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Appendix E

Working group #1—Patents: questionnaire

This survey was conducted in February 2014 and was sent to IP agents practicing in foreign jurisdictions. The questions investigate how other IPOs handle appointments of agents and correspondence with multiple agents on a single file.

1. Please identify the patent office with which you are registered as a patent/trademark agent/attorney, and with which you file the greatest number of applications (e.g. USPTO, EPO, etc.).

Results
Answered question 11
Skipped question 0
Response Count 11

2. When appointing an agent to act before the office, which name(s) may appear onthe appointment (please click all that apply)?

  Response Percent Response Count
Firm 81.8% 9
Association of agents/attorneys 36.4% 4
Individual agent/attorney 63.6% 7
Results
Comments 3
Answered question 11
Skipped question 0

3. Can an association of agents or attorneys be appointed in respect of patent applications, rather than appointing an individual agent/attorney by name or number? (Consider that an association may be something as structured as a law firm or may be a loose association of independent agents and attorneys that provide in locum coverage during holidays or other absences.)

  Response Percent Response Count
YES, an association can be appointed 81.8% 9
NO, an individual must be appointed 18.2% 2
Results
Comments 2
Answered question 11
Skipped question 0

4. If your answer to question 3 was YES, does the patent office nevertheless require the name, number, or signature of an individual member of the association to be present on all correspondence?

  Response Percent Response Count
YES, a name, number, or signature of a member is required even when the association name is present on the correspondence 77.8% 7
NO, the identity of the association is all that is required 22.2% 2
Results
Comments 0
Answered question 9
Skipped question 2

5. When appointing an agent/attorney/association in respect of a patent application, that individual/association is identified by name or by a number?

  Response Percent Response Count
Name only 36.4% 4
Number only 0.0% 0
Either is acceptable 18.2% 2
Both name and number are required 45.5% 5
Results
Answered question 11
Skipped question 0

6. What are your likes and dislikes about the use of an agent/attorney number for identification in the patent office?

Results
Answered question 7
Skipped question 4
Response Count 7

7. When an individual agent/attorney joins or leaves a firm/association, is there a requirement to update the firm/association record? What problems, if any, arise with respect to the firm/association registration record when individuals join or leave a firm or association?

Results
Answered question 8
Skipped question 3
Response Count 8

8. Are patent agent/attorney registration records (whether identified by name, number, or association) associated in a database with patent office disciplinary records?

