Code of Professional Conduct for Patent Agents and Trademark Agents Regulations: SOR/2021-165
Canada Gazette, Part II, Volume 155, Number 14
SOR/2021-165 June 24, 2021
COLLEGE OF PATENT AGENTS AND TRADEMARK AGENTS ACT
The Minister of Industry, pursuant to subsection 33(1) of the College of Patent Agents and Trademark Agents Act footnote a, makes the annexed Code of Professional Conduct for Patent Agents and Trademark Agents Regulations.
Ottawa, June 23, 2021
Minister of Industry
Code of Professional Conduct for Patent Agents and Trademark Agents Regulations
1 The following definitions apply in these Regulations.
- means the College of Patent Agents and Trademark Agents Act. (Loi)
- has the same meaning as in section 2 of the Act. (titulaire de permis)
Code of professional conduct established
2 The Code of Professional Conduct for Licensees set out in the schedule is established for the purpose of subsection 33(1) of the Act.
3 The standards of professional conduct and competence described in the schedule do not apply to a licensee to the extent that those standards would conflict with the licensee's obligations under
- (a) any federal or provincial statute, regulation or code of professional conduct; or
- (b) a code of professional conduct established by a provincial law society or the Chambre des notaires du Québec.
For greater certainty
4 For greater certainty, the standards of professional conduct and competence described in the schedule
- (a) include the standards established by the fundamental canon, principles, rules and commentaries set out in the schedule; and
- (b) are to be interpreted in a manner that is consistent with the advisory portions of the fundamental canon, principles, rules and commentaries set out in the schedule.
Coming into Force
S.C. 2018, c. 27, s. 247
5 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.
(Sections 2 to 4)
Code of Professional Conduct for Licensees
1 The following definitions apply in this schedule.
- agency services
- means services, as described in section 27 or 30 of the Act, that are associated with the representation of a person. (services d'agent)
- means a patent agent or a trademark agent. (agent)
- CIPO means
- the Canadian Intellectual Property Office, which includes the Patent Office and the Office of the Registrar of Trademarks. (OPIC)
- client means
- a person who consults an agent and on whose behalf the agent provides or agrees to provide representation under section 27 or 30 of the Act or who, having consulted an agent, reasonably concludes that the agent has agreed to provide representation on their behalf. It includes a client of a firm of which the agent is a partner or associate, whether or not the agent handles the client's work. (client)
- means a sole proprietorship, corporation, partnership, limited liability partnership or professional corporation. (cabinet)
- includes an individual and a corporation or other entity. (personne)
- means the profession of patent agent or trademark agent as those terms are defined in section 2 of the Act. (profession)
2 The most important attribute of an agent is integrity. That principle is implicit in this Code and in each of the rules and commentaries set out in it. Irrespective of the possibility of formal sanction under any of the rules in this Code, an agent must at all times conduct themselves with integrity and competence in accordance with the highest standards of the profession in order to retain the trust, respect and confidence of members of the profession and the public.
An agent owes the client a duty to be competent to perform any agency services and must perform all such services undertaken on a client's behalf to the standard of a competent agent.
1 An agent must not undertake or continue any matter unless they believe that they are competent to handle it or believe that they could become competent to do so without undue delay, risk or expense to the client and without associating with another agent who is competent to handle the matter. The agent must promptly advise the client whenever the agent reasonably believes that they may not be competent to handle a particular matter. If consulted about such a matter, the agent must
- (a) decline to act;
- (b) obtain the client's consent for the agent to become competent without undue delay, risk or expense to the client; or
- (c) obtain instructions from the client to retain, consult or collaborate with another agent who is competent to handle the matter.
2 An agent fails to meet standards of professional competence if
- (a) there are deficiencies in
- (i) their knowledge, skill or judgment,
- (ii) their attention to the interests of clients,
- (iii) the records, systems or procedures of their professional business, or
- (iv) any other aspects of their professional business; and
- (b) the deficiencies referred to in paragraph (a) give rise to a reasonable apprehension that the quality of service they provide to clients may be adversely affected.
3 An agent must assume complete professional responsibility for all agency services that they provide and maintain direct supervision over staff and assistants such as agents in training, students, clerks and legal assistants to whom they may delegate particular tasks and functions.
4 An agent must maintain appropriate office procedures and systems, including systems for meeting the requirements for all deadlines arising from client matters and for handling and maintaining client affairs without prejudicing them.
5 An agent must keep abreast of developments in the branches of law relating to the agent's practice by engaging in study and education. In addition, an agent must keep abreast of developments in the law relating to patent agent privilege and trademark agent privilege.
An agent is held out as knowledgeable, skilled and capable in the subject matter of their agency. Accordingly, the client is entitled to assume that the agent has the ability and capacity to deal adequately with all agency matters to be undertaken on the client's behalf. Competence of an agent is founded upon both ethical and applicable legal principles. Competence involves more than an understanding of agency legal principles. It involves an adequate knowledge of the practice and procedures by which such principles can be effectively applied. To ensure that they have that knowledge, the agent must keep abreast of developments in all areas of intellectual property law and practice in which the agent practises.
This rule does not require a standard of perfection. An error or omission, even though it might be actionable for damages in negligence, professional fault or contract, will not necessarily constitute a failure to maintain the standard of professional competence described by the rule. However, evidence of gross neglect in a particular matter, or a pattern of neglect or mistakes in different matters, may be evidence of such a failure, regardless of tort or extracontractual civil liability. While damages may be awarded for negligence, incompetence can give rise to the additional sanction of disciplinary action.
In deciding whether the agent has employed the requisite degree of knowledge and skill in a particular matter, relevant factors that are to be taken into account are
- (a) the complexity and specialized nature of the matter;
- (b) the agent's general experience;
- (c) the agent's training and experience in the technical field and applicable patent and trademark law;
- (d) the preparation and study that the agent was able to dedicate to the matter; and
- (e) whether it would have been appropriate or feasible to refer the matter to, or associate or consult with, an agent of established competence in the field in question.
An agent who practises alone or operates a branch office or a part-time office must ensure that all matters requiring an agent's professional skill and judgment are dealt with directly by an agent qualified to do the work.
An agent has a duty to preserve the confidences and secrets of their clients.
1 An agent must hold in strict confidence all information concerning the business and affairs of the client acquired in the course of the professional relationship and must not disclose such information unless the disclosure is expressly or impliedly authorized by the client, required by law or by order of a court or otherwise permitted or required by this Code.
In order to facilitate open communication between client and agent, it is important that the client feel completely secure that such communication will be held in strict confidence by the agent.
This rule must be distinguished from the statutory rule of privilege concerning oral or documentary communications between the client and the agent. The ethical rule is wider and applies without regard to the nature or source of the information or the fact that others may have knowledge of the information.
2 An agent must exercise reasonable care to ensure the privacy and confidentiality of such information.
Sole practitioners who practise in association with other agents in cost-sharing, space-sharing or other arrangements must be mindful of the risk of advertent or inadvertent disclosure of confidential information even if the agents institute systems and procedures that are designed to insulate their respective practices. The issue may become more significant if an agent in the association represents a client on the other side of a dispute with the client of another agent in the association. Apart from conflict of interest issues such a situation may raise, the risk of such disclosure may depend on the extent to which the agents' practices are integrated, physically and administratively, in the association.
