On June 28, 2021, the College of Patent Agents and Trademark Agents (CPATA) was established and began operating to regulate patent and trademark agents. The new regulations, the , were implemented “to regulate patent agents and trademark agents in the public interest, in order to enhance the public’s ability to secure the rights provided for under the Patent Act and the Trademarks Act” as stated in the .  According to the CPATA , the college will set competency standards for licensees, require trainee agents to work with an experienced agent for two years, and require agents to pass a competency exam. The CPATA also sets and enforces ethical standards for agents and will be implementing a that states principles to guide all agents. Principles enumerated in the Code of Professional Conduct include a duty to be competent, a duty to preserve confidences and secrets, a duty to not act if there is a substantial risk of a conflict of interest, and a duty to be honest and candid when advising a client.

Many have praised the establishment of the CPATA, highlighting improvements in standardization and transparency. The CPATA, like other colleges, is tasked with protecting the public interest by ensuring members are held accountable. Establishing an appropriate complaint, inquiry, and discipline process is essential for fulfilling this mandate. The CPATA website includes both an informal resolution option, the Conduct Inquiry Form, as well as a complaint option. Both forms allow the public to easily submit information about the circumstances and agent involved in their inquiry or complaint to the CPATA. The Conduct Inquiry Form, as described by CPATA, can be “the best and most efficient way to address questions or concerns about an agent’s professional conduct … rather than by filing a complaint.” At the moment, the two forms look remarkably similar, but the states that the “early resolution of conduct inquiries is focused on restoring relationships and trust ….” The policy lists the assessment options and follow-up actions the Registrar may invoke to resolve the matter. The Registrar will first assess if the inquiry warrants further action, and if necessary, work to support the licensee to rectify the situation in an appropriate manner. While the CPATA website does not currently include investigation and discipline policies, the informal inquiry process appears promising. The swift resolution of minor inquiries is key to allowing the Registrar to focus on issues that warrant significant attention and ensures that the public can be satisfied by a fast and efficient inquiry process for issues that they need resolved quickly. Consolidating the inquiry and complaint process to an easy one-stop-shop for the public will help foster trust in the profession.

Notwithstanding the improvements to standardization and transparency, the implementation of the CPATA regulations was . Sections 5 and 9 of the regulations require that patent and trademark agents, respectively, reside in Canada. This could eliminate some American agents from filing in Canada and potentially, thanks to a reciprocity treaty between Canada and the US, lead to Canadian agents losing their right to file with the USPTO. Dual trained agents could potentially face the reality of needing to hire an American counterpart for filing with the USPTO, which could lead to increased costs that would ultimately be passed along to clients and delays that could frustrate the patent and trademark processes further. Improving the Canadian IP ecosystem may be the goal, but the residency requirement could cost financially desperate clients even more, and potentially cost Canadian firms business if clients decide to go directly to American agents. Balancing the improvement of the Canadian IP ecosystem with maintaining low costs for clients and business thriving for agents is difficult; the Government is faced with an unprecedented IP ecosystem problem. While the implementation of the CPATA will hopefully increase the standard of service that agents provide to clients and ensure that clients have a transparent recourse process when they feel that service does not meet the CPATA standard, the potential cost to clients and lawyers may ultimately prove to further exacerbate Canada’s IP retention problem.

The post The Government of Canada establishes the College of Patent Agents and Trademark Agents appeared first on IPOsgoode.

The is to update three aspects of the profession of trade-mark and patent agents that would help align the industry with ‘best practices’ adhered to in different professional fields. The three mandates to be fulfilled include:

1. The maintenance and oversight of the register/list of trade-mark and patent agents;
2. The qualification and development of patent and trade-mark agents; and
3. A values and ethics framework for trade-mark and patent agents.
   
   

This initiative for change was spurred by discussions between IPIC and CIPO over the past few years about existing deficiencies within the regulatory framework. On May 27^th, 2010 IPIC submitted a consultation paper entitled “” to its members with the intent of collaborating with CIPO to create new guidelines addressing these growing concerns. The main objectives summarized in the report included:

• The profession, through IPIC, would be responsible for the establishment of entrance requirements to become a patent or trade-mark agent, and determine whether the requirements are met.
• IPIC would maintain a code of ethics and a code of conduct for all agents.
• The profession, through IPIC, would manage the process for the discipline of agents.
• CIPO would continue to maintain the registers.
• CIPO would retain final say on disciplinary matters, including suspension or removal from the registers.
• CIPO and IPIC would establish requirements for insurance and for continuing professional development.
  
  

The members of IPIC approved this proposal at the 2010 AGM and gave the mandate to the IPIC Board of Directors to seek its implementation in collaboration with CIPO. However, because of changes in its leadership shortly afterwards, CIPO began the process in 2013 and invited IPIC, FICPI, and AIPPI to collaborate with them.

