Canada Gazette, Part I, Volume 155, Number 11: College of Patent Agents and Trademark Agents Regulations

March 13, 2021

Statutory authority

College of Patent Agents and Trademark Agents Act

Sponsoring department

Department of Industry

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the regulations or the Rules.)

Issues

As part of its Intellectual Property (IP) Strategy, the Government of Canada created a College of Patent Agents and Trademark Agents (the College), an arm's-length regulatory body intended to regulate the patent and trademark agent profession. The College was established under the College of Patent Agents and Trademark Agents Act (the Act), which received royal assent in 2018. The proposed College of Patent Agents and Trademark Agents Regulations (the proposed Regulations) are necessary in order to transfer authority for agent regulation from the existing regulator for the profession, the Canadian Intellectual Property Office (CIPO), to the College and to operationalize the College. Consequential amendments to the Patent Rules and Trademarks Regulations are also required. These regulatory proposals are necessary before the Act may be fully brought into force.

Background

The Act was established as part of the Government of Canada's 2018 IP Strategy. The IP Strategy is an initiative aimed at ensuring that Canadian businesses, creators, entrepreneurs and innovators have access to the best possible IP resources through IP awareness, education and advice; strategic IP tools for growth; and IP legislation. The goal of the IP Strategy is to help Canadian entrepreneurs better understand and protect IP and get better access to IP rights. While Canada is a leader in research, science, creation and invention, the IP Strategy is intended to improve Canadian businesses' commercialization of innovations.

Recognizing that patent and trademark agents are a key component of the innovation ecosystem and that modernizing their professional oversight framework would instill greater public confidence in the IP system, the Government moved to establish the College of Patent Agents and Trademark Agents. The framework for the College is set out under the Act, which establishes the College as an independent regulator for the professional oversight of IP agents with the authority to maintain the registers of patent and trademark agents, administer qualifying exams for agents, collect associated fees (exams, annual renewal), maintain a code of conduct, and conduct investigations and disciplinary proceedings. Most of these activities are currently done by CIPO.

Patent and trademark agents play an essential role in helping firms obtain formal intellectual property rights. These individuals are experts who can act on behalf of firms and are permitted to represent applicants, registered owners and persons doing business before CIPO. In most circumstances, a patent agent (this is not the case for a trademark agent) must be appointed to represent applicants in their business at CIPO. If an agent is appointed (or required to be appointed), many essential actions in the prosecution of the application must be undertaken by the appointed agent. Corporations and institutions are prohibited from conducting business before the Patent Office and instead must appoint an agent to do so on their behalf.

CIPO currently regulates patent agents under the Patent Act and Patent Rules and trademark agents under the Trademarks Act and Trademarks Regulations. However, there are critical gaps in the current governance framework for the profession. For example, the Commissioner of Patents (Commissioner) has only a limited authority under the Patent Act to refuse to recognize a patent agent for gross misconduct or any other cause deemed sufficient. There is no formal process for exercising this authority and it is seldom used. There is no equivalent authority under the Trademarks Act to refuse to recognize a trademark agent. The profession also currently lacks a formal code of professional conduct and a clearly defined complaints and discipline process. The Act and the proposals will fill these critical gaps in the current framework.

Objective

The objective of the proposals is to support the legislative framework for a modern regulatory oversight body for patent and trademark agents that was implemented as part of the Government's commitment under the IP Strategy. The proposals would facilitate the transfer of responsibility for IP agent oversight from CIPO to the new College. In addition, the proposed Regulations would put in place a framework that aims to ensure the College operates in the public interest.

Description

College of Patent Agents and Trademark Agents Regulations

The proposed Regulations would set out the detailed requirements necessary to fully operationalize the intent of the Act, contributing to the overall effectiveness of the agent governance framework.

Committees

The Act establishes two committees of the College, the Investigations Committee and the Discipline Committee, responsible for investigations into professional misconduct and incompetence and, if warranted, to adjudicate disciplinary hearings. The Act provides that the members of these committees are to be appointed by the College's board of directors, in accordance with regulation. The proposed Regulations would allow the College to establish its own appointment process but would set, as a minimum requirement, that the committees must be composed of a public interest majority. That is, each committee must be composed of a majority of individuals who are not licensed agents or employed by the federal government.

The proposed Regulations would also set composition requirements for any committee the College may establish to administer any of the requirements, including a qualifying exam, that are to be met by an individual in order to obtain a licence to be a patent or trademark agent. The proposed Regulations would specify that members of this committee be subject to a conflict of interest policy established by the Board and that membership on any such committee include representation from CIPO, and would restrict membership from any individual who is a member of an advocacy group for the agent profession. CIPO's continued involvement would ensure that testing remains current with its standard practices, rules, and guidelines that may be updated from time to time.

Licensing requirements

The College would be authorized by the proposed Regulations to make by-laws with respect to the requirements individuals must meet to apply for a patent agent or trademark agent licence, or for the new class of agent in training licence. The College would be given the authority to make by-laws in relation to any training prerequisites, qualifying exams, good character and suitability requirements, and fees.