Generally, unless the nature of the matter requires such disclosure, an agent must not disclose that they have been retained by a person about a particular matter or consulted by a person about a particular matter, whether or not an agent-client relationship has been established between them.
An agent must take care to avoid disclosure to one client of confidential information concerning or received from another client and must decline employment that might require such disclosure.
In some situations, the authority of the client to disclose may be inferred. For example, it is implied that an agent may, unless the client directs otherwise, disclose the client's affairs to partners, associates, administrative staff and other individuals in the agent's firm. But this implied authority to disclose places the agent under a duty to impress upon such individuals the importance of such non-disclosure (both during their employment and afterwards) and requires the agent to take reasonable care to prevent their disclosing or using any information that the agent is bound to keep in confidence.
3 The agent must continue to hold in confidence such information despite conclusion of the matter or termination of the professional relationship with the client.
An agent owes a duty of confidentiality to every client without exception and whether or not the client is a continuing or casual client. The duty survives the professional relationship and continues indefinitely after the agent has ceased to act for the client.
4 An agent must guard against participating in or commenting on speculation concerning the client's affairs or business, even if certain related facts are public knowledge.
5 An agent must not disclose any confidential information that is disclosed to them concerning a client's business or affairs regardless of its source, other than facts that are a matter of public record.
6 When disclosure is required by law or by order of a court, the agent must always be careful not to disclose more information than is required.
7 An agent may disclose confidential information to a legal counsel in order to secure legal or ethical advice about the agent's proposed conduct.
8 An agent may disclose confidential information in order to defend against any allegations, but must not disclose more information than is required, if it is alleged that the agent or the agent's associates or employees
- (a) have committed a criminal offence involving a client's affairs;
- (b) are civilly liable with respect to a matter involving a client's affairs;
- (c) have committed acts of professional negligence; or
- (d) have committed professional misconduct or are incompetent.
9 An agent may disclose confidential information in order to establish or collect their fees, but must not disclose more information than is required.
10 An agent may disclose confidential information to the extent reasonably necessary to detect and resolve conflicts of interest arising from the agent's change of employment or from changes in the composition or ownership of a firm, but only if the information disclosed does not compromise any privileged communication between the agent and their client or otherwise prejudice the client.
As a matter related to clients' interests in maintaining a relationship with the agent of choice and protecting client confidences, agents in different firms may need to disclose limited information to each other to detect and resolve conflicts of interest, such as when an agent is considering an association with another firm, two or more firms are considering a merger or an agent is considering the purchase of a firm.
In these situations (see subsection 7(1) of Part 3), this section permits agents and firms to disclose limited information. That type of disclosure would only be made once substantive discussions regarding the new relationship have taken place.
The exchange of information between the firms needs to be carried out in a manner consistent with the obligations of the transferring agent and of the new firm to protect client confidentiality and privileged information and avoid any prejudice to the client. It ordinarily would include no more than the names of the persons involved in a matter or matters. Depending on the circumstances, it may include a brief summary of the general issues involved and information about whether the representation has come to an end.
The disclosure should be made to as few agents at the new firm as possible, ideally to just one agent of the new firm such as a designated conflicts agent. The information must always be disclosed only to the extent reasonably necessary in order to detect and resolve conflicts of interest that might arise from the possible new relationship.
As the disclosure is made on the basis that it is solely for the purpose of checking conflicts when agents are transferring between firms and for establishing confidentiality screens, the disclosure must be accompanied by an undertaking by the new firm to the former firm that it
- (a) will limit access to the disclosed information;
- (b) will not use the information for any purpose other than detecting and resolving conflicts; and
- (c) will return, destroy or store in a secure and confidential manner the information provided once appropriate confidentiality screens are established.
The client's consent to disclosure of such information may be specifically addressed in a retainer agreement between the agent and the client. However, in some circumstances, because of the nature of the retainer, the transferring agent and the new firm may be required to obtain the consent of clients to the disclosure or the disclosure of any other information about the clients. That is especially the case if disclosure would compromise privilege or otherwise prejudice the client (for example, disclosure of the fact that a corporate client is seeking due diligence advice relating to a corporate takeover that has not yet been publicly announced).
11 An agent may disclose confidential information, but must not disclose more information than is required, when they believe on reasonable grounds that there is an imminent risk of death or serious bodily harm to any individual and the disclosure is necessary in order to prevent it.
12 An agent also owes a duty of confidentiality to any person seeking advice or assistance on a matter invoking the agent's professional knowledge, even if the agent does not render an account or agree to represent that person. An agent and client relationship is often established without formality. An agent must be cautious in accepting confidential information on an informal or preliminary basis, since possession of the information may prevent the agent from subsequently acting for another party in the same matter or a related matter (see Part 3).
In each matter, an agent's judgment and loyalty to the client's interest must be free from compromising influences.
Conflicts of Interest
1 An agent must not act for a person if there is a substantial risk that the agent's loyalty to or representation of that person would be materially and adversely affected by the agent's own interest or the agent's duties to another client, a former client or any other person (referred to in this Code as a “conflict of interest”), except as permitted under this Code.
As described in this Code, a conflict of interest exists if there is a substantial risk that an agent's loyalty to or representation of a client would be materially and adversely affected by the agent's own interest or the agent's duties to another client, a former client or any other person. The risk must be more than a mere possibility. There must be a genuine, serious risk to the duty of loyalty or to client representation arising from the retainer. A client's interests may be seriously prejudiced unless the agent's judgment and freedom of action on the client's behalf are as free as possible from conflicts of interest.
A client must be assured of the agent's undivided loyalty, free from any material impairment of the agent-client relationship. The relationship may be irreparably damaged if the agent's representation of one client is directly adverse to another client's immediate legal interests. A client may legitimately fear that the agent will not pursue the representation out of deference to the other client and an existing client may legitimately feel betrayed by the agent's representation of a client with adverse interests. The prohibition on acting in such circumstances except with the consent of the clients guards against such outcomes and protects the agent-client relationship.
An agent has a duty of commitment to the client that prevents them from summarily and unexpectedly dropping a client to circumvent conflict of interest rules. A client may legitimately feel betrayed if an agent ceases to act for the client to avoid a conflict of interest.
An agent must examine whether a conflict of interest exists not only from the outset but throughout the duration of a mandate because new circumstances or information may establish or reveal a conflict of interest.
Accordingly, factors for the agent's consideration in determining whether a conflict of interest exists include
- (a) the immediacy of the clients' interests;
- (b) whether the clients' interests are directly adverse;
- (c) the temporal relationship between the matters;
- (d) the significance of the issue to the immediate and long-term interests of the clients involved; and
- (e) the clients' reasonable expectations in retaining the agent for the particular matter or representation.
The following are examples of conflicts of interest:
- (a) an agent acting against a person in one matter while representing that person in some other matter;
- (b) an agent, an associate, a firm partner or a family member having a personal financial interest in a client's affairs or in a matter in which the agent is requested to act for a client such as a partnership interest in a joint business venture with a client;
An agent who owns a small number of shares of a publicly traded corporation would not necessarily have a conflict of interest in acting for the corporation because the ownership of those shares may have no adverse influence on the agent's judgment or loyalty to the client.
