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3. Qualifications for patent and trademark agents

3.1 Background

The need for qualified IP practitioners to represent applicants before the Canadian Intellectual Property Office dates back to the 19th century. Since then, patent and trademark agents have required a range of qualifications to be admitted onto the register of patent agents or the list of trademark agents held by CIPO. The requirements have evolved from simply being of good character and having an ability to prepare applications, to the present-day requirements that are set out in sections 12-15 of the Patent Rules and section 21 of the Trademarks Regulations.

Recent amendments to the Patent Rules and Trademarks Regulations have standardized the length of time (24 months) and the types of experience required for eligibility to sit for the agent qualifying examinations.

Presently, the patent agent Examining Board must set a qualifying examination for patent agents that requires candidates to demonstrate "a good knowledge of Canadian patent law and practice."Footnote 7 CIPO publishes the Candidate Guide to Writing the Canadian Patent Agent Examination on its website that states: "The Patent Agent Examination is a certification exam designed to assess the candidate's knowledge of the Patent Act, the Patent Rules, patent application drafting, case law and CIPO practice required in order to practice independently as a patent agent. The examination tests candidates' analytical and problem-solving skills as well as their skills in drafting and communicating with the Office and their client"Footnote 8.

The trademark agent Examining Board must set a "qualifying examination relating to Canadian trademark law and practice, including the preparation and prosecution of applications for registration of trademarks"Footnote 9. The Candidate Guide to Writing the Canadian Trademark Agent Examination states: "The Trademark Agent Examination is a certification exam designed to assess the candidate's knowledge of the Trademarks Act, the Trademarks Regulations, case law and CIPO practice required in order to practice independently as a trademark agent"Footnote 10.

3.2 Proposals for modernizing agent qualification

For the purposes of this report, the complete structure and content of the present qualifying exams was reviewed. As newly qualified IP agents have generally shown good fundamental knowledge of their profession, much of the present format for the exams was found to be effective and not in need of change. Below are some proposed changes that the working group believes will benefit the IP community.

3.2.1 Pre-screening

The status quo for agent qualification exams is for candidates to be able to write all exam papers as long as they have met the requirement of having worked in Canada in the area of Canadian patent or trademark law and practice, including the preparation and prosecution of applications, for a period of at least 24 months.

The problem with this approach is that there are a large number of candidates who are not prepared for the exams, use the exam process as a practice test and, therefore, do not pass. There is a significant cost to run the exam, which is not wholly covered by the examination fee. Due to the nature of the exam, where several hours are given to write each paper, the answer booklets from candidates are lengthy and complex. The Agent Examining Board is comprised of IP professionals and CIPO staff that devote significant time and energy into marking all of the exam papers. It is a waste of resources to continually test candidates who are not sufficiently prepared for the exam.

The motivation to change is related to the desire to screen candidates at a first step that requires a lower overall cost and marking effort. Only those candidates who show a preparedness to write the substantive exams should be admitted. As a result, the considerable resources required for marking will be better utilized by focusing on candidates that have demonstrated the base knowledge required to be an IP agent.

It is proposed that a pre-screening exam be adopted as an additional "paper" to be written by all candidates before attempting the substantive papers. The pre-screening test would be treated like all of the other papers of the exam except that it must first be passed before writing any other paper. There would be a separate pre-screening exam for patent agents and trademark agents, with content covering the core knowledge of either patents or trademarks respectively. The pre-screening exam would have to be written sufficiently far in advance of the substantive examinations to allow for the marking of the pre-screening exam and determination of eligibility of candidates to write the substantive examinations.

The pre-screening exam could be multiple-choice with the ability to be taken on a computer, therefore allowing for remote access. By testing candidates on short-answer type questions that may otherwise have been included in the substantive papers, it is possible that the substantive papers could be shortened.

The pre-screening approach is currently employed in Europe for patent agents. The European Patent Office has five exams in total, the first of which is the pre-screening exam. The pre-screening exam must be passed before candidates can enroll for the main examination papers. The United Kingdom has a series of foundation papers in both trademarks and patents that must be passed before candidates can write the advanced level papers. Candidates are exempted from some of the foundation papers by taking specific university programs. The United States does not have a pre-screening exam.

3.2.2 Administrative efficiencies

Presently, there is no limit to how many times a candidate can write the agent qualifying examination and how long they are able to carry forward their qualifying marks. The problem this leads to is that candidates can continue writing the exams for an indefinite amount of time and carry forward marks from exams that might have been testing material that is no longer relevant or accurate.

The motivation to change is to ensure all candidates who pass the exams are being tested on current material and not outdated material. Unlike practicing agents, who are expected to keep their skills up to date through professional development activities, no such safeguard can be expected of candidates not yet eligible to practice. When many years pass between the date a given paper is passed and the date the examination as a whole is passed, the expected state of knowledge can evolve significantly. A paper passed years ago is no longer assessing the information a candidate is expected to know on entry into practice.

