College of Patent Agents and Trademark Agents Regulations: SOR/2021-129

Canada Gazette, Part II, Volume 155, Number 13

Registration
SOR/2021-129 June 10, 2021

COLLEGE OF PATENT AGENTS AND TRADEMARK AGENTS ACT

P.C. 2021-526 June 10, 2021

His Excellency the Administrator of the Government of Canada in Council, on the recommendation of the Minister of Industry, pursuant to paragraph 46(1)(d) and sections 72, 76 and 86 of the College of Patent Agents and Trademark Agents Act footnote a, makes the annexed College of Patent Agents and Trademark Agents Regulations.

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

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

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

Patent agent licence — conditions

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

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

Patent agent in training licence — conditions

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

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

Trademark agent licence — conditions

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

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

Trademark agent in training licence — conditions

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

Investigations

Application to Federal Court

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

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 investigator or any interested person may apply to the Federal Court for an order referred to in subsection (1).

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

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:

Unauthorized Representation — Exemptions

Representation before Patent Office

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

Representation before Office of Registrar of Trademarks

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

Authorization to Make By-laws

Authority for College to make by-laws

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

Registers — Additional Information

Register of Patent Agents — additional information

19 (1) For the purposes of paragraph 28(1)(f) of the Act, the Registrar must include in the Register of Patent Agents the name and contact information of an individual who

Register of Patent Agents — annual requirement

(2) In order to maintain their name in the Register, an individual referred to in subsection (1) must continue to meet the requirements of paragraph of (1)(a) and must in each year, within the period established by by-laws made by the Board, provide to the Registrar a statement signed by the individual setting out their country of residence and declaring that they are authorized to act as a patent agent under the law of that country.

Register of Trademark Agents — additional information

20 (1) For the purposes of paragraph 31(1)(f) of the Act, the Registrar must include in the Register of Trademark Agents the name and contact information of an individual who

Register of Trademark Agents — annual requirement

(2) In order to maintain their name in the Register, an individual referred to in subsection (1) must continue to meet the requirements of paragraph (1)(a) and must in each year, within the period established by by-laws made by the Board, provide to the Registrar a statement signed by the individual setting out their country of residence and declaring that they are authorized to act as a trademark agent under the law of that country.

Transitional Provisions

Deemed holder of patent agent in training licence

21 (1) An individual is deemed to hold a patent agent in training licence during the period described in subsection (2) if that individual

Period for purposes of subsection (1)

(2) For the purpose of subsection (1), the applicable period 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

Deemed holder of trademark agent in training licence

22 (1) An individual is deemed to hold a trademark agent in training during the period described in subsection (2) if that individual

Period for purposes of subsection (1)

(2) For the purpose of subsection (1), the applicable period 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

Qualifying examination for patent agents

23 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,

Qualifying examination for trademark agents

24 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,

Patent agent licence — requirements for former patent agent

25 An individual who is resident in Canada, who has passed the qualifying examination for patent agents and who was a former patent agent whose name was removed under subsection 23(2) of the Patent Rules from the register of patent agents kept under section 15 of the Patent Act, as those provisions read immediately before the day on which these Regulations come in to force, is considered to meet the requirements for a patent agent licence if

Trademark agent licence — requirements for former trademark agent

26 An individual who is resident in Canada, who has passed the qualifying examination for trademark agents and who was a former trademark agent whose name was removed under subsection 20(2) of the Trademarks Regulations from the list of trademark agents kept under section 28 of the Trademarks Act, as those provisions read immediately before the day on which these Regulations come into force, is considered to meet the requirements for a trademark agent licence if

Request deemed to be made — patent agents

27 If, on the day before the day on which these Regulations come into force, the name of an individual was on the register of patent agents in accordance with paragraph 22(b) of the Patent Rules, as it read immediately before the day on which these Regulations come into force, the individual is deemed to have made the request referred to in paragraph 19(1)(b) of these Regulations on the day on which these Regulations come into force.