Results
Answered question 8
Skipped question 3
Response Count 8
Q1. Please identify the patent office with which you are registered as a patent/trademark agent/attorney, and with which you file the greatest number of applications (e.g. USPTO, EPO, etc.).
1 USPTO Feb 23, 2014 7:45 AM
2 EPO Feb 21, 2014 8:12 AM
3 Japan Patent Office Feb 21, 2014 4:24 AM
4 Australian Patent Office (IP Australia) Feb 19, 2014 5:12 PM
5 USPTO Feb 19, 2014 9:10 AM
6 European Patent Office Feb 19, 2014 5:39 AM
7 EPO Feb 19, 2014 3:37 AM
8 JPO Feb 17, 2014 8:17 PM
9 European Patent Office Feb 17, 2014 11:12 AM
10 Australia Feb 16, 2014 4:27 PM
11 USPTO Feb 16, 2014 4:19 PM
Q2. When appointing an agent to act before the office, which name(s) may appear on the appointment(please click all that apply)?
1 If you register the firm for transformation of corporation, the firm itself can act before the office. Feb 21, 2014 4:24 AM
2 A professional representative before the EPO must be a natural person. Therefore, appointing a firm or association is considered to be an appointment of all qualified attorneys in the firm/association. Feb 19, 2014 5:39 AM
3 If the firm is registered as a professional corporation before the JPAA, the firm name appears on the appointment. Feb 17, 2014 8:17 PM
Q3. Can an association of agents or attorneys be appointed in respect of patent applications, rather than appointing an individual agent/attorney by name or number? (Consider that an association may be something as structured as a law firm or may be a loose association of independent agents and attorneys...)
1 I am not positive about this, but I do not believe so. Feb 19, 2014 9:10 AM
2 As above—appointing a firm or association is considered to be an appointment of all qualified attorneys in the firm/association as the applicant must be represented by a natural person. Feb 19, 2014 5:39 AM
Q6. What are your likes and dislikes about the use of an agent/attorney number for identification in the patentoffice?
1 I do not mind using an agent/attorney number for identification in the patent office. Feb 21, 2014 4:24 AM
2 The use of names of agent/attorney to me seems more relevant and enables easy identification of individuals that may be involved with particular matters. Number alone seems to create a lack of transparency. Feb 19, 2014 5:12 PM
3 I have no problems with it. Feb 19, 2014 9:10 AM
4 Using a number rather than a name is more likely to lead to errors as any errors in a number are more easily missed. Feb 19, 2014 5:39 AM
5 The individuals within an association can be updated and this applies globally to all cases for which the association is the representative. Feb 19, 2014 3:37 AM
6 An attorney number provides a unique identification and avoids confusion. Feb 17, 2014 11:12 AM
7 Don't care. Feb 16, 2014 4:27 PM
Q7. When an individual agent/attorney joins or leaves a firm/association, is there a requirement to update the firm/association record? What problems, if any, arise with respect to the firm/association registration record when individuals join or leave a firm or association?
1 No. Feb 23, 2014 7:45 AM
2 Yes. If an individual agent/attorney joins or leaves a firm/association, the individual must request for an update for his/her record. I don't think there is any big problem, but if the individual does not request for the update, his/her airmail letters, etc., will be forwarded to the former firm/association. Feb 21, 2014 4:24 AM
3 There is no firm/association record at the Patent Office in Australia. What we have is registration on the Professional Standards Board, which is the Government department that administers the regulatory and disciplinary regimes for patent and trademarks attorneys in Australia. Feb 19, 2014 5:12 PM
4 Yes, I believe there is a requirement. The problem would be that the individual associated with the firm would still be able to make charges to the firm's deposit account. Feb 19, 2014 9:10 AM
5 The firm/association record can be updated to add/delete members. Alternatively, the individual joining/leaving can update their individual record. Feb 19, 2014 5:39 AM
6 Yes. Joining and leaving requires the individual's signature, which is fine for joining but can be problematic when someone has left the firm. Feb 19, 2014 3:37 AM
7 I believe so (our firm is not registered as an association). Feb 17, 2014 11:12 AM
8 No. Feb 16, 2014 4:27 PM
Q8. Are patent agent/attorney registration records (whether identified by name, number, or association) associated in a database with patent office disciplinary records?
1 I believe so. Feb 23, 2014 7:45 AM
2 Disciplinary information will not be recorded in a database. Feb 21, 2014 4:24 AM
3 No. Feb 19, 2014 5:12 PM
4 I believe so. Feb 19, 2014 9:10 AM
5 No. Feb 19, 2014 5:39 AM
6 Not that I am aware of. Feb 19, 2014 3:37 AM
7 Don't know. Feb 17, 2014 11:12 AM
8 Don't know. Feb 16, 2014 4:27 PM

Working group #1—Trademarks: questionnaire

This survey was conducted in February 2014 and was sent to IP agents practicing in foreign jurisdictions. The questions investigate how other IPOs handle appointments of agents and correspondence with multiple agents on a single file.

1. Please identify the trademarks office with which you are registered as a trademark agent/attorney, and with which you file the greatest number of applications (e.g. USPTO, EPO, etc.).

Results
Answered question 7
Skipped question 0
Response Count 7

2. When appointing an agent to act before the office, which name(s) may appear on the appointment (please click all that apply)?

  Response Percent Response Count
Firm 100.0% 7
Association of agents/attorneys 0.0% 0
Individual agent/attorney 42.9% 3
Results
Comments  
Answered question 7
Skipped question 0

3. Can an association of agents or attorneys be appointed in respect of trademark applications, rather than appointing an individual agent/attorney by name or number? (Consider that an association may be something as structured as a law firm or may be a loose association of independent agents and attorneys that provide in locum coverage during holidays or other absences.)

