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2. Modernizing the register of patent agents and the list of trademark agents

2.1 Background

CIPO is required by legislation to keep both a register of patent agentsFootnote 1 and a list of trademark agentsFootnote 2 (the lists). During roundtable discussions held by CIPO, these lists were specifically identified by customers as in need of improvement. Since they serve as front line tools to customers, CIPO has undertaken to review the usefulness of this service in order to support those in search of a qualified IP agent.

2.2 Agent lists

The starting point for this review stems from CIPO customers asking for an easily accessible, authoritative list of qualified agents and their area of technical specialty. Footnote 3 An initial review of the register of patent agents and list of trademark agents has revealed that the lists are antiquated, challenging to use, incomplete, and not up-to-date. Presently, the lists are accessible through the CIPO website or by contacting the CIPO Client Service Centre. The lists themselves appear to be difficult to find for those not already knowledgeable in the field of IP or familiar with CIPO's website.

2.2.1 Register of patent agents

When a Canadian resident patent agent registers or renews with the Patent Office, they are asked if they would like their name published on the publicly available register of patent agents. The CIPO website indicates that this is a "limited list of registered patent agents who are open to accepting new clients". Footnote 4 Those that do not wish to have their names published are kept on a complete list that is held only by CIPO.

Non-resident patent agents may add their names to the register as long as they pay an entry fee and are in good standing with the patent office in the country of their residence. Footnote 5 These names, however, are not published on the publicly available register.

Firm names may be entered on the register as long as the name of at least one member of the firm is also entered on the register. Resident firm names are published on the publicly available register unless requested otherwise by the firm. Non-resident firm names are not published.

The names on the register are sorted in an alphabetical listing, although when selecting a specific letter within the alphabetical listing, the names are not in alphabetical order. The names are also sorted into geographical categories. All provinces except Prince Edward Island are represented; the territories are not represented.

2.2.2 List of trademark agents

The Trademarks Office only keeps a single list of trademark agents. This list is publicly available and consists of qualified resident agents, non-resident agents, and firms.

The names on the list are sorted alphabetically and also into geographical categories by major centres and regions, including an option for other countries. The category for other countries is clearly not an exhaustive list. Non-resident agents can be found throughout the alphabetical listings even though they are not included in the specific category denoted for other countries.

2.2.3 Shortcomings of the lists

The CIPO website does not identify the purpose of the lists. There is no indication of the qualifications required to be entered on the lists. There is a discrepancy between the two lists in that one is a limited list of published names while the other is a comprehensive list. Finally, it is not clear from the website how up-to-date the content of the lists is.

The current list of trademark agents includes non-resident agents, but does not indicate the inherent constraints placed on these foreign agents. Non-resident agents must appoint an associate agent who resides in Canada in order to correspond with CIPO in respect of an application. Footnote 6 This lack of information can be misleading to applicants.

Another glaring drawback to the lists is the complete lack of effective searchability. There is no keyword searching function available for either list. From the perspective of the customer, the lists are not easily found and do not present themselves as user-friendly.

2.2.4 Agent lists in other jurisdictions

Other jurisdictions were reviewed to determine whether and how IP agents, lawyers, attorneys and firms appear on the official register, list and/or database of persons or firms recognized to act before their respective authorities. Specifically, the foreign jurisdictions reviewed were: Australia, the European Union, the United Kingdom, New Zealand, Japan and the United States.

In general, where an authority does not keep an official list, a professional oversight body independent of the authority will hold and maintain a list. Regardless of who holds the list, its existence may not be obvious to those with little experience in the field of IP. Agent lists in foreign jurisdictions range from unsearchable to fully searchable online. Where searchable, information is generally limited to name and contact information.

Other findings of interest:

  • Some authorities or professional oversight bodies maintain one list covering patent and trademark practitioners. Others maintain separate or multiple lists.
  • There is a range of frequency to updating the lists in the jurisdictions that were reviewed. The longest cycle between updates is annually.
  • For some authorities, presence on an official list is mandatory to practice before that authority.
  • Not all jurisdictions allow firm names as unique entries on their agent lists.

The only common point between all lists appears to be that, whether mandatory or voluntary, if a person or firm has requested presence on a list, they must be qualified to practice before the authority holding the list. The requirements that underpin such recognition may or may not be readily accessible.

In summary, not every authority requires a list of individuals or firms authorized to practice before that authority. Where lists exist, it is unclear whether all authorities require that such lists reflect every person or firm qualified to act before them. Online search functions, where available, can be a challenge to locate and may reflect only basic contact information about an individual or firm.

2.3 What should be on the lists and how should it get there?

One of the main purposes of the lists is to provide customers with a tool to identify qualified patent or trademark agents. The working group is of the opinion that there would be value in providing information in addition to what is currently available from the lists (see Appendix C for a sample of current listings).

2.3.1 Information to be included on the lists

The following should be included for all entries on the lists:

  1. Name of the agent or firm.
  2. Contact information (address, phone number, email, link to agent or firm website).
  3. For agents, year of registration.

An end-user of the list should be able to search the information by a single or a combination of criteria, including agent name, geographic location, year of qualification and firm name (see Appendix D for a mock-up).

As discussed in section 2.2.3, there should be a disclaimer published alongside any non-resident agent or firm appearing on the lists. It is suggested that the disclaimer clearly state that the foreign agent or firm must appoint a Canadian resident agent in order to correspond with CIPO regarding all matters related to an application.