Canadian residency requirement

Currently, non-resident agents may be listed on the Register of Patent Agents or list of trademark agents maintained by CIPO. However, although listed, these agents have limited powers and must appoint an associate agent who is a resident of Canada to conduct most business interactions with CIPO. Going forward, the proposed Regulations would set a Canadian residency requirement as both a licensing requirement and a condition for maintaining a licence.

Investigations

The proposed Regulations would prescribe certain periods of time and procedures related to provisions in the Act regarding the safeguards in place to protect any privileged and confidential information obtained during the course of an investigation of professional misconduct or incompetence. For example, the proposed Regulations would specify that an application to the Federal Court related to the conduct of an investigation may be made by way of motion. The proposed Regulations would prescribe a period of 10 days within which legal counsel must satisfy the requirements of paragraph 46(1)(d) of the Act (to notify the holder of a privilege with respect to a document or thing that it has been sealed in an envelope by legal counsel as part of an investigation).

Unauthorized representation exemptions

The Act prohibits a person (other than a licensed agent whose licence is not suspended or legal counsel) from representing another person in the presentation and prosecution of applications for patents or for the registration of trademarks or in other business before the Office of the Registrar of Trademarks or the Patent Office. The proposed Regulations would provide exemptions to this prohibition to cover situations where other legislation authorizes or permits a non-agent to represent another person. For example, the activities authorized under sections 36 and 37 of the Patent Rules or section 25 of the Trademark Regulations. The proposed exemptions would also apply to situations where a non-agent employee of a business prepares or submits documents to CIPO on behalf of the business or where an employee of an agent or firm performs a purely administrative task.

Transitional provisions

Transitional provisions are proposed to ensure that individuals who are currently working in an apprentice or training capacity would be deemed to hold the new agent in training licence on the coming into force of the Act. This would ensure that these individuals are not found to be unintentionally guilty of the new offences of unauthorized practice under sections 70 and 71 of the Act. To qualify, an individual must be a Canadian resident working in the area of Canadian patent or trademark law and practice, including in the preparation and prosecution of applications for patents or the registration of trademarks; be supervised by a person who holds a patent or trademark agent licence or who, prior to the coming-into-force date, is an agent or is responsible for a legal clinic; and must provide a notice to the College that they meet these requirements.

Additional transitional measures are proposed to manage the transfer of the examination process, in particular exams from a previous exam cycle administered by CIPO that may be still in the process of being finalized on the coming-into-force date. The proposed Regulations would provide that the current examining board (established under the Patent Rules and Trademarks Regulations) would mark any outstanding exams. In addition, entry requirements under sections 26 and 29 of the Act may be met by passing the exam and paying, if applicable, a fee established by the College in its by-laws.

Rules Amending the Patent Rules and Regulations Amending the Trademarks Regulations

The proposed amendments would make the following necessary changes to the Patent Rules and the Trademarks Regulations to facilitate the transfer of responsibilities to the College.

Agent representation

Currently, a patent or trademark agent may be an individual or a firm (if the firm has at least one member who is an agent). Once the Act is fully in force, only individuals will be recognized as a patent or trademark agent. Under the proposed amendments, parties would be able to appoint a single patent or trademark agent or, in the alternative, all the patent/trademark agents that are members of the same firm to represent them before CIPO. A similar approach would be taken with respect to the appointment of an associate patent or trademark agent.

An associate patent or trademark agent is an agent appointed by another agent who is appointed by a person to represent them before CIPO. The proposed amendments would specify that a single associate patent or trademark agent or all the patent/trademark agents that are members of the same firm may be appointed as an associate agent in respect of business before CIPO.

In cases where all the trademark agents of the same firm have been appointed, it is understood that the actual composition of that firm might change over time. Consequently, provisions will specify that where all the trademark agents have been appointed, an agent who becomes a member of that firm after the appointment will be deemed appointed as of the day they become a member of the firm, or deemed revoked on the day they leave the firm. Any person who is a member of the firm and who becomes a trademark agent after the appointment, will be appointed on the day they became an agent. In the case of the Patent Rules, the proposed rules would amend the Patent Rules to allow the identification of the agent responsible for receiving communications to be made in a document that is separate from the appointment document. The proposed amendments for patents include provisions specifying how to change the identified agent.

Patent Rules

The proposed amendments would specify that an applicant, patentee or other person may appoint a single patent agent or all the patent agents who work at the same firm to represent them in any business before the Patent Office. The proposed amendments would also prescribe the manner by which an applicant, patentee or other person may appoint a patent agent. Appointments must be communicated by notice addressed to the Commissioner, signed by an applicant, patentee, another person, or any person duly authorized by the applicant, patentee, or the other person, and indicate the patent agent's postal address.

If the appointment is for all the agents of the same firm, then the name and postal address of the firm are required.