  Response Percent Response Count
YES, an association can be appointed 83.3% 5
NO, an individual must be appointed 16.7%  
Results
Comments 3
Answered question 6
Skipped question  

4. If your answer to question 3 was YES, does the trademarks office nevertheless require the name, number, or signature of an individual member of the association to be present on all correspondence?

  Response Percent Response Count
YES, a name, number, or signature of a member is required even when the association name is present on the correspondence 40.0% 2
NO, the identity of the association is all that is required 60.0% 3
Results
Comments  
Answered question 5
Skipped question 2

5. When appointing an agent/attorney/association in respect of a trademark application, that individual/association is identified by name or by a number?

  Response Percent Response Count
Name only 57.1% 4
Number only 0.0% 0
Either is acceptable 28.6% 2
Both name and number are required 14.3%  
Results
Comments 3
Answered question 7
Skipped question 0

6. What are your likes and dislikes about the use of an agent/attorney number foridentification in the trademarks office?

Results
Answered question 5
Skipped question 2
Response Count 5

7. When an individual agent/attorney joins or leaves a firm/association, is there a requirement to update the firm/association record? What problems, if any, arise with respect to the firm/association registration record when individuals join or leave a firm or association?

Results
Answered question 7
Skipped question 0
Response Count 7

8. What assessment, inquiry or other scrutiny is made by the trademarks office prior to a firm or individual being entered on the register of authorized agents/attorneys (regarding qualifications, residency, legal status, etc.)? Is the information periodically reviewed by the trademarks office?

Results
Answered question 7
Skipped question 0
Response Count 7

9. Are trademark agent/attorney registration records (whether identified by name, number, or association) associated in a database with trademarks office disciplinary records?

