Stephen Perry is viewed as one of Canada’s leading patent agents. He is co-author (with Andrew Currier) of Canadian Patent Law (Butterworths, 2012; Second Edition, 2014; Third Edition, 2018), the first text on the subject by patent prosecutors in over 30 years. 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.
What do you enjoy most about working as a patent agent?
Reporting a notice of allowance after a hard-fought prosecution before the Patent Office. Examiners serve an important public policy function – to prevent the issuance of arbitrary exclusive rights. A patent agent’s role is to advocate on behalf of innovators for the protection of meritorious inventions. I derive great satisfaction from playing a modest role in realising my clients’ business objectives, especially where there are difficult challenges in terms of prior art or statutory subject matter.
How has the market changed since you first started practising?
Patents being used as swords rather than shields. When I started in 1983, patents were essentially defensive. They were used to provide strategic protection for specific innovations in competitive markets. Over the last number of decades, patents have become much more commodified, because of a recognition that they can be valued and leveraged in their own right, apart from the value of the underlying invention. This, in turn, has led to a surfeit of patents and an increase in litigation by patent assertion entities.
What are some key concerns and challenges facing clients currently?
Apart from covid-19, which is a concern for everyone, clients recognise that some critical IP services are substantive in nature (e.g. opinions, patent drafts, patent appeal, etc.) while other similarly critical services are purely administrative (e.g. 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 providing substantive services, my practice focuses on delivering 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 (Perry and Currier: 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 that are made with respect to IP.
With respect to routine administrative services, my firm has invested heavily in developing AI-based automated systems.
What challenges does covid-19 present for the existing pressure on client fees?
Fortunately, most of our clients do not seem to have been adversely affected by covid-19 to the point that there has been fee pressure on us. However, we have been proactive in accommodating a small number of clients in certain sectors that have been heavily impacted by the virus. We hope and expect that the financial situation for that small number of clients will improve as the pandemic comes under control. Until then, we are happy to help those clients in any way we can.
How do you anticipate covid-19 will impact office culture?
We were extremely fortunate that our IT infrastructure enabled a seamless transition to working from home. Apart from buying a few extra monitors for some staff members, we were able to move to a remote work configuration overnight. To address the absence of ‘face time’, we are encouraging all lawyers and agents to conduct bi-weekly video calls with staff members who report to them (no work talk allowed). We have also established a PCK social channel on MS Teams, where weekly challenges are issued, such as name your favourite covid getaway, favourite covid movie, a quiz to guess each firm member’s ‘hidden talent’ etc., the winners of which receive a gift card for online purchases. We also established a Friday 4pm online beer club.
How has PCK sought to automate non-substantive elements of its work to benefit clients?
PCK has developed an in-house AI-based automated docketing and reporting module and automated information disclosure module, with a view to lowering the burden on clerical staff, improving accuracy and minimising client costs. Also, we are a completely workflow driven business, which means that every firm member (including our automation engine, OTTO) is automatically assigned tasks in parallel workflows for any given client deliverable. One workflow manages the statutory requirement, another manages the client service aspect, while others govern status checks and administrative actions (e.g. automated fixed-fee billing associated with each task).
Needless to say, we have had no paper files since the firm’s inception in 2005.
What steps is PCK taking to address the lack of diversity in the legal profession?
The first initiative is an annual scholarship for disadvantaged university students. Details of the scholarship are posted on the PCK website. The second is a regular “open-house” program, where professionals in the firm will provide educational sessions on intellectual property to disadvantaged youth, based on the IPO ( ipo.org) IP Patch program. The third initiative will be a paid summer internship for a university student from a disadvantaged background. Details of the scholarship are posted on the PCK website. These initiatives are specifically designed to support disadvantaged groups including black and indigenous youth.
We raise a challenge to all of our peers in the legal industry to implement their own programs. If we all work together in this way, we can make a difference.
Our CEO, Andrew Currier has a long history of promoting diversity initiatives starting from his undergraduate days, where, as the student council president he implemented diversity initiatives under the guidance of the leader of Black Students Union (or Black Unity Congress). Andrew is also co-vice chair of the Women in Intellectual Property Committee of the Intellectual Property Owners (IPO) organisation, where he works regularly on the promotion of women and diverse individuals in the profession. Andrew and I stand united on these issues and see them as core values to the firm.
What has been the most memorable case you have worked on?
The first patent application that I drafted in 1983. It is most memorable for the time it took to draft (about 60 hours) and the number of revisions required by my mentor (about 20).