By-laws Amending the By-laws of the College of Patent Agents and Trademark Agents (Board): SOR/2022-59
Canada Gazette, Part II, Volume 156, Number 7
Registration
SOR/2022-59 March 17, 2022
COLLEGE OF PATENT AGENTS AND TRADEMARK AGENTS ACT
The board of directors of the College of Patent Agents and Trademark Agents, pursuant to section 75 footnote a of the College of Patent Agents and Trademark Agents Act footnote b, makes the annexed By-laws Amending the By-laws of the College of Patent Agents and Trademark Agents (Board).
Ottawa, March 10, 2022
Thomas G. Conway
Chairperson, Board of Directors
College of Patent Agents and Trademark Agents
By-laws Amending the By-laws of the College of Patent Agents and Trademark Agents (Board)
Amendments
1 (1) The definition fees in section 1 of the By-laws of the College of Patent Agents and Trademark Agents (Board) footnote 1 is repealed.
(2) Section 1 of the By-laws is amended by adding the following in alphabetical order:
- non-resident patent agent
- means an individual who is described in subsection 19(1) of the Regulations. (agent de brevets non-résident)
- non-resident trademark agent
- means an individual who is described in subsection 20(1) of the Regulations. (agent de marques de commerce non-résident)
- Regulations
- means the College of Patent Agents and Trademark Agents Regulations. (Règlement)
2 Section 6 of the By-laws is replaced by the following:
Elected directors
6 (1) Two of the directors elected to the Board must be patent agents and two must be trademark agents.
Term of office
(2) The term of office of each elected director begins at the conclusion of the first annual general meeting following their election and ends on the day that is three years after the day on which it begins or at the conclusion of the fourth annual general meeting following their election, whichever occurs first.
Exception — first election of directors
(3) Despite subsection (2), the term of the patent agent and the trademark agent who each receive the second highest number of votes during the first election of directors ends on the day that is two years after the day on which it begins or at the conclusion of the third annual general meeting following their election, whichever occurs first.
Exception — replacement
(4) Despite subsection (2), if a director is elected to replace a director whose position is vacated before their term is scheduled to end, the term of the replacement director ends when their predecessor’s term was scheduled to end.
3 Subsections 31(1) and (2) of the By-laws are replaced by the following:
Elections
31 (1) Each year, the Governance and Nominating Committee determines if any elected director positions will be vacant at the conclusion of the next annual general meeting, in which case an election must be held before that meeting to elect the appropriate number of patent agents and trademark agents to satisfy the requirements of subsection 6(1).
4 Section 52 of the By-laws is replaced by the following:
Class 1 requirements
52 On or before March 31 of each year, a licensee who holds a class 1 licence must
- (a) pay to the College the applicable fee set out in item 1 or 2 of the schedule;
- (b) file with the Registrar the Annual Licensee Report; and
- (c) provide the Registrar with proof of professional liability insurance or proof of exemption from that insurance.
5 Sections 54 and 55 of the By-laws are replaced by the following:
Class 2 requirement
54 A licensee who holds a class 2 licence must pay to the College the fee set out in item 5 of the schedule on or before March 31 of each year.
Class 3 requirements
55 On or before the anniversary each year of the effective date of their licence, a licensee who holds a class 3 licence must
- (a) pay to the College the fee set out in item 7 of the schedule and, in the case of the second or subsequent anniversary, the fee set out in item 8 of the schedule; and
- (b) provide the Registrar with either the name of the insurer that has insured them against professional liability and their insurance policy number or proof that they are exempt from the requirement to be so insured and the reason for the exemption.
Professional liability insurance
55.1 (1) The following licensees are exempt from the requirement under subsection 34(1) of the Act to be insured against professional liability:
- (a) class 2 licensees; and
- (b) licensees who are employed by a corporation, including a municipal corporation, or a trust, partnership, sole proprietorship, joint venture, association, agency or other entity that carries on business in Canada, whether or not for profit, and are working as licensees within the scope of that employment.
Requirements
(2) The professional liability insurance that must be maintained by a licensee under subsection 34(1) of the Act must
- (a) be issued by a company licensed in Canada;
- (b) cover claims made in and outside Canada;
- (c) indemnify the licensee for any civil liability that arises from the licensee acting as a patent agent or trademark agent, as the case may be; and
- (d) have coverage limits of no less than $1 million per claim and $2 million aggregate per year.
6 (1) Subsection 57(2) of the By-laws is replaced by the following:
Reinstatement
(2) The Registrar must reinstate a person whose licence has been suspended if the person corrects the matter that resulted in the suspension and pays to the College the fee set out in item 16 of the schedule within two years after the day on which the licence was suspended.
(2) Paragraph 57(3)(b) of the By-laws is replaced by the following:
- (b) pay to the College the fee set out in item 16 of the schedule; and
7 The portion of subsection 59(1) of the By-laws before paragraph (a) is replaced by the following:
Request to surrender
59 (1) An application to surrender a licence under section 36 of the Act is to be made by providing the following information to the Registrar and by paying to the College the fee set out in item 15 of the schedule and any other outstanding fees owed by the licensee:
8 The By-laws are amended by adding the following after section 60:
Certificate
Production by Registrar
60.1 The Registrar may, on the request of a licensee and on payment to the College of the fee set out in item 17 of the schedule, produce a certificate that sets out information within the Registrar’s knowledge.
Non-resident Patent Agents and Non-resident Trademark Agents
Payment for inclusion on Register
60.2 The request referred to in paragraph 19(1)(b) or 20(1)(b) of the Regulations must be accompanied by the fee set out in item 18 of the schedule, payable to the College.