(c) an agent having a sexual or close personal relationship with a client;
Such a relationship may conflict with the agent's duty to provide objective, disinterested professional advice to the client. The relationship may obscure whether certain information was acquired in the course of the agent-client relationship and may jeopardize the client's right to have all information concerning their affairs held in strict confidence. The relationship may in some circumstances permit exploitation of the client by their agent. If the agent is a member of a firm and concludes that a conflict exists, the conflict is not imputed to the agent's firm and would be cured if another agent in the firm who is not involved in such a relationship with the client were to handle the client's work.
(d) an agent or their firm acting for a public or private corporation and serving as a director of the corporation; and
Those two roles may result in a conflict of interest or other problems because they may affect the agent's independent judgment and fiduciary obligations or obligations of loyalty and good faith in either role or both roles, obscure whether advice is given in one role or the other and disqualify the agent or the firm from acting for the corporation.
(e) sole practitioners practising with other agents in cost-sharing or other arrangements and representing clients on opposite sides of a dispute.
The fact or the appearance of such a conflict may depend on the extent to which the agents' practices are integrated, physically and administratively.
Conflicts of Interest Exception
2 (1) An agent must not represent a client in a matter if there is a conflict of interest unless there is express or implied consent from all affected clients and the agent reasonably believes that they are able to represent each client without having a material adverse effect upon the representation of or loyalty to the other client.
(2) Express consent must be fully informed and voluntary and given after disclosure of the conflict of interest.
(3) If consent is not given in writing, the following elements must be present in order for consent to be implied:
- (a) the client is a government entity, a financial institution, a publicly traded entity or other similar entity or an entity with in-house legal counsel;
- (b) the matters are unrelated;
- (c) the agent has no relevant confidential information from one client that might reasonably affect the other; and
- (d) the client has consented to agents acting for and against it in unrelated matters.
Disclosure and Consent
Disclosure is an essential requirement for obtaining a client's consent. When it is not possible to provide the client with adequate disclosure because of the confidentiality of the information of another client, the agent must decline to act.
Disclosure means full and fair disclosure of all information relevant to a person's decision in sufficient time for the person to make a genuine and independent decision and the taking of reasonable steps to ensure that the client understands the matters disclosed. The agent must therefore inform the client of the relevant circumstances and the reasonably foreseeable ways that the conflict of interest could adversely affect the client's interests, including the agent's relationships with the parties and any interest in or connection with the matter.
While this rule does not require that an agent advise a client to obtain independent legal advice about the conflict of interest, the agent must recommend such advice in some cases to ensure that the client's consent is informed, genuine and uncoerced, especially if the client is vulnerable or not sophisticated.
Following the required disclosure, the client can decide whether to give their consent. As important as it is to the client that the agent's judgment and freedom of action on the client's behalf not be subject to other interests, duties or obligations, in practice that factor may not always be decisive. Instead, it may be only one of several factors that the client will weigh when deciding whether to give the consent referred to in the rule. Other factors may include, for example, the availability of another agent of comparable expertise and experience, the stage that the matter or proceeding has reached, the extra cost, delay and inconvenience involved in engaging another agent and that agent's lack of familiarity with the client and the client's affairs.
Consent in Advance
An agent may be able to request that a client consent in advance to conflicts of interest that might arise in the future. As the effectiveness of such consent is generally determined by the extent to which the client reasonably understands the material risk that the consent entails, the more comprehensive the explanation of the types of future representations that might arise and the actual and reasonably foreseeable adverse consequences of those representations, the greater the likelihood that the client will have the requisite understanding. A general, open-ended consent will ordinarily be ineffective because it is not reasonably likely that the client will have understood the material risks involved. If the client is an experienced user of the agency services involved and is reasonably informed regarding the risk that a conflict of interest may arise, such consent is more likely to be effective, particularly if, for example, the client is independently represented by legal counsel in giving consent and the consent is limited to future conflicts unrelated to the subject of the representation.
While not a prerequisite to advance consent, in some circumstances it may be advisable to recommend that the client obtain independent legal advice before deciding whether to provide consent. Advance consent must be recorded, for example in a retainer letter.
In some cases consent may be implied rather than expressly granted. The concept of implied consent is applicable in exceptional cases only. Governments, chartered banks and entities that might be considered sophisticated consumers of agency services may accept that agents may act against them in unrelated matters if there is no danger of misuse of confidential information. The more sophisticated the client as a consumer of agency services, the more likely that an inference of consent can be drawn. The mere nature of the client is not, however, a sufficient basis upon which to assume implied consent. The matters must be unrelated, the agent must not possess confidential information from one client that could affect the agent's representation of the other client and there must be a reasonable basis to conclude that the client has accepted that agents may act against it in such circumstances.
3 Despite section 2, an agent must not provide representation to opposing parties in a dispute.
In a dispute, the immediate legal interests of the opposing parties are clearly adverse. If an agent were permitted to act for opposing parties in a dispute, even with their consent, the agent's advice, judgment and loyalty to one client would be materially and adversely affected by the same duties to the other client or clients.
4 When there is no dispute among the clients about the matter that is the subject of the proposed representation, two or more agents in a firm may act for current clients with competing interests and may treat information received from each client as confidential and not disclose it to other clients, if
- (a) the risks of the agents acting in that manner have been disclosed to each client;
- (b) they have recommended to each client that they obtain independent legal advice, including legal advice with respect to the risks of concurrent representation;
- (c) the clients each determine that it is in their best interests that the agents act in that manner and consent to the concurrent representation;
- (d) each client is represented by a different agent in the firm;
- (e) appropriate screening mechanisms are in place to protect confidential information; and
- (f) all agents in the firm withdraw from the representation of all clients in respect of the matter if a dispute arises among the clients and cannot be resolved.
This rule provides guidance on concurrent representation, which is permitted in limited circumstances. Concurrent representation is not contrary to the rule prohibiting representation when there is a conflict of interest if the clients are fully informed of the risks and understand that, if a dispute arises among the clients that cannot be resolved, the agents may have to withdraw, which could result in potential additional costs.
The basis for the advice described in the rule from both the agents involved in the concurrent representation and those giving the required independent legal advice is whether concurrent representation is in the best interests of the clients. Even if all clients consent, the agents must not accept a concurrent retainer if the matter is one in which one of the clients is less sophisticated or more vulnerable than another.
In cases of concurrent representation agents must employ, as applicable, the reasonable screening measures to ensure non-disclosure of confidential information within the firm set out in the rule on conflicts arising from transfer between firms (see section 7).
5 (1) Before an agent acts in a matter or transaction for more than one client, the agent must advise each of the clients that
- (a) the agent has been asked to act for all of them;
- (b) no information received in connection with the matter or transaction from one client can be treated as confidential so far as any of the others are concerned unless the clients instruct otherwise; and
- (c) if a conflict develops and cannot be resolved, the agent cannot continue to act for all of them and may have to withdraw completely from the matter or transaction.
