MOMENTUM
Profiles of Our MAPLE Community Welcome to our 4th anniversary issue of MOMENTUM. It continues to be a wonderful privilege to bring our readers the insights and perspectives of members and partners on their markets and our amazing Canada-U.S. relationship each month.
As we shared in our January issue, Diversity, Equity and Inclusion is a narrative we are addressing in the context of our cross-border investment, trade and innovation mission. This month, we hear from the Province of Ontario whose Trade and Invest Offices in California and New York jointly share a window on meaningful public and private sector diversity initiatives being pursued throughout Canada's most populous province.
We also get a fascinating window on the patent application process from Dan Altman and Vlad Teplitskiy, partners at the intellectual property law firm, Knobbe Martens, in Orange County, California. Did you know that it is possible to control how fast you obtain a patent? Both Canada and the U.S. provide multiple programs that allow patent applicants to speed up or slow down the speed of obtaining a patent. While you might think that all patent applicants would like to obtain a patent as fast as possible, there are many reasons one might wish to slow down this process. This article explains how to control the speed at which patents are obtained to achieve strategic aims.
In the coming month, our communities in Southern California, New York and British Columbia will be gathering online for some outstanding presentations from our member organizations. Topics will include IPO and SPAC readiness from finance and IP perspectives, cross-border logistics, raising public venture capital in Canada, and Canadian investment in LA's historic fashion district. We hope you will be able to join us.
Until then, enjoy MOMENTUM #48. Here's to the next 48!
MAPLE Business Council®
Stephen Armstrong and Robert Kelle - Co-Founders. | | Promoting Collaborative Communities in
Ontario, Canada and Abroad | | Authors: Ontario Trade and Investment Offices in San Francisco and New York
The Province of Ontario, Canada, is home to a thriving innovation ecosystem where we pride ourselves in the belief that we, as a province, become stronger and more dynamic when we incorporate diversity into our way of life. Ethnicity, language, and gender combine to paint a vibrant picture of Ontario's values – a place where everyone is welcome. In Ontario, more than 200 languages are spoken on a daily basis, and people from over 150 countries have been welcomed to and now call the province home. In our provincial capital city of Toronto, more than 50 per cent of residents are foreign-born.
The events of the past year, from the marches for racial equality to the COVID-19 pandemic and the shift to remote work, have underscored the importance of coming together to work on our collective challenges and opportunities. The journey is long, and never finished, but we will only reach our full potential when we become a truly diverse, accessible, and inclusive society.
We are proud to share how Ontarians – government, businesses, and ecosystem partners – back home and abroad are contributing to this important work. While not exhaustive, and always ongoing, here are just a few of the ways Ontario is taking steps towards promoting Diversity, Equity and Inclusion (DEI), thereby creating a positive environment in which everyone can thrive.
Government
Ontario is a trade and investment dependent economy whose economic growth has been grounded in an open, pluralist, and welcoming society. The province benefits from personal, institutional, and business relationships that connect us to communities and economies around the world. What happens internationally affects Ontario, and as a result, inclusive economic empowerment has long been a priority.
This engagement includes the promotion of commercial linkages with our longstanding trade partners, like the United States. It's one of the reasons Ontario has five offices across the U.S., in New York, San Francisco, Chicago, Dallas, and Washington, D.C. – free and confidential, Ontario's offices in-market are here to promote the benefits of doing business with the province, encourage new investments and job creation, and connect companies to support business expansion deals.
In addition to its international footprint however, Ontario is also focused on working towards a more inclusive environment domestically that presents new and greater opportunities for collaboration and innovation.
For example, in fall 2020, Ontario launched the Small Business Strategy, a long-term framework that helps small businesses and entrepreneurs to rebuild, reinvest, and grow. The strategy will support the next generation of entrepreneurs and diverse business leaders to build a stronger, more inclusive economy with greater representation from women, Indigenous peoples, people from racialized communities, and people with disabilities.
Ontario also appointed the province's first Advocate for Community Opportunities in 2019, and introduced the Premier's Council on Equality of Opportunity (PCEO). The PCEO champions community voices; provides advice to government on how to help young people succeed in a changing economy; and proposes actions to build a diverse, skilled, and future-oriented workforce.
These newer initiatives amplify longstanding programs and policies that can support DEI goals. The Ontario Immigrant Nominee Program (OINP), for example, is the province's economic immigration program which supports employers who want to bring highly skilled immigrants to the province quickly and easily, and thereby grow an even more diverse workforce.