Request deemed to be made — trademark agents

28 If, on the day before the day on which these Regulations come into force, the name of an individual was on the list of trademark agents in accordance with paragraph 19(b) of the Trademarks Regulations, as it read immediately before the day on which these Regulations come into force, the individual is deemed to have made the request referred to in paragraph 20(1)(b) of these Regulations on the day on which these Regulations come into force.

Coming into Force

S.C. 2018, c. 27, s. 247

29 These Regulations come into force on the day on which paragraph 76(1)(c) 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.

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 the 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 College cannot become operational until the necessary requirements under the Act are prescribed in regulation and the authority for agent regulation is transferred from the existing regulator for the profession, the Canadian Intellectual Property Office (CIPO), to the College. Therefore, developing regulations and making consequential amendments to the Patent Rules and the Trademarks Regulations are required. These regulations are necessary before the Act may become fully 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 IP 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 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 (the 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 College of Patent Agents and Trademark Agents Regulations, the Rules Amending the Patent Rules and the Regulations Amending the Trademarks Regulations (the regulations) 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 regulations will facilitate the transfer of responsibility for IP agent oversight from CIPO to the new College. In addition, the College of Patent Agents and Trademark Agents Regulations will 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 College of Patent Agents and Trademark Agents Regulations (the Regulations) 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 Regulations allow the College to establish its own appointment process but 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 nor employed by the federal government.

The Regulations 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 Regulations specify that members of this committee be subject to a conflict of interest policy established by the board of directors and that membership on any such committee include representation from CIPO, and they restrict membership from any individual who is a member of an advocacy group for the agent profession. CIPO's continued involvement will ensure that testing remains current with its standard practices, rules, and guidelines that may be updated from time to time.

Licensing requirements

The College is authorized by the 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 is given the authority to make by-laws in relation to any training prerequisites, qualifying exams, good character and fitness requirements, and fees.

Canadian residency requirement

The Regulations set a Canadian residency requirement as both a licensing requirement and a condition for maintaining a licence.

Non-resident agents, or foreign practitioners, listed on the Register of Patent Agents or list of trademark agents maintained by CIPO have limited powers and must appoint an associate agent who is a resident of Canada to conduct most business interactions with CIPO. These non-resident agents, or foreign practitioners, will continue to be listed on the Register maintained by the College and they will maintain the powers they currently possess.

Investigations

The Regulations 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 Regulations specify that an application to the Federal Court related to the conduct of an investigation may be made by way of notice of application. The Regulations 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) and clarify that a sealed package containing a document or thing over which privilege has been asserted may only be opened by the investigator by order of the Federal Court or with the consent of the holder of the privilege.

Unauthorized representation exemptions

The Act prohibits a person (other than a licensed agent whose licence is not suspended or a 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 Regulations 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 Trademarks Regulations. The exemptions 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

The Regulations include transitional provisions that ensure individuals who are currently working in an apprentice or training capacity are deemed to hold the new agent in training licence. This ensures 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. These temporary licences will expire on the earliest of the following dates: one year following the coming into force of the Regulations, the date licence is surrendered, the date licence is revoked, or the date trainee is issued a licence by the College.

Additional transitional measures are included to manage the transfer of the examination process. The Regulations provide that the current examining board (established under the Patent Rules and the Trademarks Regulations) will 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.

Agents on CIPO's Register or list currently have a one-year reinstatement period to be added back to the Register or list if removed, with minimal administrative burden. A transitional provision allows individual agents who are resident in Canada and still within their reinstatement period at the time the College becomes functional to do the same.

Rules Amending the Patent Rules and Regulations Amending the Trademarks Regulations

The Rules Amending the Patent Rules and the Regulations Amending the Trademarks Regulations (the amendments) make the following necessary changes to the Patent Rules and the Trademarks Regulations to facilitate the transfer of responsibilities to the College.

Agent representation

Under the Act, only individuals are recognized as a patent or trademark agent, although previously, a patent or trademark agent could be an individual or a firm (if the firm has at least one member who is an agent). As per the amendments, parties will 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 will 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 amendments 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 or patent agents of the same firm have been appointed, it is understood that the actual composition of that firm might change over time. Consequently, the amendments specify that where all the patent or 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 patent or trademark agent after the appointment, will be deemed appointed on the day they became an agent.