Although this rule does not require that an agent advise clients to obtain independent legal advice before the agent accepts a joint retainer, in some cases, the agent must recommend seeking such advice in order to ensure that the clients' consent to the joint retainer is informed, genuine and uncoerced, especially when one of the clients is less sophisticated or more vulnerable than another.
(2) If an agent has a continuing relationship with a client for whom the agent acts regularly, before the agent accepts a joint retainer for that client and another client in a matter or transaction, the agent must advise that other client of the continuing relationship with the first client and recommend that the other client obtain independent legal advice with respect to the joint retainer.
(3) When an agent has advised the clients as required by subsections (1) and (2) and the parties are content to have the agent act for them, the agent must obtain their consent and confirm that consent in a separate written communication to each client.
Even when all parties concerned consent, an agent must avoid acting for more than one client when it is likely that a contentious issue will arise between them or that their interests, rights or obligations will diverge as the matter progresses.
(4) Except as provided in subsection (5), if a contentious issue arises between clients who have consented to a joint retainer
- (a) the agent must not advise them on the contentious issue and must
- (i) refer the clients to other agents or to legal counsel, or
- (ii) advise the clients of their option to settle the contentious issue by direct negotiation in which the agent does not participate and recommend that the clients each obtain independent legal advice, and
- (b) the agent must withdraw from the joint representation if the contentious issue is not resolved.
If, after the clients have consented to a joint retainer, a contentious issue arises between them or between some of them, the agent is not necessarily precluded from advising them on non-contentious matters.
(5) If clients consent to a joint retainer and agree that if a contentious issue arises the agent may continue to advise one of them, the agent may advise that client about the contentious matter and must refer the other clients to another agent.
This rule does not relieve the agent of the obligation to obtain the consent of the clients when the contentious issue arises if there is or is likely to be a conflict of interest or if the representation on the contentious issue requires the agent to act against one of the clients.
When entering into a joint retainer, the agent must stipulate that if a contentious issue arises the agent will be compelled to cease acting altogether unless, at the time the contentious issue arises, all parties consent to the agent's continuing to represent one of them. However, consent given before the fact may be ineffective since the party granting the consent will not at the time of their consent be in possession of all the relevant information.
Acting Against Former Clients
6 (1) Unless the former client consents, an agent who has acted in a matter for that client must not act against them in
- (a) the same matter;
- (b) any related matter; or
- (c) any other matter, if the agent has relevant confidential information arising from the representation of the former client that may prejudice that client.
This rule prohibits an agent from attacking the work done during the retainer or from undermining the client's position on a matter that was central to the retainer. It is not improper for an agent to act against a former client in a fresh and independent matter wholly unrelated to any work the agent has previously done for that client if previously obtained confidential information is not relevant for that matter.
(2) When an agent has acted for a former client and obtained confidential information relevant to a new matter, another agent in the agent's firm may act in the new matter against the former client if
- (a) the former client consents to the other agent acting in the new matter; or
- (b) the firm has
- (i) taken reasonable measures to ensure that there will be no disclosure of the former client's confidential information by the agent to any other agent, any other member or employee of the firm or any other person whose services the agent or the firm has retained in the new matter, and
- (ii) advised the agent's former client, if requested by the client in the new matter, of the measures taken.
Conflicts Arising from Transfer Between Firms
7 (1) Subsections (2) to (4) apply when an agent transfers from one firm (“former firm”) to another (“new firm”) and the transferring agent or the new firm is aware at the time of the transfer or later discovers that
- (a) it is reasonable to believe that the transferring agent has confidential information relevant to the new firm's matter for its client; or
- (b) the new firm represents a client in the same matter or in a related matter in which the former firm represents its client (“former client”), the interests of those clients in that matter conflict and the transferring agent actually possesses relevant information respecting that matter.
The purpose of this rule is to deal with actual knowledge. Imputed knowledge does not give rise to disqualification.
This rule treats as one firm such entities as a corporation with separate regional intellectual property departments and an interprovincial or international firm. The more autonomous each unit or office is, the easier it should be, in the event of a conflict, for the new firm to obtain the former client's consent or to establish that it is in the public interest that the new firm continue to represent the client in the matter.
(2) If the transferring agent actually possesses confidential information relevant to a matter respecting the former client that may prejudice the former client if disclosed to a member of the new firm, the new firm must cease representing its client in that same matter unless
- (a) the former client consents to the new firm's continued representation of its client in that matter; or
- (b) the new firm has
- (i) taken reasonable measures to ensure that there will be no disclosure of the former client's confidential information by the transferring agent to any member of the new firm, and
- (ii) advised the agent's former client, if requested by its client, of the measures taken.
It is not possible to offer a set of reasonable measures that will be appropriate or adequate in every case. Instead, the new firm that seeks to implement reasonable measures must exercise professional judgment in determining what steps must be taken in order to ensure that no disclosure will occur to any member of the new firm of the former client's confidential information. Such measures may include timely and properly constructed confidentiality screens.
For example, the intellectual property services units of a government, a corporation with separate regional legal departments or an interprovincial or international law firm or agency firm may be able to demonstrate that, because of its institutional structure, reporting relationships and function and the nature of its work and geography, relatively fewer measures are necessary to ensure the non-disclosure of client confidences. If it can be shown that, because of factors such as the foregoing ones, agents in separate units, offices or departments do not work together with other agents in other units, offices or departments, that will be taken into account in the determination of what screening measures are considered to be reasonable.
The guidelines that follow are intended as a checklist of relevant factors to be considered. Adoption of only some of the guidelines may be adequate in some cases, while adoption of them all may not be sufficient in others.
Guidelines on How to Screen for Conflicts of Interest and Measures to be Taken
The screened agent must have no involvement in the new firm's representation of its client in the matter.
The screened agent must not discuss the current matter or any information relating to the representation of the former client — the two may be identical — with anyone else in the new firm.
No member of the new firm should discuss the current matter or the representation of the former client with the screened agent.
The firm must take steps to preclude the screened agent from having access to any part of the file.
The new firm must document the measures for screening the transferring agent and the time when they were put in place — which should be done as soon as possible — and must advise all affected agents and support staff of the measures taken.
These Guidelines apply, with the necessary modifications, to situations in which a non-agent staff member leaves one firm to work for another and a determination is made by the new firm, before hiring that individual, as to whether any conflicts of interest will be created and whether they actually possesses relevant confidential information.
How to Determine if a Conflict Exists Before Hiring a Potential Transferee
When a firm of agents, or a firm of agents and legal counsel (“new firm”), considers hiring an agent or agent in training (“transferring agent”) from another firm of agents, or another firm of agents and legal counsel, (“former firm”), the transferring agent and the new firm need to determine, before the transfer, whether any conflicts of interest will be created. Conflicts can arise with respect to clients of the firm that the transferring agent is leaving and with respect to clients of a firm in which the transferring agent worked at some earlier time.
After completing the interview process and before hiring the transferring agent, the new firm must determine whether any conflicts exist. In determining whether the transferring agent actually possesses relevant confidential information, both the transferring agent and the new firm must be very careful during any interview of a potential transferring agent or during any other recruitment process to ensure that they do not disclose client confidences. See section 10 of Part 2 which provides that an agent may disclose confidential information to the extent the agent reasonably believes necessary to detect and resolve conflicts of interest when agents transfer between firms.