Business Community
True progress requires the whole community coming together to find solutions. That's always been the Ontario way. Members of the business community continue to create, advance, and improve on a business culture that promotes DEI.
Ontario is home to the second largest tech cluster in North America, after California, and homegrown Shopify is an example of the innovation and success found in the province. Headquartered in Ottawa, Shopify is a leading e-commerce platform designed for businesses of all sizes. Shopify's platform is used in 175 countries around the world, and the company is committed to DEI. In a CNBC Mad Money interview last summer, Shopify COO Harley Finkelstein noted that "the future of commerce needs to have diverse voices, more voices not fewer." In fact, Shopify has been focused on DEI since the beginning, according to the COO. "Our mission from day one has been to level that playing field, and it feels more important now than ever before to do that," said Finkelstein.
Global companies choose Ontario for their Canadian headquarters, and many of these companies are working on their own inclusive initiatives. - Nokia Canada, also headquartered in Ottawa, supports activities focused on getting girls interested in STEM – including Girls in ICT Day, an annual event in which the company prepares hands-on activities and demos for girls of grade 4 and older. Nokia Canada created the Diversity Lab, a new space in their Kanata building to support diversity programs and demo technology created in the building in 2020.
- IBM Canada, headquartered in Markham, has been recognized for its work to empower gay, lesbian, bisexual, and transgender people in the workplace around the world.
Across industries, Ontario companies are committed to promoting greater DEI. In the life sciences sector for example, Toronto-based BlueDot is an AI-driven infectious disease surveillance solution. The company was among the first to warn the world of COVID-19 is now helping to guide the Canadian government's COVID-19 response as well as working with the State of California. BlueDot was named to the 2020 list of Best Places to Work in Ontario. BlueDot used the recognition to reaffirm its commitment to DEI, saying, "Building strength through diversity, equity, and inclusion takes work, and it's work we're more committed to doing now more than ever."
Innovation Ecosystem
Ontario's innovation ecosystem highlights initiatives from various organizations that are geared towards women-led/diverse businesses to help them succeed. From incubators to academia, the wide and collaborative ecosystem can support positive impacts.
For example: - VentureLab, based in Markham, is a leading technology hub that supports tech entrepreneurs and small businesses. Its new initiative, Tech Undivided, is aimed at supporting women and underrepresented persons in the tech industry. Tech Undivided bridges inclusivity gaps by creating gender-balanced networks with diverse representation and works with founders, investors, and companies to prepare them for business and investment success by reducing unconscious bias.
- The Information and Communications Technology Council, headquartered in Ottawa, has programs to help employers recruit, retain, and integrate women, Indigenous persons, youth, and internationally educated professions into the ICT workforce.
- Ryerson University's DMZ (Digital Media Zone) in Toronto is one of the world's top university-based business incubators. Its Women Founders Fast Track program, designed to support women-identified founders, gives founders the resources they need to lead an early-stage start-up and facilitate its growth.
And speaking of universities, in 2019, Ontario welcomed 170,000 international students to its 44 post-secondary institutions. Five of the top 10 universities in Canada are located in Ontario, and Ontario universities produce nearly 50,000 Science, Technology, Engineering, and Math (STEM) graduates each year. In Ontario, top talent, academia, research institutes, and accelerators come together to create an ecosystem that supports the development of new technologies to solve real world problems and steer toward a path to a brighter future.
Ontario Together
While these actions are only part of our collective steps in a longer journey towards greater diversity, equity, and inclusion, Ontario is proud to be working towards a more welcoming and inclusive place to live and do business. We welcome further opportunities to engage with U.S. and Ontario based companies and organizations that want to learn more about doing business in the province, and Ontario's efforts to foster an ecosystem that allows businesses and people to thrive.
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This article was written by the Ontario Trade & Investment Offices located in San Francisco and New York City. The Ontario Trade & Investment Offices are a free and confidential one-stop-shop that works with U.S. based businesses to expand, and open new offices in Ontario, and also supports Ontario-based companies seeking new business opportunities in the U.S. For more information and/or to discuss your expansion plans to Ontario, please contact Chelsea Peet, at Chelsea.peet@international.gc.ca and/or Michelle Cheng, at Michelle.Cheng@international.gc.ca. | | | Controlling the Speed of Patent Examination in the US | | Authors: Dan Altman and Vlad Teplitskiy, Partners, Knobbe Martens, Orange County, California Introduction
Imagine that that your company is getting ready to file a US patent application covering a key product. Before the application has been filed, you ask your US patent attorney about how soon after filing the application you can look forward to receiving the good news of getting a patent. To your surprise, you learn that, in the ordinary course, it would likely take about two to three years, and sometimes even longer. But your company does not want to wait that long. You ask if there is anything that can be done to speed up the examination process to get a patent sooner.