To revoke the appointment of a single patent agent or all the patent agents at the same firm, the revocation must be communicated by notice addressed to the Commissioner and signed by the single agent or an agent of the firm where all agents at the same firm are appointed, or by the applicant, patentee, another person, or any person duly authorized by the applicant, patentee, or the other person. The appointment is also revoked if the licence of the single patent agent or of each of the patent agents at the firm is suspended, revoked or surrendered.

The proposed amendments would also allow a patent agent to appoint a single agent or all the patent agents at the same firm as the associate patent agent in respect of any business before the Patent Office. Appointments must be communicated by notice addressed to the Commissioner and signed by the appointed patent agent. Appointments of an associate patent agent may be revoked by the submission of a notice to the Commissioner signed by the associate patent agent or by the patent agent who appointed the associate patent agent. If all of the agents at a firm are appointed as the patent agent or the associate patent agent, any agent at that firm may sign the notice. The appointment is also revoked if the licence of the single associate patent agent or of each of the patent agents acting as an associate patent agent at the firm is suspended, revoked or surrendered, or the appointment of the patent agent or of all of the patent agents at the firm who appointed the associate patent agent is revoked.

In cases where all the agents at the same firm are appointed as the patent agent or associate patent agent, the proposed amendments would require that one individual agent be identified as the agent who is responsible for receiving communications from CIPO. Having an identifiable agent for receiving communications will help provide for accountability, to assist the College in regulating agent conduct and competence. The proposed amendments include provisions allowing the firm to change the identified agent if they choose to do so.

The proposed amendments also account for the fact that the composition of patent agent firms may change over time. If all of the agents at the same firm are appointed as patent agent or associate patent agent, an agent who joins the same firm would be deemed to be appointed as such starting from the day they join the firm, while the appointment of any particular agent who leaves the same firm would be deemed to be revoked as of the day the agent leaves the firm.

The proposed amendments would specify that with the permission of an appointed patent agent or appointed associate patent agent, any person authorized by the applicant may have an interview with an officer or employee of the Patent Office regarding an application for a patent. The amendments would also allow any person authorized by the applicant or patentee to sign a document appointing or revoking the appointment of a patent agent. Finally, the proposed amendments would allow any person authorized by an applicant or patentee to sign a small entity declaration. In all of these instances, proof of authorization is required. These provisions are added to preserve some of the powers of foreign patent agents, who may be the persons authorized by the applicant or patentee to take these actions.

Trademarks Regulations

With firms no longer eligible to be agents, the proposed amendments would specify that an applicant, registered owner or other person may appoint a single trademark agent or all the trademark agents who are members of a single firm to represent them in any business before the Office of the Registrar of Trademarks.

The proposed amendments would specify that, if the appointment applies to all agents that are members of a firm, the notice must include the name of the firm and the single agent of the firm that is responsible for receiving correspondence in respect of the business for which the agents were appointed.

The proposed amendments would specify that, if prior to the coming-into-force date, a firm was appointed as a trademark agent in respect of business before the Office of the Registrar of Trademarks, all the trademark agents of the firm would be deemed appointed. If no trademark agent has been identified, the trademark agent identified as responsible for receiving communications is deemed to be the trademark agent who submitted the notice, if any, or the trademark agent whose name appears first on the notice.

The proposed amendments would specify that a trademark agent other than an associate agent may appoint another single trademark agent or all the trademark agents that are members of a single firm as an associate trademark agent to represent the person that appointed them in any business before the Office of the Registrar of Trademarks.

Communications

The proposed amendments would specify that any communications submitted by an agent must identify the agent and the firm if all the agents of the same firm have been appointed.

Patent Rules

The proposed amendments relating to correspondence would clarify the provisions for communications with agents under the Patent Rules.

Written correspondence intended for the Commissioner

The proposed amendments would require that communications intended for the Patent Office or the Commissioner identify who is submitting the document. If a communication is sent by a patent agent, the communication must identify the agent's name and, if applicable, the name of their firm. The name of the firm is only required when all the agents at the firm are appointed.

Communication by the Commissioner sent before suspension or revocation

The proposed amendments would provide that communications sent to agents whose licences are suspended, revoked or surrendered would be deemed not sent in two circumstances. First, if the communication was sent within four months before the date of the suspension, revocation or surrender and no reply was received before that date, the communication would be deemed not sent. Second, if the communication is sent on the date of the suspension, revocation or surrender, the communication would be deemed not sent. Consequently, the proposed amendments would provide for added protection for applicants and patentees.

Trademarks Regulations

The proposed amendments would specify that communications intended for the Registrar of Trademarks (Registrar) identify the person submitting the communication, as well as the firm if all trademark agents at the firm have been appointed in respect of the business in which the communication relates. Moreover, if a communication is sent by a trademark agent, the communication must identify the agent's name and, if applicable, the name of its firm. Currently, the Trademarks Regulations only requires that communications intended for the Registrar be addressed to the Registrar.

