In 2012, the Canadian Intellectual Property Office (CIPO) engaged in a series of roundtables aimed at providing insight into the needs and behaviours of Canadian small to medium-sized enterprises (SMEs) so that it can continue to support innovation in Canada. Participants in these discussions consistently emphasized the need for simple, clear information on how to navigate the intellectual property (IP) system.
CIPO is required by legislation to keep both a register of patent agents and a list of trademark agents (the lists). Throughout the roundtable discussions these lists were specifically identified by CIPO's customers as in need of improvement. Since the lists serve as a front line tool to innovators, CIPO undertook a review of the usefulness of this service in order to better support customers in search of a qualified IP agent.
With this in mind, last summer the Modernizing the IP Community initiative was launched by Sylvain Laporte, Commissioner of Patents, Registrar of Trademarks and Chief Executive Officer of CIPO. The initiative seeks to review how CIPO, IP agents and various agent associations collaborate to support the needs of Canadian businesses and other users of IP. A working group was formed, comprising members of the IP profession and CIPO staff, to work collaboratively on this report.
With the lists of IP agents as the focal point, the report has concentrated on:
- improving the lists themselves;
- modernizing how agents get on the lists;
- modernizing how agents stay on the lists; and
- developing a framework for ensuring that agents adhere to a code of conduct, which includes the removal of agents from the lists in appropriate circumstances.
In recognition of the important role played by agents in the IP community, it is the purpose of this report to present recommendations to CIPO for modernizing the lists and other aspects of the agent community in order to provide the best service possible to customers. Through internal discussion and investigation, and in considering best practices in other jurisdictions, the working group has concluded the following:
- The agent lists need updating to offer more accurate and useful information that better serves customer needs.
- As the international nature of the IP profession grows, there is an increased need for agents to be knowledgeable in foreign IP laws and practice relevant to Canadian clients.
- The current agent qualification exams qualify proficient agents, but too many candidates write the exams despite not being prepared—this potentially leads to wasting resources.
- Adopting continuing professional development (CPD) would align the agent community with the majority of professions in Canada and abroad, which have moved toward mandatory CPD.
- A code of conduct is needed to support the IP profession and safeguard the public.
- A complaint and disciplinary process is needed to properly enforce a code of conduct.
- If a code of conduct is adopted, prospective agents will have to be tested on values and ethics. Registered agents should be educated on the code throughout their careers.
After much deliberation, within the scope of this initiative, the working group makes the following recommendations toward modernizing the IP community:
Improving the agent lists
- For both patents and trademarks, a public, comprehensive list of agents and firms should be published with biographical information including: name, address, phone number, email, link to agent/firm website, and year of agent registration. The lists should be fully searchable by the public and easy to find on CIPO's website.
- Agents should be capable of, and responsible for, keeping their personal contact information up-to-date on the lists.
- A comprehensive agent database should be published that includes all registered agents on the lists as well as those agents that have been temporarily suspended or permanently removed from the lists.
- Eligibility to write the substantive agent qualification papers should require a "pre-screening" part of the examination that tests core knowledge so as to ensure that candidates have sufficient knowledge to proceed to the substantive papers.
- To improve administrative efficiencies and promote candidate preparedness, while ensuring qualified agents have passed current exams, limits should be placed on the time and/or number of attempts allowed to pass the exams, and exam fees should increase with the number of attempts.
- The scope of agent qualification exams should be expanded to include relevant aspects of foreign IP law and practice, and values and ethics (conditional on the adoption of a code of conduct).
Continuing professional development
- A continuing professional development (CPD) requirement should be implemented as a condition to remain on the register of patent agents and the list of trademark agents.
- A single body (the CPD administrator) should be responsible for both the administration of the CPD requirement and monitoring agent compliance.
- There should be consequences to non-compliance with the CPD requirement, culminating in suspension or removal from the register of patent agents or list of trademark agents.
Values and ethics framework
- There should be a requirement for all registered agents on the lists to abide by a code of conduct. The code should be modeled after the IPIC Draft Code of Conduct, which is aligned with the Federation of Law Societies Model Code of Professional Conduct.
- A values and ethics framework should be created, comprising members of CIPO and the IP profession, as appropriate, tasked with the following functions in the disciplinary process:
- complaint receipt function
- review function
- investigative function
- tribunal (with an additional member from the public)