An agent's duty to their firm may also govern the agent's conduct when exploring an association with another firm and is beyond the scope of this Code.
(3) Subject to section 10 of Part 2 and unless the former client consents,
- (a) a transferring agent referred to in subsection (2) must not participate in any manner in the new firm's representation of its client in the matter or disclose any confidential information respecting the former client; and
- (b) members of the new firm must not discuss the new firm's representation of its client or the former firm's representation of the former client in that matter with a transferring agent.
(4) An agent must exercise due diligence in ensuring that every member and employee of their firm and every other person whose services the agent has retained
- (a) complies with subsections (1) to (3); and
- (b) does not disclose confidential information of clients of the firm and of any other firm in which the person has worked.
Agents and Support Staff
Subsection (4) is intended to regulate agents and agents in training who transfer between firms. It also imposes a general duty on agents to exercise due diligence in the supervision of staff in order to ensure that they comply with the rule and with the duty not to disclose confidences of clients of the agents' firm and confidences of clients of other firms in which the staff member has worked.
Certain non-agent staff members in a firm routinely have full access to and work extensively on client files. As such, they may possess confidential information about the client. If these staff members move from one firm to another and the new firm acts for a client opposed in interest to the client on whose files the staff members worked, unless measures are taken to screen the staff members, it is reasonable to conclude that confidential information may be shared. It is the responsibility of the agent and the firm to ensure that staff members — who may have confidential information that, if disclosed, could prejudice the interests of the client of the former firm — have no involvement with and no access to information relating to the relevant client of the new firm.
The duties imposed by section 7 concerning confidential information must be distinguished from the general ethical duty to hold in strict confidence all information concerning the business and affairs of the client acquired in the course of the professional relationship, which duty applies without regard to the nature or source of the information or to the fact that other persons may share the knowledge.
Business Transactions with Clients
8 (1) Subject to subsections (2) and (3), an agent must not enter into a business transaction with a client or knowingly give to a client or acquire from a client, directly or indirectly, ownership of, or a security or other monetary interest in, an intellectual property right that is the subject of the agent's professional advice unless
- (a) the transaction is a fair and reasonable one and its terms are fully disclosed to the client in writing in a manner that can be reasonably understood by the client;
- (b) the client has obtained independent legal advice about the transaction or has expressly waived the right to independent legal advice, with the onus being on the agent to prove that the client's interests were protected by that independent legal advice; and
- (c) the client consents in writing to the transaction.
The agent cannot act where the business transaction is one in which there is a substantial risk that the agent's loyalty to or representation of the client would be materially and adversely affected by the agent's own interest, unless the client consents and the agent reasonably believes that they are able to act for the client without having a material adverse effect on loyalty or the representation. If the agent chooses not to disclose the conflicting interest (that is, the agent's own interest) or cannot do so without breaching confidence, the agent must decline the retainer. An agent must not uncritically accept a client's decision to have the agent act. It should be borne in mind that, if the agent accepts the retainer, the agent's first duty will be to the client. If the agent has any misgivings about being able to place the client's interests first, the retainer must be declined.
(2) If an agent has been retained to prepare or to provide services relating to a patent application and the agent conceives an improvement or modification to an invention or a portion of an invention to be claimed in the application, such that the agent reasonably believes that they are a co-inventor and proposes to list themselves as a co-inventor, the agent must advise the client to obtain independent professional advice as to
- (a) whether or not naming the agent as a co-inventor is appropriate and justified; and
- (b) whether a new agent should be retained to prosecute the application.
(3) When an agent has been retained to provide services relating to a trademark application and the agent is responsible for or contributes substantially to the creation of the trademark, the agent must advise the client to obtain independent professional advice as to
- (a) whether or not the agent is entitled to any intellectual property right related to the trademark; and
- (b) whether a new agent should be retained to prosecute the application.
(4) When a client intends to pay for agency services by transferring to the agent a share, participation or interest or right in property or in an enterprise other than a non-material interest or right in a publicly traded enterprise, the agent must recommend that the client obtain independent legal advice before accepting a retainer.
The remuneration paid to an agent by a client for agency work undertaken by the agent for the client does not give rise to a conflicting interest.
Quality of Service
An agent must be both honest and candid when advising a client and must inform the client of all information known to the agent that may affect the interests of the client in the matter.
1 The agent must give the client competent advice and service based on a sufficient knowledge of the relevant facts, an adequate consideration of the applicable law and the agent's own experience and expertise.
2 The agent's advice must be open and transparent and must clearly disclose what the agent honestly thinks about the merits of the matter at issue and the likely results.
Occasionally, an agent must be firm with a client. Firmness, without rudeness, is not a violation of the rule. In communicating with the client, the agent may disagree with the client's perspective or may have concerns about the client's position on a matter and may give advice that will not please the client, which may legitimately require firm and animated discussion with the client. The agent must not keep the client in the dark about matters they know to be relevant to the retainer.
3 If it becomes apparent to the agent that the client has misunderstood or misconceived the agent's position or what is really involved, the agent must use reasonable efforts to explain their advice and recommendations to the client.
An agent has a duty to communicate effectively with the client. What is effective will vary depending on the nature of the retainer, the needs and sophistication of the client and the need for the client to make fully informed decisions and provide instructions.
4 An agent must act on the client's instructions in a reasonably prompt manner and must reply to all of the client's inquiries.
5 An agent must take reasonable steps to advise the client of the cost of seeking or obtaining intellectual property protection, on the recommendation of the agent, in Canada or elsewhere.
An agent must provide to the client in writing, before or within a reasonable time after commencing a representation, as much information regarding fees and disbursements as is reasonable and practical in the circumstances, including the basis on which fees will be determined. An agent must confirm with the client in writing the substance of all fee discussions that occur as a matter progresses and an agent may subsequently revise an initial estimate of fees and disbursements.
6 An agent must communicate in a timely and effective manner at all stages of the client's matter or transaction.
The requirement to provide conscientious, diligent and efficient service means that an agent must make every effort to provide timely service to the client. An agent must meet all deadlines, unless the agent is able to offer a reasonable explanation for not doing so, and ensure that there will be no prejudice to the client as a result. Whether or not a specific deadline applies, an agent must be prompt in prosecuting a matter, responding to communications and reporting developments to the client. In the absence of developments, contact with the client must be maintained to the extent the client reasonably expects.
7 An agent must not undertake to act for a client if they are not comfortable, for justifiable reasons, with undertaking the requested task or work for that particular client or disagree with the instructions from the client to such an extent that the instructions would impair the agent's ability to perform their services in accordance with this Code.
8 An agent must inform the client in a reasonably prompt manner of any material error or omission that has been made with respect to the client's matter.
If, in connection with a matter for which an agent is responsible, the agent discovers an error or omission that is or may be damaging to the client and that cannot be readily rectified, the agent must
- (a) promptly inform the client of the error or omission without admitting legal liability;
- (b) recommend that the client obtain independent professional or legal advice concerning the matter; and
- (c) advise the client of the possibility that, in the circumstances, the agent may no longer be able to continue to act for the client.