Subject to the transitional provisions, and to ensure that professional and ethical standards are maintained in communications exchanged with CIPO, and where all the agents of the same firm have been appointed, the name of one agent at the firm will need to be designated to the Registrar as the agent responsible for receiving communications from the Office of the Registrar of Trademarks. In the absence of such a designation, the Registrar will consider the agent submitting the notice of appointment as the agent designated for this purpose, and if the notice is submitted by more than one agent, the agent whose name appears first on the notice. The proposed amendments would specify that if there is a receiving trademark agent, then the communication is sent to the receiving agent. Where the identity of the trademark agent responsible for receiving communications cannot be established, or the appointment of that agent has been revoked, any written communication sent by the Registrar will be considered to have been sent to all trademark agents of the same firm.

Written communications intended for the Registrar of Trademarks

The proposed amendments would specify that communications to CIPO must be addressed to the Registrar of Trademarks and, if submitted by a person or an agent, must identify their name. In the case where all agents of the same firm have been appointed, the name of the firm must be provided.

Definitions

The proposed amendments would make changes to certain definitions to align them with provisions in the Act. It is proposed that the definition of a trademark agent be amended so that an agent means an agent as defined in section 2 of the College of Patent Agents and Trademark Agents Act. It is proposed that the definition of patent agent be repealed, as changes to that definition in the Patent Act would make it unnecessary to retain this definition in the Patent Rules on the coming-into-force date. It is proposed that references to foreign agents and to Canadian residency be removed, and references to patent and/or trademark agents and associate patent and/or trademark agents be updated.

Administrative amendments

Considering CIPO would no longer be responsible for setting requirements for entry to the profession, holding and correcting exams, maintaining a list of qualified agents, and collecting the annual fee to be on the list of qualified agents, the proposed amendments would repeal the provisions regarding these administrative activities, including the related fees, in both the Patent Rules and the Trademarks Regulations.

Transitional provisions
Patent Rules

On the coming-into-force date of the proposed amendments, the appointment of any patent agent who is not a resident of Canada will be revoked. If the non- resident patent agent has appointed an individual agent or a firm as the associate patent agent prior to the coming-into-force date, that individual agent or all of the patent agents at the same firm will be deemed to be appointed as the patent agent as of the coming-into-force date. Finally, if a firm has been appointed as the agent (or as the associate agent by a patent agent who is a resident of Canada), all of the agents at that same firm will be deemed to be appointed as the agent (or as the associate agent if applicable) as of the coming-into-force date.

Trademarks Regulations

On the coming-into-force date of the proposed amendments, the appointment of any trademark agent who is not a resident of Canada will be revoked. Additionally, where an associate agent was appointed by an agent who is not a resident of Canada or a firm was previously appointed as a trademark agent in respect of business before the Office of the Registrar of Trademarks prior to the coming-into-force date, then that agent or all trademark agents who are members of the firm would be deemed appointed as of the coming-into-force date.

Regulatory development

Consultation

The creation of a professional regulatory body for IP agents has been a long-standing request by stakeholders, mainly led by the Intellectual Property Institute of Canada (IPIC). Innovation, Science and Economic Development Canada (ISED) has had ongoing engagement with stakeholders on this issue since 2009. In 2014, the Government conducted a broad consultation exercise culminating in the (ARCHIVED) Modernizing the IP Community Report, which recognized key gaps in the governance framework for patent and trademark agents. This includes improvements to the oversight of the list of agents; measures to support a more robust agent qualification framework; and the creation of an enforceable code of conduct and disciplinary process.

In May 2016, as a follow-up to the Modernizing the IP Community Report, the Government launched an online consultation seeking views on three proposed models for a new regulatory framework for agents, a proposed complaints and disciplinary process, and a draft code of conduct. The Government received feedback from professional associations representing patent and trademark agents, law societies, legal advocacy groups, law firms, and interested individuals. The commentary received during the consultation directly informed the drafting of the Act and the proposed Regulations. During this consultation, stakeholders were generally supportive of a self-regulatory model of professional oversight, including measures to ensure transparent governance, the avoidance of anti-competitive behaviour, and protection of the public interest.

In 2020, the interim Chief Executive Officer of the College was provided with a discussion paper outlining the Government's proposed regulatory approach. The goal for this exercise was two-fold. First, it provided the College with an opportunity to ensure the proposed approach aligned with their organizational needs and anticipated by-laws. Second, it served as an early opportunity to signal the Government's intention to use the authority to sub-delegate aspects of the regulatory framework to the College, only setting regulatory requirements where necessary to safeguard the public interest. The discussion paper and the approach it suggested were well received by the College.

Additional stakeholder consultations are ongoing and will continue in parallel with the prepublication of the proposals in order to reach additional stakeholders. Feedback received so far indicates support for the proposals. All comments and feedback received will be considered in finalizing the proposals.

Modern treaty obligations and Indigenous engagement and consultation

These proposals are not expected to impact treaties with the Indigenous peoples of Canada. ISED conducted an initial assessment that examined the geographical scope and subject matter of the initiative in relation to modern treaties in effect and did not identify any potential modern treaty impacts.