Patent Rules

The amendments 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 amendments 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 the applicant, patentee, or other person, or by a registered foreign practitioner 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, or other person, or by a registered foreign practitioner 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 amendments 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 (either the single appointed patent agent or if all agents at a firm are appointed, any of the agents at that firm). 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 or deemed appointed as the patent agent or associate patent agent, a communication sent by the Office to the firm will be considered to have been sent to all of the agents at the firm.

The 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 will 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 will be deemed to be revoked as of the day the agent leaves the firm.

The amendments specify that with the permission of an appointed patent agent or appointed associate patent agent, a registered foreign practitioner 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 also allow a registered foreign practitioner authorized by the applicant or patentee to sign a document appointing or revoking the appointment of a patent agent. Finally, the amendments allow a registered foreign practitioner 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 the powers of foreign patent agents, who in practice will be the registered foreign practitioners authorized by the applicant or patentee to take these actions.

Trademarks Regulations

With firms no longer eligible to be agents, the amendments 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 amendments specify that, if the appointment applies to all agents that are members of a firm, the notice must include the name and postal address of the firm.

The amendments 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 will be deemed appointed.

The amendments 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 amendments specify that any communication submitted by an agent must include the name of that agent, except in cases where the correspondence may be submitted by any person authorized by an applicant or patentee.

Patent Rules

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

Written correspondence intended for the Commissioner

The amendments require that communications sent by a patent agent must include the agent's name. If a patent agent's name is not provided, the Commissioner will send a notice requiring the sender of the communication to (1) provide their name, and (2) request that the Commissioner have regard to the communication, within three months of the date of the notice. As long as these requirements are met, and the person who sent the communication was indeed a patent agent as of the day that they sent the communication, the Commissioner will have regard to the communication as though it was received by a patent agent on the date that it was originally submitted. Should these requirements not be met within the required time frame, or if the sender of the communication was not a patent agent at the time that they sent the communication, the communication will be disregarded by the Commissioner.

The above provision will not prevent administrative employees at agent firms from taking actions that may be taken by any person authorized by an applicant or patentee, such as the payment of a maintenance fee.

Communication by the Commissioner sent before suspension or revocation

The amendments provide that communications sent to agents whose licences are suspended, revoked or surrendered will 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 will be deemed not sent. Second, if the communication is sent on the date of the suspension, revocation or surrender, the communication will be deemed not sent. Consequently, the amendments provide for added protection for applicants and patentees.

Trademarks Regulations

The amendments specify that communications intended for the Registrar of Trademarks (the Registrar) submitted by an agent must 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 include the agent's name and, if applicable, the name of its firm. Communications submitted by an agent that do not include this information will not be considered by the Registrar. Prior to these amendments, the Trademarks Regulations only required that communications intended for the Registrar be addressed to the Registrar of Trademarks.

Written communications intended for the Registrar of Trademarks

The amendments specify that communications to the Registrar of Trademarks must be addressed to the Registrar of Trademarks and if submitted by an agent, must include their name. In the case where all agents of the same firm have been appointed, the name of the firm must be provided if the communication is submitted by an agent. Subject to the exceptions listed in section 25 of the Trademarks Regulations, any anonymously submitted correspondence, correspondence submitted in the name of a firm only, or correspondence that otherwise does not meet the requirements as set out in the regulations, will not be considered by the Registrar and may be resubmitted. Should a communication be resubmitted after a prescribed deadline, a request for a retroactive extension of time under subsection 47(2) of the Trademarks Act may be required.

Definitions

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

Administrative amendments

Considering CIPO will 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 amendments 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 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 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 will 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 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.

