The regulatory and legal framework for Patent and Trademark agents underwent considerable reform this past summer. On June 28th, 2021, the College of Patent Agents and Trademark Agents Act (the “Act”) came into force. The Act institutes a new professional regulatory College.
The Act’s purpose is 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.” Formerly under the oversight of Canadian Intellectual Property Office (“CIPO”), the legislation creates the College of Patent Agents and Trademark Agents (the “College”). The reorganization serves two main functions:
- effect a transfer of authority from CIPO to the College; and
- amend the professional rules and regulations for patent and trademark agents.
The College governs
The regulations shifted oversight from CIPO to the College. As such, the College is responsible for:
- Maintaining registers of patent and trademark agents;
- Administering qualifying exams for agents;
- Collecting fees (exams, annual renewal etc.);
- Establishing and maintaining a code of conduct; and
- Conducting investigations and disciplinary proceedings.
The previous legislation’s failure to comprehensively regulate professional conduct prompted the regulatory shift. Under CIPO there was no code of professional conduct to address complaints or to discipline misconduct. The gaps in the legislation meant, for example, the Commissioner of Patents had limited authority to deny recognizing an agent for gross misconduct.
An amendment of professional rules and regulations
The concern of unregulated professionals prompted a review of the system such that the new regulatory framework consists of:
- The College of Patent Agents and Trademark Agents Act;
- The College of Patent Agents and Trademark Agents Regulations;
- By-laws of the College of Patent Agents and Trademark Agents (College);
- By-laws of the College of Patent Agents and Trademark Agents (Board); and
- Policies of the College.
Under the new regime, CIPO retains responsibility for granting patents and trademarks. And to appear in front of CIPO, a license (akin to a license for a lawyer or paralegal) is required. There are three levels of license. First, the Class 1 license which permits a licensee to represent persons in the presentation and prosecution of applications for the registration of patents or trademarks (unsupervised). Second, the Class 2 license. This license does not allow an individual to represent persons in front of CIPO and is typically an election by a licensee where they are going on parental leave, maternity leave, or simply pursuing other life opportunities. The qualified individual can step back from the Class 1 license requirements (including fees and insurance) while simultaneously maintaining qualification and standing with the College.
The requirements for returning to a Class 1 from a Class 2 license are still unclear and the College has yet to provide a policy in this respect. For instance, in the event a licensee elects for a Class 2 license and is not active for a prolonged period (say 10 years), the College will need to ensure that the licensee continues to possess the knowledge, skill and judgment when the licensee returns. The College will no doubt have answers soon, but some of these questions remain unanswered for current agents.
Finally, the class 3 license. Under a class 3 license, the licensee may only be a representative in a presentation or prosecution of an application where the licensee is supervised by a class 1 licensee. This license is akin to an articling student for lawyers or a residency period for doctors. In essence, class 3 licensees are patent agents and trademark agents in training.
To maintain a license with the College, licensees will be required to adhere to requirements of residency, fitness to practice, good character, training, and paying the applicable fees.
Training: Passing qualifying exams after a 24-month training period and completion of the agent training course;
Fitness to Practice: Having the sufficient knowledge, skill and judgment not substantially impaired by a physical, mental or emotional condition, disorder or addiction;
Good Character: The applicant has the necessary integrity and competence in “accordance with the highest standards of the profession”;
Residency: Must be a Canadian resident; and
Fees: Vary based on the license held by each agent.
The professional code of conduct and regulatory oversight by the College is a critical step to enhancing the protection of the public interest. Going forward, the agents will need to be cognizant of professional requirements of conduct to ensure a fruitful and long-lasting member of the profession.