Instrument choice

The structural details of the modernized framework must be implemented through regulations, as prescribed by the Act. Therefore, the proposed Regulations are necessary to fully operationalize the College and bring the Act fully in force.

The proposed amendments represent the only means to implement changes consequential to provisions in the Act and the proposed Regulations. No other instrument was deemed appropriate to facilitate the transfer of responsibility for agent oversight from CIPO to the College. The framework established by the Act is not operational without the proposed Regulations or amendments.

Regulatory analysis

A cost-benefit analysis was conducted to determine the impact of these proposals on stakeholders. The proposals would operationalize the framework that was established under the Act, resulting in identifiable benefits and costs to the Canadian clients of CIPO, agents and firms. There are approximately 2 300 agents currently registered with CIPO, and soon to be regulated by the College.

The impacts of the proposals have been primarily assessed in qualitative terms.

Benefits and costs

Benefits

The creation of the College will respond to the long-standing request of stakeholders in the IP community that the profession be permitted to self-regulate. To that end, the proposals would support the implementation of the College as an independent regulator that will govern the IP profession, establish a complaints and discipline process, enforce a code of conduct, and require agents to continue their professional development. Therefore, the College and its oversight of the profession will instill greater public confidence in Canada's IP system and thus contribute to fostering innovation.

Benefits to Canadian clients of CIPO

Overall, the framework put in place by the Act and supported by the proposals would provide assurance to users of agent services that the advice they seek will be of a high quality and that professional and ethical standards are maintained. In 2019, Canada demonstrated itself as an attractive market to seek IP protection by receiving 36 488 patent filings, 68 277 trademark applications and 6 390 industrial design applications from Canadian and foreign applicants. Patent agents and trademark agents assist applicants in navigating laws and in protecting and commercializing their intellectual property rights in Canada.

Benefits to agents

The modernized framework will bring benefits to the patent and trademark agent profession, by requiring that agents be licensed and must abide by a formal code of conduct. This will enhance the credibility of the profession and demonstrate to the public that agents must meet and maintain a high level of knowledge, skill and ethical conduct. By putting in place the necessary requirements to operationalize the College, the proposals would contribute to achieving these benefits.

By proposing a Canadian residency requirement for all agents, the proposed Regulations would ensure that all licensees are subject to the same oversight and enforcement mechanisms, since the College would have limited ability to investigate misconduct and enforce disciplinary actions against non-resident agents.

Finally, the proposed restrictions that would bar members of agent advocacy groups from membership on any committee of the College charged with setting professional entry requirements (e.g. exams) would remove any potential conflict of interest and ensure fair, unbiased and transparent testing procedures.

Benefits to firms

At present, the majority of CIPO patent and trademark applications have 107 firms registered as patent agents and 228 firms registered as trademarks agents. As firms would no longer apply to be listed on the College's register of licensed agents, this would result in cost savings to them. The quantified savings are based on the assumption that each firm spends an average of one hour to complete the registration form and the wage of the employee responsible for filing out a registration form is $33.36 (includes overheard). Over the 10-year analytical period, firms are estimated to experience a total cost savings of $83,998 (stated in 2020 Canadian dollars).

Benefits to the Government

With the transfer of responsibility for agent oversight from CIPO to the College, CIPO would no longer need to allocate resources to setting requirements for entry to the profession, administering exams, maintaining a list of qualified agents, or collecting annual agent fees.

Costs

The proposed amendments would impose costs on stakeholders. These costs are expected to be minor and are discussed below.

Costs to agents

The new code of conduct for patent and trademark agents would be maintained by the College. Agents may experience minimal costs associated with familiarizing themselves with the new regulatory framework and understanding how to ensure compliance with the new code.

Although there are no other costs that would be attributable to the proposals, it is anticipated that agents might see an increase in fees set by the College for agent examinations or registration fees, among others.

Costs to the Government

CIPO as a whole operates on a cost-recovery basis so revenue earned from fees collected for agent registration and agent examination is taken into context with the larger cost recovery efforts of the organization. The transfer of responsibility for IP agent oversight from CIPO to the College will result in a loss of revenue for CIPO. However, the lost revenue would be offset by CIPO no longer providing the services associated with the collection of fees, such as the administration of entry exams and the maintenance of a public register of agents.

The transfer of responsibilities from CIPO to the College would result in minimal costs associated with the operational changes required to implement the proposed Regulations. Specifically, CIPO would carry costs by supporting the transfer, addressing any impact to CIPO's existing operations, and establishing the ongoing operational environment for CIPO.

Small business lens

The small business lens applies. An analysis under the small business lens has determined that the proposed amendments would result in benefits to firms, including firms that are small businesses. However, the benefits would be minimal and would be associated with these firms no longer preparing and submitting forms to be registered as agents.

One-for-one rule

With respect to the proposed Regulations, the one-for-one rule does not apply as the proposed Regulations would not result in any incremental administrative burden on business.