Results
Answered question 7
Skipped question 0
Response Count 7
Q1. Please identify the trademarks office with which you are registered as a trademark agent/attorney, and with which you file the greatest number of applications (e.g. USPTO, EPO, etc.)
1 IPONZ (Intellectual Property Office of New Zealand) Feb 19, 2014 6:56 PM
2 Australian Trade Marks Office Feb 18, 2014 6:44 PM
3 New Zealand Feb 18, 2014 6:44 PM
4 Both the Intellectual Property Office of New Zealand & the Australian Patent Office Feb 17, 2014 4:33 PM
5 Japan Patent Office Feb 17, 2014 3:25 AM
6 CTM Office (community trademarks) Benelux Office (the response below are for the CTM Office) Feb 14, 2014 6:56 AM
7 IP Australia, IPONZ Feb 13, 2014 5:02 PM
Q2. When appointing an agent to act before the office, which name(s) may appear on the appointment (please click all that apply)?
1 The firm must be comprised of duly qualified persons. Feb 17, 2014 9:30 PM
Q3. Can an association of agents or attorneys be appointed in respect of trademark applications, rather than appointing an individual agent/attorney by name or number? (Consider that an association may be something as structured as a law firm or may be a loose association of independent agents and attorneys...)
1 There is no requirement to name individual attorneys responsible for the case to be identified. Feb 19, 2014 6:56 PM
2 See (6) below. Feb 17, 2014 9:30 PM
3 An association must be incorporated as a firm. Feb 17, 2014 3:25 AM
Q4. If your answer to question 3 was YES, does the trademarks office nevertheless require the name, number, or signature of an individual member of the association to be present on all correspondence?
1 I don't know what the tm office does do! Feb 17, 2014 9:30 PM
Q5. When appointing an agent/attorney/association in respect of a trademark application, that individual/association is identified by name or by a number?
1 IPONZ allocates a number for each entity in its database, whether that entity is an attorney, firm or applicant. It is necessary to log in to the IPONZ database to submit an application and through that log in the system recognises our firm at the agent/contact/address for service for the application. Feb 19, 2014 6:56 PM
2 I don't know what the tm office does do! Feb 17, 2014 9:30 PM
3 We have "attorney codes" in Australia, NZ a name only is required. Feb 13, 2014 5:02 PM
Q6. What are your likes and dislikes about the use of an agent/attorney number for identification in the trademarks office?
1 In Australia it is an attorney code and it is good as it enables easier change of attorney's details (i.e. when the firm changes address it can be done easily for all trade marks for which the attorney is addressed for service). Additionally, it very quickly enables you to perform a search for all trade marks filed by that association, etc. Feb 18, 2014 6:44 PM
2 Dislike: because from here in New Zealand the key identifier is the firm. Individuals come and go. Also the standard of service is, I think, set by the firm. But always the firm is the sum of the individuals. Feb 17, 2014 9:30 PM
3 ID number is just useful. Feb 17, 2014 3:25 AM
4 It is easy and fast. Feb 14, 2014 6:56 AM
5 Neutral. Feb 13, 2014 5:02 PM
Q7. When an individual agent/attorney joins or leaves a firm/association, is there a requirement to update the firm/association record? What problems, if any, arise with respect to the firm/association registration record when individuals join or leave a firm or association?
1 No. Feb 19, 2014 6:56 PM
2 No problems arise as individual attorneys are not noted as the representative, it is only the firm. Feb 18, 2014 6:44 PM
3 This aspect is another reason to dislike, see 6 above. What happens if a firm is recognised and all the qualified persons have left it? Feb 17, 2014 9:30 PM
4 No formal requirement, although the agent will no doubt want to notify the IP office. Feb 17, 2014 4:33 PM
5 Update of the individual record is required. As far as the incorporated firm is concerned, update of the firm record is probably necessary. Feb 17, 2014 3:25 AM
6 Yes it has to be updated. Feb 14, 2014 6:56 AM
7 No requirement for update. Feb 13, 2014 5:02 PM
Q8. What assessment, inquiry or other scrutiny is made by the trademarks office prior to a firm or individual being entered on the register of authorized agents/attorneys (regarding qualifications, residency, legal status, etc.)? Is the information periodically reviewed by the trademarks office?
1 In NZ there are registered patent attorneys only (i.e. no registered trademark attorney). One qualifies by examination, which are run in part by IPONZ. Upon completing the examinations the newly qualified candidate applies to IPONZ to be registered as a patent attorney. To maintain the registration is renewable annually. There is no residency requirement for registration. Feb 19, 2014 6:56 PM
2 An application must be filed which demonstrates that set criteria are achieved and requisite tertiary education has been conducted. Then the Patent and Trade Mark Standards Board assesses each application. Feb 18, 2014 6:44 PM
3 I don't know what the Office actually does. This is where a register of individuals who have been examined and passed by a competent authority as fit to practice is most important. Feb 17, 2014 9:30 PM
4 The person applies to join the New Zealand Institute of Patent Attorneys as a member, and the Institute then informs the IP office. Feb 17, 2014 4:33 PM
5 An attorney is registered as a member of the Patent/Trademark Attorney Association and is under the control of the Association. Office does not make assessment. Feb 17, 2014 3:25 AM
6 Proper qualification not reviewed once the number is given. Feb 14, 2014 6:56 AM
7 No assessment other than for registered trademarks attorneys. Lawyers are allowed to act. Feb 13, 2014 5:02 PM
Q9. Are trademark agent/attorney registration records (whether identified by name, number, or association) associated in a database with trademarks office disciplinary records?
1 IPONZ maintains a list of registered patent attorneys. Disciplinary action is the responsibility of NZIPA (NZ Institute of Patent Attorneys Inc) and records of disciplinary action are confidential. Feb 19, 2014 6:56 PM
2 Unsure. Feb 18, 2014 6:44 PM
3 I don't know what the Office actually does. Feb 17, 2014 9:30 PM
4 They are in a database run by the IP Office. There are no disciplinary records. Feb 17, 2014 4:33 PM
5 Yes. Feb 17, 2014 3:25 AM
6 I do not know. Feb 14, 2014 6:56 AM
7 Registered trade mark attorneys, yes. Firms/agents, no. Feb 13, 2014 5:02 PM