Having served as vice chair of the IPO Women in IP Law Committee, what should the industry be doing to improve hiring processes to increase DEI in the workplace?  

While strides have been made, more should be done to ensure that all voices are heard and valued. 

DEI is foundational to PCK’s hiring practices. We focus on building candidate pools that reflect the diversity of our jurisdiction and clientele. Then, we look for individuals who align with our values and bring fresh insights that strengthen our work.

What recent decisions or developments are having the biggest impact on IP strategy in Canada?

IP strategy is currently shaped more by policy shifts than specific legal decisions. Only about 10% of annual patent filings in Canada originate from Canadians. However, approximately 12,000 applications are filed annually by Canadians at the USPTO, suggesting that Canadian innovators are more likely to pursue protection outside of Canada. While statistics don’t always provide a clear picture, international data from WIPO consistently shows that Canada is falling behind its peers in patent filings.

Therefore, the Canadian patent system focuses on importing intellectual property, and international firms are capitalising on this. There’s also growing concern about Canada’s ability to protect its innovations. Business leaders argue that Canada must take more significant steps to safeguard its intellectual property – and that is beginning to resonate.

We’re seeing more government-backed initiatives aimed at strengthening the country’s IP framework, such as the College of Patent Agents and Trademark Agents, Elevate IP and IP Ontario. These programmes have already led to an uptick in domestic filings, and we expect to see more international activity from Canadian innovators.

You work with a range of clients in your practice, from start-ups to large organisations. How do you adapt your approach depending on the type of client you are dealing with?

Understanding the context of each client is crucial. Start-ups often require a more strategic, hands-on approach and need help identifying key IP issues early and aligning their strategy with business goals. Encouraging open dialogue and discovery is key. Start-ups often need significant support in budgeting and managing resources as their IP portfolios grow and may face complex decisions, so we step in to guide them through portfolio management.

However, when a start-up begins to scale, we proactively adjust our approach with constant monitoring. What worked during the early growth stages may be insufficient for a company managing a larger portfolio or entering international markets, so we offer more specialised services like international filings or complex licensing agreements when the time is right.

Large organisations with well-defined processes typically seek workflow efficiency – whether it’s drafting patent applications, managing large portfolios or handling prosecution. Our role shifts to align with their processes, ensuring that we can integrate seamlessly and provide efficient, high-quality service.

What are the most common mistakes that foreign rights holders make when considering filing and prosecuting patents in Canada, and how can they avoid these?

Errors usually stem from a lack of awareness. Many foreign applicants assume they can rely on voluntary divisionals, but these are susceptible to invalidation in Canada due to double patenting. Provoke unity objections early to protect applicants from double-patenting issues and preserve claim scope.

Further, Canada allows for multi-dependent claims at no additional cost – a valuable strategic tool, considering the lack of a continuation regime. When conforming US claims to Canadian practice, foreign applicants should adhere to US practices, avoid reference characters and take advantage of multi-dependent claims to manage unity objections without incurring additional fees.

Unlike the United States, private sales or disclosures don’t trigger the grace period in Canada. However, while the United States allows provisional applications or claiming priority from a foreign application, in Canada, a full formal application must be filed within the grace period. Although, filing a PCT application within one year of public disclosure is acceptable and often overlooked.

You are involved with several associations, such as CPATA, IPOA, INTA and the Law Society of Ontario. How has your membership with these organizations contributed to your professional development?

The CPATA and the Law Society of Ontario guide me on ethics and practice standards, ensuring that I meet the professional and legal obligations.

My involvement with INTA and the IPOA focuses on professional development and networking. They offer invaluable opportunities to connect with peers, share best practices and stay informed on global trends. I’ve also been able to cultivate cross-border relationships, which help me to advise international clients.

Andrew Currier

CEO, Patent Agent, Trademark Agent, Lawyer
[email protected]

Andrew Currier is the CEO and co-founder of PCK and a trusted IP expert with extensive experience across industry, law and academia. He specialises in IP strategy, invention mining, portfolio management, branding, litigation and dispute resolution. Mr Currier has a strong track record of helping start-ups and large companies protect their innovations and build competitive IP portfolios. His clear, practical guidance enables businesses to leverage intellectual property as a key driver of long-term growth.