Now imagine a different scenario. Your company is getting ready to file a US patent application on a product that is still in development. The application covers several alternatives for the product, and it is not yet clear which of the alternatives will be included in the commercial product. It certainly is not yet known which of the alternatives your competitors might decide to implement in their competing products. You ask if it is possible to delay examination of the patent application to obtain more time.
The following presents strategies your company can implement in answer to both of the foregoing questions.
Accelerating Examination
Speeding up examination of a patent application can be important for several reasons, such as, improving competitive positioning and company valuation, securing patent rights to enforce against competitors, and learning quickly whether the invention is patentable prior to spending significant resources to pursue patent protection in jurisdictions outside North America.
There are several ways to speed up examination of a U.S. patent application. The most potent option is to pay an additional official fee to accelerate examination under the Track One Prioritized Examination program. This program is available for virtually any new patent application meeting several technical requirements and simply requires payment of a fee of $2100 for most small businesses or $4200 for companies that have over 500 employees. The Track One program guarantees a final disposition (i.e., an allowance or a final rejection) of the application within one year. Indeed, current statistics demonstrate that applications filed under the Track One program typically reach a notice of allowance in just over six months. Moreover, applications filed under the Track One program tend to receive more favorable treatment by the USPTO as a result of being assigned to more experienced patent examiners who are more likely to grant patents.
Another way to accelerate patent examination in the US is to file a petition to make special. This approach does not require payment of any fees, but the application must meet one or more of the following criteria: - At least one of the inventors is 65 years old;
- At least one of the inventors is in poor health, or
- The invention will materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism.
In addition, patent applications related to COVID-19 may receive accelerated examination.
It may also be possible to use the Patent Prosecution Highway (PPH) program to accelerate examination. This program requires prior allowance of claims in a corresponding non-U.S. application. There are no official fees for requesting participation in the PPH program. While applications participating in the PPH program generally receive fewer official actions and are allowed at a higher rate, there can be downsides. In particular, there are limitations on how the claims can be amended, which may create a challenge in overcoming rejections raised by a US patent examiner.
Delaying Examination
There are also a number of reasons that it may be desirable to slow down examination of a patent application. Such reasons include a desire to defer costs, determine the claim strategy to cover a competitor's product, and a need to obtain time for obtaining additional data or experimental results to strengthen the arguments for obtaining a patent. There are several options for delaying examination.
The patent rules permit filing a request to suspend examination for up to three years. The suspension request can be filed at any time before issuance of a first action on the merits by the USPTO. There is only a small official fee for filing the request.
Additional limited options for slowing down examination include requesting suspension of action for up to three months subsequent to the filing of a request for continued examination or filing a petition for suspension of examination of up to six months upon showing of a good and sufficient cause and payment of a small fee.
Moreover, it is possible to take advantage of various strategic options that will result in slowing down substantive examination. While such an approach is not a "formal" mechanism for delaying examination, they can help achieve the desired result. An exemplary process for proceeding slowly could include the following steps: - Filing a patent application without meeting formalities (such as, without paying the fees), which would delay commencement of substantive examination;
- Presenting claims directed to multiple inventions, which would likely trigger an action by the USPTO requesting election of one of the inventions prior to commencement of substantive examination;
- Responding to rejections by the USPTO with only a pro forma response, which would likely lead to the patent Examiner maintain the rejections;
- Filing a notice of appeal in response to final action rather than filing a substantive response; and
- Filing a continuation patent application instead of an appeal brief in order to restart the entire cycle.
The USPTO has a process that permits the payment of a fee to extend the deadlines at each of the foregoing steps. It is generally most cost-effective to pay for no more than two months of extension at each step. By taking advantage of these extensions of time, each cycle of the strategy set forth above might provide a delay of about 18-24 months.
Conclusion
USPTO patent rules and procedures provide numerous options for controlling the speed of patent examination. By taking advantage of these options, you can meet your business goals by accelerating or slowing the time spent in obtaining a patent. | | | Become a Member of MAPLE Business Council | | MAPLE Business Council® is an active community of senior executives across over 20 sectors in 17 markets connecting through in-person and web-based events, commercial delegations, digital knowledge-sharing, cross-border news curation, and strategic partnerships to trade, invest and collaborate between and within Canadian & U.S. markets. For more information, please contact us at info@maplecouncil.org. | | | | | |