The proposed amendments are considered an "OUT" under the one-for-one rule. This is due to the reduction in the administrative burden for firms. Firms would no longer spend an hour, once a year, at a wage of $29.64 (includes overhead and in 2012 dollars) to prepare registration applications. The annualized administrative cost savings are estimated to be $5,401 or $16.12 per firm.

Regulatory cooperation and alignment

The proposed Regulations are not related to a work plan or commitment under a formal regulatory cooperation forum (e.g. the Canada – United States Regulatory Cooperation Council, the Canadian Free Trade Agreement Regulatory Reconciliation and Cooperation Table, the Canada – European Union [EU] Comprehensive Economic and Trade Agreement Regulatory Cooperation Forum).

In developing the proposals, ISED has considered approaches in place in other jurisdictions. Internationally, there is no single approach to regulate patent and trademark agents. Approaches range from a government-regulated approach in the United States to various mixed models in Australia, New Zealand and Japan, to an independent regulator in the United Kingdom. All these models, in addition to recent changes in Canada for provincially regulated professions, indicate the importance of well-structured bodies to ensure proper independent oversight, the ability for the Government to intervene if necessary, and proper representation of the public interest by having a majority representation of lay members. The proposals would ensure that Canada adopts the international and domestic best practices in professional regulation.

Strategic environmental assessment

In accordance with the Cabinet Directive on the Environmental Assessment of Policy, Plan and Program Proposals, a preliminary scan concluded that the proposed Regulations would not result in any positive or negative environmental effects. Therefore, a strategic environmental assessment is not required.

Gender-based analysis plus

ISED conducted a preliminary gender-based analysis plus (GBA+) scan to determine if any groups or individuals, including IP agents, would be affected differently than others based on factors such as gender, sex, age, language, education, geography, culture, ethnicity, income and ability. The analysis found no evidence that there would be any disproportionate impacts. Thus, no GBA+ impacts have been identified as a result of the proposed Regulations.

Implementation, compliance and enforcement, and service standards

The proposals would come into force on the day they are registered.

CIPO will perform stakeholder outreach to announce the beginning of the consultation period, the publication of the final proposals and the coming-into-force date of the proposals. Outreach will be proactive and conducted via direct email and social media posts.

The College has been kept apprised of implementation plans in order to ensure the organization is ready for the transfer of authorities upon a target coming-into-force date of spring 2021. The College is coordinating its communications plan to align it with CIPO's planned outreach. The College will inform the agent community and other stakeholders of the transition in regulatory oversight. The College will work with IPIC to further expand the scope of its outreach.

For the profession, there are no specific timelines or obligations to observe in relation to the proposals. There are transitional measures in the Act to preserve the status of current licensees. Individuals currently working as trainees in the area of Canadian patent and/or trademark law and practice who would meet the requirements under the transitional measures of the proposed Regulations can notify the College accordingly to be recognized as the "deemed holder" of a patent agent and/or trademark agent training licence.

CIPO is collaborating with the College to avoid the risk that the next examination cycle would be delayed.

The Client Services Call Centre at CIPO will answer questions regarding the College. The College will also have a Web presence in advance of the coming-into-force date.

No new compliance and enforcement activity would be required for the proposed Regulations and there would be no change in the manner that the Patent Rules and the Trademarks Regulations are enforced.

There are no service standards associated with the proposals.

Contacts

Doug Milne
Acting Director General
Corporate Strategies and Services
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Email: Doug.Milne2@canada.ca

Telephone: 819‑934‑2426

Jennifer Miller
Director General
Marketplace Framework Policy Branch
Innovation, Science and Economic Development Canada
Email: jennifer.miller@canada.ca

Telephone: 343‑291‑2133

PROPOSED REGULATORY TEXT

Notice is given that the Administrator in Council, pursuant to paragraph 46(1)(d) and sections 72, 76 and 86 of the College of Patent Agents and Trademark Agents Act^{footnote a}, proposes to make the annexed College of Patent Agents and Trademark Agents Regulations.

Interested persons may make representations concerning the proposed Regulations within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of publication of this notice, and be addressed to Erin Campbell, Director, Patent Policy Directorate, Marketplace Framework Policy Branch, Department of Industry, 235 Queen Street, East Tower, 10th Floor, Ottawa, Ontario K1A 0H5 (tel.: 613‑355‑6474; email: erin.campbell2@canada.ca).

Ottawa, February 25, 2021

Julie Adair
Assistant Clerk of the Privy Council

College of Patent Agents and Trademark Agents Regulations

Definition

Definition of Act

1 In these Regulations, Act means the College of Patent Agents and Trademark Agents Act.

Committees

Conditions for Investigations Committee and Discipline Committee members

2 The majority of the members of the Investigations Committee and of the Discipline Committee, established under subsection 21(1) of the Act, must be individuals who

• (a) are not licensees; and
• (b) are not employed by a department, as defined in section 2 of the Financial Administration Act.