As per Michel Gérin, Executive Director of IPIC, the first step when CIPO launched the project was to outline and agree (i) to the general scope of the project, (ii) on the three working groups, and (iii) on their co-chairs (each of the associations has one). The plan is to conduct the actual study and discussions from September to March. CIPO will later invite patent and trade-mark agents ‘at large’ to comment on the recommendations made by the committees.

As Mr. Gérin, pointed out, it is likely that not all of the issues will be resolved in this short time, but it is moving forward in a positive and “transparent way”. Based on a generous interview granted by Mr. Gérin, on July 31^st, 2013, a summary of the objectives and changes are listed below.

MAINTENANCE AND OVERSIGHT OF THE REGISTER
By law, CIPO is required to maintain a “register of patent agents” and a “list of trade-mark agents” in order to facilitate access to clients. CIPO wants to ensure that these lists are always a true picture of the professionals available to serve Canadian innovators. Some small businesses owners have expressed to CIPO the desire to see more information about the agents on these lists. This will be a topic for discussion for the committee working on this project.

QUALIFYING EXAM/CONTINUING EDUCATION

Qualification
The licensing process for patent and trade-mark agents involves on-the-job training, self-study, and optional courses offered by IPIC. It culminates in an examination managed by CIPO in collaboration with IPIC (i.e. three of the four papers for the patent exam are prepared by IPIC members).

Trade-mark and patent agents are not required to be licensed lawyers, nor are they required to have a legal education. A patent agent applicant must be a trainee for one year (either in a law firm or an intellectual property firm) and must write the self-study examination. IPIC supports a CIPO proposal that the training period be changed to two years because a single year is not enough. After consultations, this change is now awaiting a cabinet decision. A trade-mark agent applicant is required to train at a firm for two years and then complete the exam, unless s/he is a lawyer who has already practiced in the area for two years. The changes to the regulations propose that lawyers will also have to write the examination.

CIPO has proposed the creation of this project group to determine whether the admission process outlined above needs to be modernized. Mr. Gérin hopes that the members of this project committee will consider IPIC’s proposal to manage the entire qualification process with CIPO continuing to administer the list and decide who may be added or removed from the list, based on IPIC’s recommendations. IPIC proposed to manage the process because it has done a lot of committee work and research over the years to identify possible improvements to the admission process.

Continuing Education
Once successful, those patent and trade-mark agents who are not lawyers are not obliged to take continuing education requirements the same way agents who are licensed lawyers do. CIPO would like this project committee to consider continuing education requirements for agents. Mr. Gérin stated that IPIC supports this view because “more and more, there is an expectation for continuing education requirements . . .” by the public. He also observes that although the continuing education classes are not required for agents, the agents themselves have already been quite active in taking the webinars and courses that are offered by IPIC and by other associations.

CODE OF ETHICS
Currently, CIPO does not regulate the conduct of registered agents via a code of ethics, even though it has the power to remove an agent from the practice. There are several deficiencies in this practice – first, there is no clear process; second, there are no intermediary measures; and finally, there are no clear mechanisms in place to facilitate communication between CIPO and the public for the purpose of complaints.

Trade-mark agents are mostly lawyers who would have to adhere to the set out by the Law Society of Upper Canada, while patent agents are individuals who are highly educated in science and engineering fields and whom do not have the same requirements. As Mr. Gérin stated, “We [IPIC] felt that . . . this profession should be held up to the same standards as other professions in Canada. You should have a mandatory code of ethics or code of conduct for the profession.”

Members of IPIC already agree on a voluntary basis to adhere to IPIC’s , which is now in the process of being updated (last adopted in 2001) to reflect recent changes in the codes for lawyers and case law regarding conflicts of interest. Mr. Gérin believes that the work done by IPIC  in this area will be useful for the project committee.

CIPO would also like the committee to look at intermediary disciplinary measures such as additional training. Finally, the working group will examine “best practices” to aid in making this process accessible and transparent for the public. Admittedly there are very little complaints against patent and trade-mark agents, which is why this initiative had not started years earlier.

OTHER CONSIDERATIONS
Finally, unlike many professions that are regulated provincially by self-regulated associations, IPIC’s proposal is modeled on a hybrid of self-regulation (via IPIC) and government involvement. This way CIPO can have the final say, which will guarantee public protection.

(Click for CIPO's August 12^th, 2013 response to our request for an interview.)

This modernization initiative by CIPO is a very welcome step forward for the community of patent and trade-mark agents. It seems like IPIC has much of the infrastructure already in place, and where it doesn’t it is willing to undertake much of the responsibility. We look forward to hearing the outcome of this initiative in March 2014.

The post A New Approach: Modernizing the "Regulatory Framework for Patent and Trade-mark Agents" in Canada appeared first on IPOsgoode.