Continued inclusion in Register
60.3 (1) A non-resident patent agent and a non-resident trademark agent must provide the statement referred to in subsection 19(2) or 20(2), respectively, of the Regulations each year during the period beginning on May 1 and ending on June 30.
Requirements
(2) The statement must be accompanied by
- (a) proof, furnished by the relevant competent authority in the person’s country of residence, that the person is authorized to act as a patent agent or trademark agent, as the case may be, in that country; and
- (b) the fee set out in item 19 of the schedule, payable to the College.
Extension
(3) The Registrar may, having regard to the specific circumstances of a non-resident patent agent or non-resident trademark agent, extend the deadline for payment of the fee referred to in paragraph (2)(b).
Change of status
60.4 A non-resident patent agent and a non-resident trademark agent must inform the Registrar, in writing and without delay, if they cease to be a resident of a country other than Canada or cease to be authorized to act as such an agent in that country.
Removal from Register
60.5 (1) The Registrar must remove from the Register of Patent Agents or the Register of Trademark Agents, as the case may be, the name and contact information of any person who is included in that Register as a non-resident patent agent or a non-resident trademark agent if they are no longer an individual referred to in paragraph 19(1)(a) or 20(1)(a), respectively, of the Regulations.
Non-compliance
(2) The Registrar may remove from the Register of Patent Agents or the Register of Trademark Agents the name and contact information of a non-resident patent agent or non-resident trademark agent who does not meet the requirements of section 60.3 or subsection 19(2) or 20(2), respectively, of the Regulations.
9 Sections 61 and 62 of the By-laws are replaced by the following:
Professional liability insurance — 2022
61 A licensee who is making all reasonable efforts to become insured against professional liability as soon as feasible is, until December 31, 2022, exempt from the requirement under subsection 34(1) of the Act to be so insured.
10 The schedule to the By-laws is amended by replacing the reference after the heading “SCHEDULE” with the following:
(Paragraph 52(a), section 54, paragraph 55(a), subsection 57(2), paragraph 57(3)(b), subsection 59(1), sections 60.1 and 60.2 and paragraph 60.3(2)(b))
11 Items 3 and 4 of the schedule to the By-laws are repealed.
12 Item 6 of the schedule to the By-laws is repealed.
13 Items 9 to 14 of the schedule to the By-laws are repealed.
| Item | Description | Fees ($) |
|---|---|---|
| 18 | Non-resident agent initial inclusion in Register | 250 |
| 19 | Non-resident agent annual maintenance of name in Register | 100 |
Coming into Force
15 These By-laws come into force on the day on which they are registered.
EXPLANATORY NOTE
(This note is not part of the by-laws.)
Proposal
Pursuant to section 75 of the College of Patent Agents and Trademark Agents Act (the Act), the board of directors (the Board) of the College of Patent Agents and Trademark Agents (the College) proposes to amend the By-laws of the College of Patent Agents and Trademark Agents (Board) [the Board By-laws] to establish certain new requirements with respect to professional liability insurance, elections of directors, and non-resident patent and trademark agents.
Pursuant to subsection 76(2) of the Act and paragraphs 4(b), 6(b), 8(b), 10(b) and 18(b) of the College of Patent Agents and Trademark Agents Regulations, the College proposes to amend the By-laws of the College of Patent Agents and Trademark Agents (College) [the College By-laws] in consequence.
Objective
In fulfilment of the primary role of the College to promote and protect the Canadian public interest, the amendments to the by-laws will impose requirements on licensees, with certain specified exceptions, to be insured against professional liability.
To provide for the efficient and effective operation of the Board, the amendments will provide for staggered terms of office of elected directors and specify the length of a director’s term of office, including for a director who is elected in replacement of a departing director.
To improve the readability of the by-laws, the amendments (1) make it explicit that the fees are payable to the College; (2) move certain fees from the schedule to the Board by-laws into a new schedule to the College by-laws (under which those fees are payable); and (3) make specific references to the schedule item numbers in the provisions of the by-laws that impose the fees.
Background
Intellectual property agents play an essential role in preserving and promoting intellectual property rights. They are experts who represent applicants, registered owners and persons doing business before the Canadian Intellectual Property Office (CIPO).
The College has authority over all aspects of the profession, from the training and examination requirements for new agents to addressing concerns and complaints of misconduct and incompetence. It also oversees other aspects of regulation to promote intellectual property services and ensure public protection through continuing competence initiatives, insurance requirements, continuing professional development and pro bono work. The College is self-funding and collects fees from the profession for its operations.
Subsection 34(1) of the Act requires licensees, with certain exceptions, to be insured against professional liability. The College researched the risks associated with the provision of patent and trademark services and consulted with the profession prior to developing the insurance requirements for licensees who provide services to the public. The policy adopted by the Board is enacted through the amendments to the by-laws.
The term of the start-up Board will expire when four new directors are elected by the profession and five are appointed by the Minister. The amendments provide for staggered terms for elected directors.
Implications
The amendments specify the term of office of elected directors to be three years, when the term begins and ends, and make an exception for the first election whereby two of the elected directors will have a shorter two-year term, in order to establish staggered terms of office.
The College is self-funding and collects fees from the profession for its operations.
Consultation
The profession was consulted on the amendments establishing the insurance requirements through the publication of research results in November 2020 and a discussion paper in July 2021 (White Papers — College of Patent Agents and Trademark Agents [CPATA]) and by inviting comments from the profession. The comments received were considered by the Board in its decision-making.
Contact
Darrel Pink
Chief executive officer and Registrar
College of Patent Agents and Trademark Agents
Telephone: 343‑309‑5742/902‑430‑7209
Email: ceo@cpata-cabamc.ca