2. The Future of Information Technology in the WIPO

CIPO sees the WIPO as becoming the focal point of international interchange and cooperation with respect to all information technology (IT) related matters involving intellectual property. This role might include, but not be limited to, the following:

With the WIPO as the focal point of international IT cooperation, CIPO considers that many benefits would flow from an arrangement of the kind proposed. First and foremost, the business and use of intellectual property would be greatly facilitated, while at the same time, the origins of IP initiatives and responses thereto would tend to take on less importance. Second, CIPO would expect lower costs to result for IP offices through the collapse of time and distance involved with IP transactions. These lower costs, in turn, could eventually be reflected in lower prices to IP clientele. Third, the broader and deeper access to international IP databases made possible by such an arrangement would add value to searches undertaken by IP offices, government agencies and (assuming security of access) the private sector. Fourth, it could provide the linkages to supply assistance by developed IP offices with examinations carried out at a distance and could also be instrumental in fostering lessons learned from examinations conducted by experts from other developed IP offices. This leads to the fifth and final point of benefits, viz., that of the potential on the part of IP offices to share directly in expertise of various kinds. Thus, CIPO sees real benefits to be derived for everyone including the offices of developing countries -- a win-win situation for the intellectual property community.

While the many benefits from such an arrangement seem quite capable of being harvested and, in CIPO's view, outweigh possible detractions, it would nevertheless be both useful and necessary to consider the implications from at least three other perspectives: language of use, applicants' viewpoints and legal considerations. As regards the first, is there the capacity for unlimited language use, or are there practical limitations that need to be addressed? As regards the second, can an arrangement on the scale envisaged be put in place without the full involvement of IP applicants? If not, how would such involvement be brought about and managed? Thirdly, is there a requirement on the part of offices to determine if their national legislation permits participation of the type and extent envisaged?

3. Organizational Arrangements

It is perhaps too early to be specific about the organizational arrangements required to bring the proposal to fruition, but CIPO feels that it is possible and appropriate to establish guidelines in this regard.

CIPO concurs that a high-level steering committee should be established, reporting directly to the WIPO General Assembly. Its primary purposes should be to set the agenda for what is required to be accomplished, particularly by the IT operations of the WIPO, and to provide oversight to the ongoing program. It may be appropriate for the steering committee to ask the PCIPI to undertake work on its behalf.

As regards the IT operations of the WIPO and the role of the International Bureau, it is likely that some reorganization will be required to undertake the proposed program. While continuing to be involved in standards setting, codification and other important tasks, CIPO foresees a new operational role that may well require a different type of structure. The additional functions that may need to be embraced could include the provision and maintenance of a wide area network which supports database access and electronic commerce applications. Should the USPTO proposal or a derivative thereof find acceptance, CIPO considers that the steering committee needs to undertake, as a first order of business, the determination of the new functions of the International Bureau and the IT operations of the WIPO, followed by a determination of the reorganization required to carry out those functions. In CIPO`s experience, there are efficiencies to be gained from the judicious application of IT that will take care of increased volumes without having to resort to proportional increases in the level of staff.

4. What Canada can contribute

Over the past decade, CIPO has engineered and implemented two major IT systems: one for patent operations on a mainframe; and one for trade marks on a client-server system. CIPO has come to rely on these systems for providing day-to-day operational support and they are being enhanced regularly to provide further capabilities in wide area networking and interaction with clients. This has given CIPO a degree of internal expertise in several areas, including: needs analysis, tender preparation and evaluation, contracting, contract management, and IT organizational design. Most significantly, CIPO also has several end-users (staff in non-IT occupations) who know how to implement and use IP-related IT systems. As well, proven Canadian private sector IT expertise is also available to undertake systems design, development, testing and implementation.

If the Steering Committee decided that it wished to establish a number of pilot sites for proof of concept or for other determinations, CIPO would give serious consideration to any request to participate in such pilot projects.

5. Summary

CIPO welcomes and supports the thrust of the United States' proposal. It is a timely challenge to all intellectual property offices. It could be the harbinger of a new era of global IP cooperation. It could also herald the transformation of the WIPO to a focal point for all ITrelated matters, with many benefits flowing to the IP community at large. CIPO believes that it can contribute to this development and looks forward to doing so with anticipation.

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