2.3.2 Updating contact information on the lists

A primary concern with the lists is the assurance that the available information is up-to-date. As an authoritative listing, it is imperative that the details be accurate. As such, this working group believes that agents should have online access that allows them to be responsible for keeping their own contact information up-to-date.

Each agent should oversee their own contact information. They would be expected to update any changes to their contact details within a reasonable timeframe. Agents should be provided with secure access to their contact information in order to make changes as required.

2.3.3 Validating information on the lists

In an improved agent list, the information found on the list could come from the following main sources:

  1. The administrator of the qualification process for agent eligibility on the list (candidate has met the qualifications).
  2. The qualified agent, once confirmed by the entity administrating the qualification (contact information).
  3. The administrator of a continuing professional development (CPD) program, if CPD is adopted (agent has met the requirements).
  4. The administrator of a code of conduct, if a code of conduct is adopted (in cases where disciplinary measures have been taken).

From a process perspective, there would be three elements after receiving the source information:

  1. Validation,
  2. Publication, and
  3. Update/Status.

The figure below describes the sequence for these three elements in the process of maintaining and overseeing the agent lists.

Description of the image

This figure describes the sequence for three elements in the process of maintaining and overseeing the agent lists.

These are:

  1. Validation,
  2. Publication,
  3. and Update/Status.

The source of the information that will be on the list once an agent has qualified is gathered from the administrator of the qualification process for agent eligibility on the list; the administrator of a Continuing Professional Development (CPD) program, and the administrator of a code of conduct.

The confirmation of the qualification is communicated by the entity administrating the qualification process to the one administering the list.

The first step, validation, is the review of the information to be part of the list and its approval by the Commissioner of Patents, Registrar of Trade-marks and CEO of CIPO.

The second step is the publication of the information on the list.

The third step, update/status, serves to update the information on the list as agents meet their CPD requirements, are subject to disciplinary measures, or make changes to their contact information.

The source of the information that will be on the list once an agent has qualified is gathered from the various parties. The confirmation of the qualification is communicated by the entity administrating the qualification process to the one administering the list. At this stage, the qualified individual is asked to provide their contact details.

The first step, validation, is the review of the information to be part of the list and its approval by the Commissioner of Patents, Registrar of Trademarks and CEO of CIPO.

The second step is the publication of the information on the list.

The third step, update/status, serves to update the information on the list as agents meet their CPD requirements, are subject to disciplinary measures, or make changes to their contact information.

2.4 Further investigation required

The remaining items are suggested for further investigation and may be dependent on the implementation of other recommendations in this report.

  • Educational credentials could be provided by the agent and verified by CIPO.
  • CPD status could be provided by the body responsible for administering CPD.
  • Disciplinary history could be provided by the body responsible for administering disciplinary decisions.
  • With the adoption of an improved mechanism for allowing associations of agents to correspond with CIPO, firm names could be removed as individual entries on the lists. The issue of firm names on the lists garnered much discussion, but no consensus was reached. Some of the fundamental questions that were raised include:
    1. how does a firm qualify to be on the lists?
    2. does a firm have CPD obligations?
    3. how would a firm be disciplined? (See Appendix E for surveys conducted by the working group of foreign IP offices regarding the issue of association of agents.)

2.5 Conclusions

The above findings have led the working group to conclude the following:

  • It is clear that the register of patent agents and the list of trademark agents require updating to offer more accurate and useful information that better serves customer needs.
  • Being an official Government of Canada website, a published list on the CIPO website carries a high level of credibility and a consequent expectation that the information be accurate and complete. Customers have asked for help selecting a qualified IP agent; updating the register of patent agents and the list of trademark agents will assist in this step.
  • The list should be populated with useful and accurate information. The name and contact information of the agent or firm is the primary data to be presented. The year of agent registration may also be helpful to prospective clients and is readily verifiable to ensure its accuracy.
  • Some additional information was considered for inclusion on the lists, but was not found to be appropriate at this time. Verifying educational credentials poses various challenges and the agent's background may not be indicative of their primary field of work. Similarly, the association of a technical specialty with a particular agent was felt to be overly limiting to the agent and too subjective for consistent implementation.
  • Since agents that are either temporarily suspended or permanently removed from a list are not technically on the list, the working group does not find it necessary to include fields dedicated to disciplinary status. However, suspensions and removal from the lists, along with an explanation, should still be captured in a broader database that would be held by CIPO and searchable by the public. Any agent that is suspended or expelled should be clearly flagged as such.
  • Separate lists should be kept for patent agents and trademark agents. This is a legislative requirement and no compelling reason has been found to combine the lists. Each list should be a comprehensive roster of all registered agents and firms and this fact should be clearly stated along with the listings. The Canadian Patent Office practice of having both a public and an internal register of patent agents/firms should be discontinued.
  • All resident and non-resident agents, as well as resident and non-resident firms, should be included on the same list. However, there should be a clear disclaimer alongside any non-resident agents and firms that indicates that an applicant must appoint an associate agent residing in Canada in order to act on behalf of the applicant when dealing with CIPO.

2.6 Recommendations

It is the recommendation of this working group that:

  1. 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.
  2. Agents should be capable of, and responsible for, keeping their own contact information up-to-date.
  3. 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.