An agent owes a duty of fairness and reasonableness in their financial dealings with the client.
1 An agent must not charge or accept any fee or recover any disbursement, including interest, that is not fair and reasonable and is not disclosed fully and in a timely manner to the client.
2 An agent may enter into a written agreement that provides that their fee is contingent, in whole or in part, on the outcome of the matter for which their services are to be provided.
3 An agent must not appropriate any funds under their control for or on account of fees without the authority of the client except as permitted by this Part. Money held by an agent to the credit of a client may not be applied to fees payable by the client unless the agent has rendered an account to the client.
4 An agent must not permit a non-agent to fix any fee that is to be charged to a client unless that person uses a fee schedule that has been set by the agent.
5 In any statement of account that is provided to a client, an agent must separately and clearly detail all fees and disbursements and must not show as a disbursement to a third party any amount that has not been paid to the third party.
6 If the client consents, fees for any matter may be shared by the agent with another agent or a legal counsel who is not a partner or associate in the same firm as the agent if the fees are divided in proportion to the work done and the responsibilities assumed.
7 If an agent refers a matter to another agent or professional because of their expertise and ability to handle the matter, and the referral is not made because of a conflict of interest, the referring agent may accept, and the other agent may pay, a referral fee if
- (a) the fee is reasonable and does not increase the total amount of the fee charged to the client; and
- (b) the client is informed of and consents to the payment of that referral fee.
8 If an agent requires payment prior to commencing the client's work, the agent must confirm with the client in writing the amount and purpose of the payment and the consequences of any delay in making the payment and in the commencement of the work, including any possible loss of rights.
The factors that may be taken into account in determining that the amount of an account represents a fair and reasonable fee in a given case include the following:
- (a) the time and effort required and expended;
- (b) the nature of the matter, including its difficulty and urgency, its importance to the client, its monetary value and any other special circumstances such as postponement of payment and the uncertainty of reward;
- (c) whether any special skill or service has been required and provided;
- (d) the results obtained;
- (e) the customary fees charged by other agents of equal standing in the same locality in similar matters and circumstances;
- (f) the likelihood, if made known to the client by the agent, that the agent's acceptance of the retainer will result in their inability to accept other work;
- (g) any relevant agreement between the agent and the client;
- (h) the experience and ability of the agent;
- (i) any estimate or range of fees provided to the client by the agent;
- (j) whether the fee is contingent on the outcome of the matter;
- (k) whether the client has previously consented to the fee; and
- (l) the direct costs incurred by the agent in providing the services.
For greater clarity, nothing in this provision restricts an agent's ability to provide discounted or low-cost services.
An agent must provide to the client in writing, before or within a reasonable time after commencing a representation, as much information regarding fees, disbursements and interest as is reasonable and practical in the circumstances, including the basis on which fees will be determined.
An agent must be ready to explain the basis of fees charged and disbursements recovered from the client. If something unusual or unforeseen occurs that may substantially affect the amount of a fee or disbursement, the agent must give the client a prompt explanation.
With respect to contingency fees (see paragraph (j) above), although an agent is generally permitted to terminate their professional relationship with a client and withdraw their services under this Code (see Part 6), special circumstances apply when the representation is carried out in accordance with a contingency agreement. In such circumstances, the agent has impliedly undertaken the risk of not being paid in the event that the representation is not successful. Accordingly, an agent may not withdraw from the representation of the client for reasons set out in paragraph 2(a) of Part 6 in relation to fees unless the written contingency agreement specifically provides that the agent has the right to do so and sets out the circumstances in which that right arises.
Withdrawal of Services
An agent must not withdraw from the representation of a client except for good cause and on reasonable notice to the client.
1 An agent must withdraw from a matter if
- (a) the client persists in instructing the agent to act in a manner that is contrary to professional ethics;
- (b) the client persists in giving instructions that the agent knows will result in the agent's assisting the client to commit a crime or fraud;
- (c) the agent is unable to act competently or with reasonable promptness; or
- (d) the agent's continued service to the client would violate the agent's obligations with respect to any conflict of interest.
2 An agent may withdraw when withdrawal is justified by the circumstances. Circumstances that may justify, but not require, withdrawal include the following:
- (a) the client fails after reasonable notice to provide funds on account of fees or disbursements in accordance with the agent's reasonable request;
- (b) the client's conduct in the matter is dishonourable or motivated primarily by malice;
- (c) the client is persistently unreasonable or uncooperative and makes it unreasonably difficult for the agent to provide services effectively;
- (d) the agent is unable to locate the client or to obtain proper instructions from them;
- (e) there is a serious loss of confidence between the agent and the client; and
- (f) the agent is unable to continue with their practice or retires from practice.
3 An agent may withdraw with the client's consent.
4 If an agent withdraws or is discharged from a matter, the agent must endeavour to avoid foreseeable prejudice to the client and must also cooperate with a successor agent if one is appointed.
5 If an agent withdraws or is discharged from a matter and is in receipt of an official communication on the matter to which a response must be filed in order to avoid abandonment of the matter, the agent must endeavour to report the official communication in a timely manner to the former client in order to avoid prejudice to that client and to permit them to take appropriate steps to safeguard their rights in the matter.
6 On withdrawal or discharge, an agent must promptly render a final account and must account to the client for all money and property received from the client.
7 Before agreeing to represent a client in a matter, a successor agent must be satisfied that the former agent has withdrawn from or has been discharged by the client in the matter.
An essential element of reasonable notice is notification to the client unless the client cannot be located after reasonable efforts are made. No hard and fast rules can be laid down as to what constitutes reasonable notice before withdrawal and how quickly an agent may cease acting after notification will depend on all relevant circumstances. The governing principle is that the agent must protect the client's interests to the best of the agent's ability and must not desert the client at a critical stage of a matter or at a time when withdrawal would put the client in a position of disadvantage. As a general rule, the client must be given sufficient time to retain and instruct a replacement agent, including filing an appointment of agent in the relevant CIPO office. Every effort must be made to ensure that withdrawal occurs at an appropriate time in the prosecution of an application, in keeping with the agent's obligations. The relevant CIPO office, opposing parties, foreign agents and any others directly affected by the withdrawal must also be notified of the withdrawal.
Unless a client consents, an agent must not summarily and unexpectedly withdraw their services from that client in order to avoid a conflict arising from accepting a new second client. Note that disclosure is an essential requirement for obtaining the first client's consent. If it is not possible to provide the first client with adequate disclosure because of the confidentiality of the information of the second client, the agent must decline to provide services to the second client.
When an agency firm is dissolved or an agent leaves an agency firm to practise elsewhere, it usually results in the termination of the agent-client relationship between a particular client and one or more of the agents involved. In such cases, most clients prefer to retain the services of the agent who they regarded as being in charge of their business before the change. However, the final decision rests with the client and the agents who are no longer retained by that client must act in accordance with the principles set out in this rule and, in particular, must try to minimize expense and avoid prejudice to the client. The client's interests are paramount and, accordingly, the decision as to whether the agent will continue to represent a given client must be made by the client in the absence of undue influence or harassment by either the agent or the agency firm. That may require either the departing agent or the agency firm, or both, to notify the client in writing that the agent is leaving and advise them of the options available to have the departing agent continue to act for them, to have the agency firm continue to act for them or to retain a new agent or new agency firm to act for them.