Committee administering licensing requirements

3 The committee of the College that is established to administer the requirements, including a qualifying exam, that are to be met in order to obtain a licence under section 26 or 29 of the Act must

• (a) be composed of members who may be removed at pleasure by the Board;
• (b) not include any individual who is a member of an association the primary purpose of which is to represent the interests of persons who provide advice on patents or trademarks;
• (c) include a representative from the Patent Office and the Office of the Registrar of Trademarks; and
• (d) be subject to a conflict of interest policy established by the Board.

Patent Agent Licence

Applicant for patent agent licence — requirements

4 For the purposes of subsection 26(1) of the Act, an individual who makes an application for a patent agent licence must

• (a) be resident in Canada; and
• (b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) training,
  • (ii) qualifying examinations,
  • (iii) being of good character,
  • (iv) physical and mental fitness, and
  • (v) fees.

Patent agent licence — conditions

5 A patent agent licence is subject to the following conditions:

• (a) the licensee must be resident in Canada; and
• (b) the licensee must meet the requirements for a holder of a patent agent licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) training,
  • (ii) being of good character,
  • (iii) physical and mental fitness, and
  • (iv) fees.

Applicant for patent agent in training licence — requirements

6 For the purposes of subsection 26(2) of the Act, an individual who makes an application for a patent agent in training licence must

• (a) be resident in Canada; and
• (b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) education,
  • (ii) being of good character,
  • (iii) physical and mental fitness,
  • (iv) fees, and
  • (v) the provision of administrative forms.

Patent agent in training licence — conditions

7 A patent agent in training licence is subject to the following conditions:

• (a) the licensee must be resident in Canada; and
• (b) the licensee must meet the requirements for a holder of a patent agent in training licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) training,
  • (ii) being of good character,
  • (iii) physical and mental fitness, and
  • (iv) fees.

Trademark Agent Licence

Applicant for trademark agent licence — requirements

8 For the purposes of subsection 29(1) of the Act, an individual who makes an application for a trademark agent licence must

• (a) be resident in Canada; and
• (b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) training,
  • (ii) qualifying examinations,
  • (iii) being of good character,
  • (iv) physical and mental fitness, and
  • (v) fees.

Trademark agent licence — conditions

9 A trademark agent licence is subject to the following conditions:

• (a) the licensee must be resident in Canada; and
• (b) the licensee must meet the requirements for a holder of a trademark agent licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) training,
  • (ii) being of good character,
  • (iii) physical and mental fitness, and
  • (iv) fees.

Applicant for trademark agent in training licence — requirements

10 For the purposes of subsection 29(2) of the Act, an individual who makes an application for a trademark agent in training licence must

• (a) be resident in Canada; and
• (b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) education,
  • (ii) being of good character,
  • (iii) physical and mental fitness,
  • (iv) fees, and
  • (v) the provision of administrative forms.

Trademark agent in training licence — conditions

11 A trademark agent in training licence is subject to the following conditions:

• (a) the licensee must be resident in Canada; and
• (b) the licensee must meet the requirements for a holder of a trademark agent in training licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
  • (i) training,
  • (ii) being of good character,
  • (iii) physical and mental fitness, and
  • (iv) fees.

Investigations

Application to Federal Court by motion

12 For the purposes of sections 44 to 48 of the Act, an application may be made to the Federal Court by motion.

Prescribed period

13 For the purposes of paragraph 46(1)(d) of the Act, the prescribed period is the period of 10 days after the day on which the investigator removes the sealed package containing the document or thing.

Federal Court orders

14 (1) For the purposes of subsection 46(5) of the Act, the Federal Court may make orders respecting the retention, opening or return of sealed packages.

Application

(2) An interested person may apply to the Federal Court for an order respecting the retention, opening or return of sealed packages.

Conditions for opening sealed package

(3) Subject to any order made by the Federal Court under subsection (1), a sealed package may be opened if

• (a) 30 days have elapsed from the day on which the investigator took possession of the sealed package;
• (b) consent is given by the owner of the document or thing in the sealed package and, if applicable, the holder of a privilege with respect to that document or thing; or
• (c) the sealed package was returned to the owner of the document or thing in that sealed package.

Applicable period

15 For the purposes of subsection 47(1) of the Act, the applicable period is the one that ends the latest among the following periods:

• (a) the period of 30 days after the day on which the investigator took possession of the document or thing,
• (b) the period of 30 days after the day on which the sealed package containing that document or thing was, or could have been, opened, if applicable, and
• (c) the period agreed to by the owner of the document or thing in the sealed package and, if applicable, the holder of a privilege with respect to that document of thing.

Unauthorized Representation — Exemptions

Representation before Patent Office

16 Subsection 70(1) of the Act does not apply to

• (a) a person who is permitted to represent another person before the Patent Office under the Patent Rules or under the Patent Act or any other Act of Parliament or any Act of the legislature of a province;
• (b) an employee who is representing their employer, unless their employer is representing another person; or
• (c) a person who is performing an administrative activity, if they have the permission of a patent agent, whose licence is not suspended, to perform that activity.