Summary of comments received following prepublication in the Canada Gazette, Part I

On March 13, 2021, the regulations were prepublished in the Canada Gazette, Part I, for a public comment period of 30 days. ISED and CIPO received a total of 27 submissions from IP firms and agents, businesses, IP associations, academia and other interested parties. ISED and CIPO also received additional feedback during the course of various stakeholder meetings held between February and April of 2021. The comments and feedback received were considered in finalizing the regulations and are summarized below.

Stakeholders expressed general support for the transfer of authority for agent regulation from CIPO to the College and its operationalization through the Regulations and consequential changes to the Patent Rules and Trademarks Regulations. However, some substantive concerns were raised. After careful consideration of all comments received, additional changes have been made to the Regulations, the Patent Rules and the Trademarks Regulations to address some of these concerns and to correct some minor technical defects. The comments and feedback received are summarized below.

Residency

Some stakeholders raised concerns about the proposed residency requirement, in part due to the potential impact it may have on a subset of Canadian agents who currently also represent Canadian clients before the United States Patent and Trademark Office.

In response, the Regulations, the Patent Rules and the Trademarks Regulations have been amended to clarify that the status quo will be maintained by allowing foreign agents to continue to exercise the practice rights they currently have in Canada and to be listed on the Register.

Trainees

Multiple stakeholders from the agent profession also commented that provisions in the Regulations may allow students who are not supervised by an agent to act as trainees, and that this would be inappropriate.

ISED clarified that these provisions are intended to recognize that students in IP clinics may currently be working under the supervision of qualified lawyers or IP professors, rather than agents. Absent these provisions, students may be at risk of violating the criminal prohibitions in the Regulations against agent practice. These provisions allow a temporary one-year period for the College to study the issue. They will also enable the public to continue accessing these low- or no-cost services while this work is ongoing. In view of this, no changes have been made to address this concern.

Committees

Some stakeholders requested removal of the requirement for registration committee members not to be members of agent advocacy groups, as they felt it may limit the expertise available to participate in the registration committee.

This requirement has been maintained, as there may be a perception of bias that if responsible for registration, members of an advocacy group for the profession may benefit from a high barrier to entry to the profession in the form of reduced competition. Any perceived bias in the entrance process runs the risk of causing a loss of confidence in the profession, which could lead to a reduction in the number of agent candidates (persons attempting to become an agent) and a loss of public confidence in the profession. In view of this, no changes have been made to address this concern.

Some stakeholders have implied that the reference to “members” in paragraph 3(a) of the Regulations required all members of the registration committee to be members of the College.

The reference to “members” was changed to “individuals” to clarify that anyone may be a member of the committee, including individuals who are not members of the College.

Fitness

Some stakeholders expressed concerns that the “physical and mental fitness” standard could be discriminately applied and that fitness is a broader concept than just physical and mental attributes.

In order to address these concerns, the requirements related to “physical and mental fitness” have been modified to a general standard (i.e. a fitness to practise standard) and an ability for the College to define “fitness to practise” through by-laws has been added to the Regulations.

Exception for acts authorized under provincial law

Some stakeholders expressed concern about the exception to the criminal prohibition for acts authorized by provincial law, as they believed it may inadvertently allow provinces to create additional exceptions to the criminal prohibition.

This provision has been maintained, as it is required to address situations where someone can act for another person under provincial law, such as trustees, estate executors or guardianships. Without this provision, these actors may inadvertently be captured by the criminal prohibitions.

Investigations

Some stakeholders expressed concern with the provision allowing investigators to open a sealed package after 30 days unless the Federal Court makes an order prohibiting the opening of the package, as they believed it may not sufficiently protect privileged information.

To address these concerns, amendments to the Regulations have been made to require the investigator to receive the permission of the privilege holder or an order from the Federal Court to open a sealed package.

Technical changes

Some stakeholders made recommendations to change certain terms used in the regulations to be more technically accurate.

To address these recommendations, the reference to “motion” was removed from the provision setting out the procedure for handling solicitor-client-privileged material, as it was pointed out during consultations that it is more appropriate to proceed by way of notice of application in this context. In addition, references to “Canadian law school” were changed to “Canadian faculty of law” within the provisions relating to trainee licences, as it was pointed out that this is the more appropriate terminology to use.