On discharge or withdrawal, an agent must
- (a) notify the client in writing, stating
- (i) that the agent has withdrawn,
- (ii) the reasons for the withdrawal, and
- (iii) in the case of a hearing, that the client should expect that the hearing or trial will proceed on the date scheduled and that the client should retain a new agent promptly;
- (b) deliver to the client all papers and property to which the client is entitled;
- (c) subject to any applicable trust conditions and undertakings — or, in Quebec, subject to any applicable conditions for the preservation in trust of any monies or other property entrusted to the agent by a client and to any applicable undertakings —, give the client all relevant information in connection with the matter;
- (d) account for all funds of the client held at that time or previously dealt with, including the refunding of any remuneration not earned during the representation;
- (e) promptly render an account for outstanding fees and disbursements;
- (f) cooperate with the successor agent in the transfer of the file in a manner that minimizes expense and avoids prejudice to the client; and
- (g) comply with the applicable rules of the CIPO office or offices involved.
If the agent who is discharged or withdraws is a member of an agency firm, the client must be notified that the agent and the agency firm are no longer acting for the client.
The obligation to deliver papers and property is subject to any agreement between the agent and the client. In the event of conflicting claims to such papers or property, the agent must make every effort to have the claimants settle the dispute.
Cooperation with the successor agent will normally include providing copies of all files for applications and patents but confidential information not clearly related to the matter must not be disclosed without the written consent of the client.
An agent acting for several clients in a matter who ceases to act for one or more of them must cooperate with the successor agent or agents to the extent required by this Code and must seek to avoid any unseemly rivalry, whether real or apparent.
It is quite proper for the successor agent to urge the client to settle or take reasonable steps towards settling or securing any outstanding account of the former agent, especially if the latter withdrew for good cause or was capriciously discharged. But, if a matter is in progress or is imminent, or if the client would otherwise be prejudiced, the existence of an outstanding account must not be allowed to interfere with the successor agent acting for the client.
Duties to College, Members and Other Persons
An agent must assist in maintaining the standards of the profession in dealings with the College and members of the profession generally. An agent's conduct toward other agents must be characterized by courtesy and good faith.
1 An agent must conduct themselves in a professional manner.
2 An agent must refrain from conduct that brings discredit to the profession.
3 An agent must respond promptly and in a complete and appropriate manner to any communication from the College relating to their conduct.
4 An agent has a professional duty to meet financial obligations in relation to their practice.
5 An agent must report to the College any conduct of which the agent has personal knowledge and which in the agent's reasonable opinion, arrived at in good faith, raises a serious question of whether another agent is in breach of this Code.
6 An agent must encourage a client who has a claim or complaint against an apparently dishonest agent to report the facts to the College as soon as reasonably practicable.
7 An agent has complete professional responsibility for all business entrusted to them and must directly supervise staff and assistants to whom they delegate particular tasks and functions.
8 An agent who supervises an agent in training must provide them with meaningful training and exposure to, and involvement in, work that will provide them with knowledge and experience of the practical aspects of the work of a patent agent or a trademark agent, together with an appreciation of the traditions and ethics of the profession.
9 An agent must not discriminate against any person in connection with their practice.
10 An agent must not sexually harass or engage in any other form of harassment of any person in connection with their practice.
11 (1) When an agent (the “transferring agent”) transfers from one firm (the “former firm”) to another firm, neither the transferring agent nor the former firm may harass or exercise or attempt to exercise undue influence on clients of the former firm — whose work was done by the transferring agent — for the purpose of influencing the decision of the client as to who will represent them.
(2) An agent who is an employee must not solicit business from their employer's clients or prospective clients on their own account without their employer's knowledge.
Communications with College, CIPO and Other Persons
An agent's conduct toward other agents must be characterized by courtesy and good faith.
1 (1) An agent must be courteous and civil and act in good faith with all persons with whom the agent has dealings in the course of their practice.
(2) All correspondence and remarks by an agent addressed to or concerning another agent, whether inside or outside of the agent's firm or concerning another firm, CIPO or the College, must be fair, accurate and courteous.
(3) An agent must avoid sharp practice and must not take advantage of or act without fair warning with respect to omissions, irregularities or mistakes on the part of other agents not going to the merits or involving the sacrifice of a client's rights.
(4) An agent must avoid ill-considered or uninformed criticism of the competence, conduct, advice or work of other agents, but must be prepared when requested to advise and represent a client with respect to a complaint involving another agent.
(5) An agent must agree to reasonable requests concerning hearing dates, adjournments, the waiver of procedural formalities and other similar matters that do not prejudice the rights of their client unless to do so would be contrary to the client's instructions.
The public interest demands that matters entrusted to an agent be dealt with effectively and expeditiously and fair and courteous dealing on the part of each agent engaged in a matter will contribute substantially to this end. The agent who behaves otherwise does a disservice to the client and neglect of the rule will impair the ability of agents to perform their functions properly.
Any ill feeling that may exist or be engendered between clients, particularly during opposition proceedings, must never be allowed to influence agents in their conduct and demeanour toward each other or the other parties. The presence of personal animosity between agents involved in a matter may cause their judgment to be clouded by emotional factors and hinder the proper resolution of the matter.
2 (1) An agent must not in the course of their professional practice send correspondence to or otherwise communicate with a client, another agent, CIPO or any other person in a manner that is abusive, offensive or otherwise inconsistent with the appropriate tone of a professional communication from an agent.
(2) An agent must answer with reasonable promptness all professional letters and communications from other agents and from CIPO that require an answer and an agent must be punctual in fulfilling their commitments.
(3) Subject to subsection (4), if a person is represented by an agent or a legal counsel in respect of a matter, another agent must not, except through or with the consent of that person's agent or legal counsel
- (a) approach, communicate or deal with the person in relation to the matter; or
- (b) attempt to negotiate or reach a compromise in the matter directly with the person.
Subsection (3) applies to communications with any person , whether or not they are a party to a formal adjudicative proceeding, contract or negotiation, who is represented by an agent concerning the matter to which the communication relates. An agent may communicate with a represented person in relation to other matters. Subsection (3) does not prevent parties to a matter from communicating directly with each other.
The prohibition on communications with a represented person applies only if the agent knows or should know, based on the circumstances, that the person is represented in the matter to be discussed.
(4) An agent who does not have an interest in a matter may give a second opinion to a person who is represented by another agent with respect to that matter.
Subsection (4) deals with circumstances in which a client may wish to obtain a second opinion from another agent. In providing a second opinion, and in order to provide competent services, that other agent may require facts that can be obtained only through consultation with the first agent involved. The other agent must advise the client accordingly and, if necessary, consult the first agent unless the client instructs otherwise.
