8/9/2019 IP Law for emerging techs in Canada

1/2

IP in Canada

Government stand on intellectual property: Lots of talk, little action

from CBC.ca - http://www.cbc.ca/news/background/tech/hightech/ip.html

By Scott Valentine

During its Oct. 16, 2007, throne speech, Stephen Harper's Conservative government said it "will support Canadian researchers and innovators in developing new ideas and bringing them to the marketplace. Our government will improve the protection of cultural and intellectual property rights in Canada."

That kind of talk is exciting, because it hints at a plan for Canada's under-supported innovations community. But there are a number of hurdles to clear beforethe Harper government can deliver on its promise to put Canadian innovators on even footing with their contemporaries in the United States and elsewhere.

"It would be a lot simpler if we could look out at a uniform set of policies," s

ays Ilse Treurnicht, CEO of Toronto's MaRS Discovery District, a non-profit corporation that works to accelerate the commercialization of IP by networking innovators with venture capitalists, scientists and business people.

"Universities and government research facilities all have varying policies regarding IP," she says. "So whenever an innovator at one of these facilities has something worth commercializing it's 'let's make a deal.' "

University and government IP policies vary wildly. In some cases, the innovatormay have almost no ownership rights, and therefore little incentive to try and commercialize their work.

"That's really part of the problem in Canada," says Marie Lussier, president of

the Canadian Association of Business Incubators. "Every university here does things differently. The policies are so varied even different federal labs have varying ways of looking at IP."

In the United States, the 1980s Bayh-Dole Act outlines a clear set of rules determining IP ownership early in the process of federally funded innovation. But inCanada, there is no set method for transferring technological research and knowledge from public institutions. In other words, there are few rules governing and protecting the process of getting immature intellectual property out of the lab and safely into a commercial environment that will nurture it and turn it intoa marketable product.

That's less a policy gap than it is a resourcing issue, according to Treurnicht."The idea with transfer is to capture and manage IP in a way that's accessibleto partners."

She adds that the success or failure of IP commercialization is often tied to the quality of the transfer experience. "It depends on the quality of the individual transfer office, the experience of the people there, the commitment to commercialization," she says. "If an individual IP owner has to take that all on, it'sa good way to kill the whole process of commercialization."

Another glaring hole in Canada's approach to IP ownership is its lack of supportfor private innovators, some observers say.

In the United States, the Bayh-Dole Act provides an incentive to private business to contribute to and develop IP. The most common example is how the legislation encourages and enables small and medium-sized enterprise (SMEs) to register an

8/9/2019 IP Law for emerging techs in Canada

2/2

d develop new IP.

"There's a lot of grey area around what's really IP in Canada," says Dino Bozzo,president of Konverge, a Toronto-based SME that builds custom business solutions for its clients. "We've been down the IP and patent road (as an SME). It's a lot of lawyers, a lot of time and a lot of money."

And since Konverge is a commercial entity, the company doesn't qualify for any of the transfer, investment or incubation services available to university or government researchers in Canada.

"SMEs make up about 95 per cent of the businesses in Canada, but they receive less than 5 per cent of the tech incubation money that's available," Lussier says.

As a result, private sector innovators like Konverge are at a direct disadvantage to similar companies in the United States that start off with clear ownershipincentives under Bayh-Dole.

"The idea of incubating IP is barely 25 years old here; in the U.S., it's closer

to 60," Lussier says. "For whatever reason, they seem to have grasped the importance of SMEs down south better than we have."

While reaction among Canadian technology and IP watchers to the Conservative throne speech has been cautiously optimistic, burning questions remain about the government's ability to deliver on its promise to build and bolster the innovations business in the country.

"Get a formal IP agreement, and you'll have more success," Lussier says. "The problem is that there is nobody at the federal level that's playing the role of champion."

Weeks after the Conservative throne speech, government officials contacted by CB

Cnews.ca were unable to shed any light on the Harper government's plan to clarify the muddied landscape of Canadian IP ownership. Staff at the Canadian Intellectual Property Office, which registers all IP and patents in Canada, said: "We have no jurisdiction over that."

And a spokesperson for Industry Minister Jim Prentice said Industry Canada has "no role" in revising the intellectual property rights of Canadian innovators.

Which raises the question: If no one at the federal level is responsible for driving the Harper government's proposed renaissance of Canadian innovation, exactly how is anything going to change?

Treurnicht says Canadian innovators can't wait for the government to get a comprehensive framework together.

"This is a complicated and painful process," she says. "Clear and transparent IPownership from Day 1 is desirable. We need experienced negotiators at the table and a way to distribute proceeds that encourages entrepreneurial behaviour.

"As a country, it's critical that we get better at this process."