Day-to-day practices in communication with CIPO

Stakeholders sought clarifications as to the practical day-to-day operations of communicating with CIPO. They cited, in particular, issues with the practicality of notifying CIPO of any changes to an agent at the firm responsible for receiving outgoing communications from CIPO. Stakeholders also inquired whether a companion document with instructions on the new practices would be published alongside the regulations.

In response, amendments have been made to the regulations to now deem that when all the agents of the same firm have been appointed, a communication sent by the Office to the firm will be considered to have been sent to all of the agents at the firm. With respect to instructions, stakeholders were informed of the upcoming communications FAQ and encouraged to submit questions early and in writing so that these could be proactively addressed.

Modern treaty obligations and Indigenous engagement and consultation

The regulations 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 regulations are necessary to fully operationalize the College and bring the Act fully in force.

Amendments to the Patent Rules and Trademarks Regulations are the only means to implement changes consequential to provisions in the Act and the 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 Regulations or the amendments.

Regulatory analysis

A cost-benefit analysis was conducted to determine the impact of these regulations on stakeholders. The Regulations and the amendments 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, who will soon be regulated by the College.

The impacts of the regulations 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 regulations will 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 regulations will provide assurance to users of agent services that the advice they seek will be of 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 IP 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 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 regulations contribute to achieving these benefits.

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

Finally, the restrictions barring members of agent advocacy groups from membership on any committee of the College charged with setting professional entry requirements (e.g. exams) will 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 will no longer apply to be listed on the College's register of licensed agents, this will 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 will 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 amendments will 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 will 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 to agents that will be attributable to the regulations, 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 will 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 will result in minimal costs associated with the operational changes required to implement the Regulations. Specifically, CIPO will incur costs by supporting the transfer, addressing any impact to CIPO's existing operations, and establishing the ongoing operational environment for CIPO.

Small business lens

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

One-for-one rule

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

The amendments are considered an “OUT” under the one-for-one rule. This is due to the reduction in the administrative burden for firms. Firms will 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 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 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 individuals who are not licensed agents nor employed by the federal government. The regulations 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 regulations will 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 with regard to these factors.

During the public comment period following prepublication in the Canada Gazette, Part I, stakeholders raised the potential differential negative effects on minority groups. They argued the residency requirement could have a disproportionate adverse effect on minorities due to factors such as race and national or ethnic origin. Stakeholders point out that many Canadian agents that are minorities come from outside of Canada and are more likely to be currently residing, or in the future take residence, outside of Canada. These stakeholders argue that the loss of agents' ability to appear on the Register for being non-resident could have a disproportionate adverse effect on them.

To address this concern, amendments were made to the residency requirement in order to clarify that the status quo will be maintained. The Government does not anticipate differential treatment resulting from the Regulations. Consequently, no GBA+ impacts have been identified as a result of the Regulations.

Implementation, compliance and enforcement, and service standards

The regulations come into force on the day on which paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act comes into force, but if they are registered after that day, they come into force on the day on which they are registered.

CIPO will perform stakeholder outreach to announce the publication of the final regulations and their coming-into-force date. 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 June 28, 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 regulations. There are transitional measures in the Act to preserve the status of current agents. Individuals working as trainees in the area of Canadian patent and/or trademark law and practice and who meet the requirements under the transitional measures of the Regulations can notify the College accordingly to be recognized as the “deemed holder” of a patent agent and/or trademark agent in training licence.

CIPO is collaborating with the College to avoid the risk that the next examination cycle is 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 is required for the Regulations and there will be no change in the manner that the Patent Rules and the Trademarks Regulations are enforced.

There are no service standards associated with the regulations.

Contacts

Doug Milne
Acting Director General
Corporate Strategies and Services
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Telephone: 819‑934‑2426
Email: Doug.Milne2@canada.ca

Jennifer Miller
Director General
Marketplace Framework Policy Branch
Innovation, Science and Economic Development Canada
Telephone: 343‑291‑2133
Email: jennifer.miller@canada.ca