Representation before Office of Registrar of Trademarks

17 Subsection 71(1) of the Act does not apply to

• (a) a person who is permitted to represent another person before the Office of the Registrar of Trademarks under the Trademarks Regulations or under the Trademarks Act or any other Act of Parliament or any Act of the legislature of a province;
• (b) an employee who is representing their employer, unless their employer is representing another person; or
• (c) a person who is performing an administrative activity, if they have the permission of a trademark agent, whose licence is not suspended, to perform that activity.

Authorization to Make By-Laws

Authority for College to make by-laws

18 The College is authorized to make by-laws with respect to

• (a) the conditions that are to be imposed on licences or classes of licences, including a condition that requires a licensee to be of good character;
• (b) the requirements that individuals or classes of individuals must meet under section 26 or 29 of the Act, including requirements in relation to qualifying examinations, to fees with respect to qualifying examinations and to being of good character;
• (c) the determination as to what constitutes good character for the purposes of the conditions and requirements referred to in paragraphs (a) and (b), respectively; and
• (d) restrictions on the entitlement of licensees or classes of licensees to provide representation under section 27 or 30 of the Act.

Transitional Provisions

Deemed holder of patent agent in training licence

19 (1) An individual is deemed to hold a patent agent in training licence issued on the first day of the period described in subsection (2) if that individual

• (a) is working in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent;
• (b) is supervised, in respect of that work,
  • (i) by an individual who holds a patent agent licence or who, before the day on which these Regulations come into force, is a patent agent, or
  • (ii) by an individual who is responsible for a legal clinic associated with a Canadian law school;
• (c) is resident in Canada; and
• (d) provides notice to the College that they meet the requirements of paragraphs (a) to (c).

Period for purposes of subsection (1)

(2) The applicable period, for the purposes of subsection (1), is the period that begins on the later of the day on which these Regulations come into force and the day on which the notice referred to in paragraph (1)(d) is received and ends on the earliest of

• (a) the day on which the individual is issued a patent agent licence or a patent agent in training licence under section 26 of the College of Patent Agents and Trademark Agents Act,
• (b) the day on which the applicable licence referred to in subsection (1) is surrendered,
• (c) the day on which the applicable licence referred to in subsection (1) is revoked, and
• (d) the day that is one year after the day on which these Regulations come into force.

Deemed holder of trademark agent in training licence

20 (1) An individual is deemed to hold a trademark agent in training licence issued on the first day of the period described in subsection (2) if that individual

• (a) is working in the area of Canadian trademark law and practice, including the preparation and prosecution of applications for the registration of trademarks;
• (b) is supervised, in respect of that work,
  • (i) by an individual who holds a trademark agent licence or who, before the day on which these Regulations come into force, is a trademark agent, or
  • (ii) by an individual who is responsible for a legal clinic associated with a Canadian law school;
• (c) is resident in Canada; and
• (d) provides notice to the College that they meet the requirements of paragraphs (a) to (c).

Period for purposes of subsection (1)

(2) The applicable period, for the purposes of subsection (1), is the period that begins on the later of the day on which these Regulations come into force and the day on which the notice referred to in paragraph (1)(d) is received and ends on the earliest of

• (a) the day on which the individual is issued a trademark agent licence or a trademark agent in training licence under section 29 of the Act,
• (b) the day on which the applicable licence referred to in subsection (1) is surrendered,
• (c) the day on which the applicable licence referred to in subsection (1) is revoked, and
• (d) the day that is one year after the day on which these Regulations come into force.
  

Qualifying examination for patent agents

21 If, before the day on which these Regulations come into force, an individual sat for a paper of the qualifying examination for patent agents and, on that day, the final mark for that paper was not yet determined,

• (a) the Examining Board established under section 20 of the Patent Rules, as they read immediately before the day on which these Regulations come into force, must mark that paper; and
• (b) the individual may meet the requirements of subsection 26(1) of the College of Patent Agents and Trademark Agents Act by passing that qualifying examination and paying the fee established for that purpose by the by-laws made by the Board, if applicable.
  

Qualifying examination for trademark agents

22 If, before the day on which these Regulations come into force, an individual sat for a qualifying examination for trademark agents and, on that day, the final mark for that examination was not yet determined,

• (a) the examining board established under section 17 of the Trademarks Regulations, as they read immediately before the day on which these Regulations come into force, must mark that examination; and
• (b) the individual may meet the requirements of subsection 29(1) of the College of Patent Agents and Trademark Agents Act by passing that examination and paying the fee established for that purpose by the by-laws made by the Board, if applicable.
  

Coming into Force

S.C. 2018, c. 27, s. 247

23 These Regulations come into force on the day on which paragraphs 76(1)(c) to (f), (h) and (i) of the College of Patent Agents and Trademark Agents Act come into force, but if they are registered after that day, they come into force on the day on which they are registered.