(5) An agent retained to act in a matter involving a corporation or other organization represented by an agent or a legal counsel must not, in respect of that matter, unless the agent representing the organization consents or the contact is otherwise authorized or required by law, approach an officer or employee of the organization
- (a) who has the authority to bind the organization;
- (b) who supervises, directs or regularly consults with the organization's agent; or
- (c) whose own interests are directly at stake in the representation.
Subsection (5) prohibits an agent who represents another person from communicating about the matter in question with persons who are likely involved in the decision-making process for a corporation or other organization. If the corporation or organization is represented by an agent, the consent of that agent to the communication will be sufficient for the purposes of this rule. An agent may communicate with employees of the corporation or organization concerning other matters.
(6) In this section, other organization includes a partnership, an association, a union, an unincorporated group, a government department or agency, a tribunal, a regulatory body and a sole proprietorship.
3 When an agent deals on a client's behalf with an unrepresented person, the agent must
- (a) advise the unrepresented person to seek independent representation;
- (b) take care to see that the unrepresented person is not proceeding under the impression that their interests will be protected by the agent;
- (c) make it clear to the unrepresented person that the agent is acting exclusively in the interests of the client; and
- (d) extend the same courtesy and good faith to the unrepresented person as they extend to other agents or agents in training.
If an unrepresented person requests the agent to advise them or act for them in the matter, the agent must be governed by the considerations outlined in the conflicts of interest rule about joint retainers.
4 (1) An agent who receives a document relating to the representation of their client and knows, or reasonably should know, that the document was inadvertently sent to them must promptly notify the sender.
(2) In this section, document includes email or other electronic modes of transmission capable of being read or put into readable form.
Agents sometimes receive documents that were mistakenly sent by opposing parties or their agents. If an agent knows or reasonably should know that such a document was sent to them inadvertently, this rule requires the agent to notify the sender promptly in order to permit them to take protective measures.
Some agents may choose to return a document unread, for example, when the agent learns before receiving the document that it was inadvertently sent to the wrong address. Unless the agent is required by applicable law to do so, the decision to voluntarily return such a document is a matter of professional judgment ordinarily reserved to the agent.
An agent may advertise services and fees or otherwise solicit work if the advertisement is
- (a) demonstrably true, accurate and verifiable; and
- (b) not misleading, confusing or deceptive or likely to mislead, confuse or deceive.
1 An agent must not use any description that suggests that they or another individual in their firm has academic or professional qualifications that they do not possess.
Clients often seek an agent with a certain background or certain skills. Those clients must not be misled by an agent holding out themselves or other members of their firm as having skills that they do not possess.
2 The agent's advertisements may be designed to provide information to assist a potential client to choose an agent who has the appropriate skills and knowledge for the client's particular matter. The agent may indicate that their practice is restricted to a particular area or may indicate that they practice in a certain area if that is the case. In all cases, the representations made must be accurate (that is, demonstrably true) and must not be misleading.
3 The agent must not indicate by way of advertisement, letterhead or otherwise that they have a professional office at a specified location if that is not, in fact, the case.
4 An agent may advertise the fees to be charged for their services if
- (a) the advertising is reasonably precise as to the services offered for each fee quoted;
- (b) the advertisement states whether other amounts, such as disbursements and taxes, will be added to the fees; and
- (c) the agent strictly adheres to the advertised fees in all applicable respects.
The use of phrases such as “John Doe and Associates”, “John Doe and Company” or “John Doe and Partners” is improper unless there are, in fact, two or more other agents associated with John Doe in practice or John Doe has two or more partners.
An agent owes a duty to assist in preventing any unauthorized practice, including any practice not authorized under the relevant intellectual property statutes or by the applicable provincial law society.
1 An agent must not, without the express approval of the College, retain, occupy office space with, use the services of, partner or associate with, or employ in any capacity having to do with the practice of a patent agent or a trademark agent, any agent whose licence has been suspended as a result of disciplinary proceedings or an individual whose licence has been revoked as a result of disciplinary proceedings or who has been permitted to surrender their licence while facing disciplinary proceedings and has not been reinstated.
2 An agent must not aid or assist a person who is practicing as a patent agent or a trademark agent in an unauthorized manner.
3 An agent who is under suspension as a result of disciplinary proceedings must not
- (a) practise as a patent agent or a trademark agent, as applicable; or
- (b) represent or hold themselves out as a individual who is entitled to practise as a patent agent or trademark agent, as applicable.
It is in the interest of the public and the profession that persons who are not properly qualified or who are immune from control, management or discipline not be permitted to offer agency services to members of the public.
4 An agent who is under a restriction on their entitlement to provide representation must not practise in a manner that is contrary to that restriction.
(This note is not part of the Regulations.)
Pursuant to section 33 of the College of Patent Agents and Trademark Agents Act (“Act”), the Minister is establishing a Code of Professional Conduct for licensees of the College.
The objective of these Regulations is to establish a Code of Professional Conduct (“Code”) for patent and trademark agents (“IP Agents”). This Code will set out standards of professional conduct and competence to ensure that all IP agents will conduct themselves with integrity and competence in accordance with the highest standards of the profession in order to retain the trust, respect and confidence of members of the profession and the public.
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 the Canadian Intellectual Property Office (CIPO).
The College of Patent and Trademark Agents (“College”) is an initiative that was part of the National Intellectual Property Strategy in 2018. It was created by the Act as an independent body to regulate the profession of patent and trademark agents in the public interest. The Act received royal assent on December 13, 2018. The Act provides the College with the authority to take disciplinary actions for professional misconduct or incompetence, and to regulate other aspects of the profession, such as insurance requirements, continuing professional development requirements, pro bono work requirements, and training for agent trainees.
The standards set out in the Code will help to ensure that all agents will conduct themselves with integrity and competence in accordance with the highest standards of the profession in order to retain the trust, respect and confidence of members of the profession and the public. All patent and trademark agents will be required to meet the standards of professional conduct and competence that are established by the Code.
Any violations of the Code will be addressed by the College's disciplinary process. The Act specifies that any agent who fails to meet the standards of professional conduct and competence laid out in the Code commits professional misconduct or is incompetent. Members of the public will be able to file complaints with the College regarding professional misconduct or incompetence by an agent. The College's Investigations Committee will be responsible for investigating any instances of professional misconduct or incompetence by an agent and will be able to apply to the College's Discipline Committee for a determination. If the Discipline Committee finds that the agent has committed professional misconduct or is incompetent, they will have the authority to take disciplinary action against the agent.
Consultations on a governance framework for IP agents predate the establishment of the College. ISED first held a consultation on a Draft Code of Conduct for IP agents from May 24, 2016, to June 13, 2016. Following this consultation, a new Revised Draft Interim Code of Conduct was published on June 23, 2016. This revised version of the code of conduct took into consideration comments received during the consultation period and was intended as a provisional guidance document for agents in the exercise of their duties and responsibilities toward their clients.
Recognizing the interim nature of the draft code, as well as further submissions on the code, a second consultation period was held from June 23, 2016, to August 31, 2016, on the revised version. Submissions from stakeholders during this process, as well as ongoing monitoring of best practices and continued engagement with representatives of the profession, have informed the drafting of these Regulations establishing the code of professional conduct.
Marketplace Framework Policy Branch
Innovation, Science and Economic Development Canada