Stephen Perry
Office:
1300 Yonge Street, Suite 500
M4T 1X3
City:
Toronto
State:
Ontario
Country:
Canada

Questions and Answers:

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Stephen Perry is viewed as one of Canada’s leading patent agents. Stephen started in the field of IP in 1983 and qualified as a patent agent before the US and Canadian patent offices in 1985. His practice is focused on developing and managing international IP portfolios for Canadian technology companies of every size, covering a broad range of innovations in the fields of telecommunications, electronics, software, display technology, medical imaging and medical devices.

How does your practice distinguish itself from others in the market?

The manner in which I conduct my practice is based on the recognition that some critical IP services are substantive in nature (eg, opinions, patent drafts, patent appeal, etc), while other similarly critical services are purely administrative (eg, routine filings, fee payments, etc). Most clients are prepared to pay a reasonable amount for substantive services (although often with some caps) but much less willing to pay more than nominal fees for purely administrative services.

With respect to the former, my practice focuses on providing strategic advice that is informed by a constant review of and reporting on the leading IP court cases, both via our firm blog as well as our textbook (Canadian Patent Law, which has been cited with approval by the Supreme Court of Canada). My aim in providing substantive legal services is to identify the business implications of decisions made with respect to IP.

With respect to routine administrative services, my firm has invested heavily in developing AI-based automated systems, such as our automated docketing and reporting module and our information disclosure module, with a view to lowering the burden on clerical staff, improving accuracy and minimising client costs. In order to meet client fee expectations and remain profitable in the provision of such administrative services, it has been essential for us to become brutally efficient. At PCK, we are fond of saying “there is no such thing as strategically paying a maintenance fee” but we are also keenly aware that the incorrect docketing of a patent application number may result in irrevocable abandonment due to incorrect payment of a maintenance fee.

What were the greatest challenges in setting up your own practice?

The biggest challenge in setting up a firm as technologically driven as ours has been human resistance to change. Highly skilled professionals and clerical staff sometimes have difficulty adjusting to changes in technology. However, my experience has been that once new professionals and staff have completed the training necessary to work efficiently and productively in a highly automated service environment, they recognise the significant advantages over traditional paper-based workflows.

One area in particular that requires adjustment is accepting that not all client communications must be personal and bespoke. However, automated communications can be impersonal, which is why every client email generated by our “robot” (Otto – see his bio at www.pckip.com/otto) is copied to the responsible professional so that the professional has an opportunity to immediately follow up with a personal email or personal phone call to the client.

What is the most difficult aspect of filing on behalf of a large multi-national client?

Actually, meeting the demands of large multinational clients has provided the motivation for many of our home-grown IT initiatives, such as an integrated docketing and billing platform based entirely on flat-fee services. Specific needs of different large filers are met by establishing different service standards that trigger workflows and automation sequences that are tailored to individual clients.

There is a concerted drive from clients for greater efficiency among practitioners in the market. How can this be achieved and how do you think this will alter your patent practice?

I believe that my practice is already dealing quite well with client requirements for greater efficiency. As discussed above, the key to managing these expectations is distinguishing between bespoke strategic legal services and routine administrative legal services and staying abreast of legislative and judicial developments to inform the former and automating the heck out of the latter.

How are practitioners applying AI technology to patent and legal processes and what are the main challenges associated with this?

Apart from the work that we have done in-house to develop our own AI-based systems, I am aware of commercially available AI software for assisting patent attorneys by reviewing their draft patent applications and office action responses. These systems are very ambitious, and my understanding is that the results are mixed. Patent drafting and office action responses fall into the category of high-value bespoke services rather than lower-value administrative services. A better approach, I think, is to look for lower-hanging fruit. That is the approach we have taken in focusing on automation of clerical/administrative functions.

Your firm was at the cutting edge of efficiency when you removed paper files in 2005 from your internal processes. What has been the effect of this and what are you doing today to remain innovative?

The immediate payoff in going paperless was better client service. When a client calls to discuss a file, I can open it immediately (note that it is imperative to have at least three monitors to replace the expanse of paper), rather than waiting to retrieve the paper file from the file room. Progressing from that to the highly automated systems we now employ has required, and will continue to require, very significant investment in order for us to stay competitive.

What advice would you give to young practitioners who one day want to be in your position?

Be creative and try to think outside the box; be dedicated and committed to your craft; communicate with clients and colleagues clearly and in a timely fashion; be ethical; and be empathetic.

You have had a very distinguished career thus far. What would you still like to achieve?

My firm and my book will, I hope, be my legacy. I am very proud of the accomplishments of my PCK colleagues (attorneys, clerks, programmers) and their continued efforts to help me achieve my vision of ensuring that PCK remains a top-tier provider of IP legal services, and a diverse, tolerant workplace that is greater than the sum of its parts.

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