Options considered include:

  1. A limit on the number of years that a pass mark on a given paper can be carried forward.
    • The benefit of this approach is that it ensures that candidates must keep up-to-date on the most current practices and laws.
  2. A limit on the number of times a candidate can write the exam.
    • This would eliminate candidates who have been writing for a long period of time and still cannot pass the exam; however there is some concern as to the impact of this option that must be further explored and a determination would need to be made as to the number of times it would be considered acceptable to write the exam.
  3. Increase the cost of writing the exam for subsequent attempts.
    • This would help cover the cost of the exam closer to its true cost for those who are not successful but continue to want to try to pass the exam. Presently, the exam fees do not cover the complete costs of administering the exams. A rising fee structure would reduce or eliminate the subsidy as a candidate rewrites a previously failed paper.
    • This would help discourage candidates who are not fully prepared for the exam from continually writing it without taking further action to ensure they are more likely to succeed.
    • The European approach is to allow for the first re-sitting of a paper to be at the basic fee, the fee for re-sitting a paper a second time is 150% of the basic fee, the fee for re-sitting a paper a third time is 200% of the basic fee, and a fee for re-sitting a paper for the fourth and subsequent times is 400% of the basic fee.
    • A similar gradual fee increase based on the number of attempts could be implemented, not to penalize candidates who may need to write the exam more than once, but to incentivize candidates to be properly prepared in early attempts.
  4. Require candidates to have gained their 24 months of work experience within the previous 60 months in order to write any of the substantive papers.
    • This approach would ensure candidates have obtained their work experience within a reasonable timeframe of attempting the exams.

The foregoing options aim to reduce the cost and time required to administer the exams by encouraging candidates to properly prepare for each attempt. These options provide greater incentive to pass the exams promptly by discouraging a prolonged examination process.

3.2.3 International aspects of the IP profession

The current terminology in the Patent Rules and Trademarks Regulations refers to "Canadian […] practice" which can be broadly interpreted to mean any practice relevant to a Canadian IP agent. This interpretation presumably extends to international practice such as the Patent Cooperation Treaty (PCT), which clearly falls under conventional Canadian practice. Nonetheless, there is some uncertainty regarding the interpretation in this instance of the term "practice" in the Patent Rules and Trademarks Regulations.

The expertise of the IP professional should be such that they are considered a trusted advisor to their clients. For both patent agents and trademark agents, this requires general knowledge of practice in major regions of interest to Canadian business, such as the United States, Europe, Japan and China. This knowledge should be sufficient to advise Canadian industry as to the general framework for acquiring IP rights abroad and potential pitfalls in those procedures. This also requires knowledge of international treaties, including those to which Canada may not adhere, but which may impact upon Canadian interests.

The level of expertise required is that necessary to develop, with the client, a coherent, effective IP strategy, subject to input from foreign professionals on specific issues. An agent must be aware that a Canadian applicant can avail itself of regional application procedures and what major countries are parties to those regional groups, even though Canada may not be part of that region.

Some of this knowledge is acquired through experience and ongoing training, but a core factual knowledge should be present at the time that the examination is written. The anticipated knowledge should be that readily available from standard reference sources. It is not expected that the level of knowledge would be sufficient to show professional expertise, such as opinions of registrability or validity, for foreign jurisdictions, but rather a working knowledge of the salient points of the law and practice necessary to identify potential IP strategy issues on which further advice can be obtained.

3.2.4 Values and ethics testing

The present agent qualifying examination does not formally test on values and ethics. In the event that a code of conduct for patent and trademark agents is adopted, it would become a requirement that all agents abide by the code. As adherence to the code would be a requirement to enter the profession and to remain on the register of patent agents or the list of trademark agents, it follows that prospective agents should be tested on the values and ethics expected of a professional IP agent. For any code of conduct to be effective, the membership of the profession must possess sufficient awareness and understanding of it.

3.3 Conclusions

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

  • A pre-screening test should increase the likelihood that candidates writing the substantive examination papers will succeed. This will provide time and cost efficiencies in administering the substantive exams as it will reduce the number of candidates to those who have a higher likelihood of passing the exams and joining the profession. It will force candidates to better prepare for the exam and avoid using the exam as a training exercise. It will speed up the marking as it will eliminate candidates who are not prepared and may also allow the substantive papers to be shortened as there would no longer be the need for short-answer questions.
  • Putting restrictions on how many times or how long a candidate can write the exams will ensure that agents qualify by demonstrating sufficient understanding of current laws and practices of the IP profession. These limitations would prevent candidates from gaining entry into the profession based on passing potentially outdated exams. Time constraints will also encourage candidate preparedness and reduce protracted examination.
  • A fee structure to the exams that escalates with additional attempts would help to recover costs associated with administering the exams from those candidates that have already had a subsidized opportunity to pass the exams.
  • All qualified IP agents should be well versed in essential foreign IP practice. IP agents with a good grasp of the workings of the global IP community will be better suited to assist Canadian clients operating in a global market.
  • There is a need to clarify what comprises "Canadian […] practice" in subsection 15(a) of the Patent Rules and subsection 21(a) of the Trademarks Regulations. Defining a specific requirement for knowledge of basic foreign practice, separate from strictly Canadian or international (e.g. PCT) practice, will serve to clarify the scope of the qualifying exams and the expectations of IP agents.
  • Where a code of conduct exists, there is an expectation that those to whom it applies have a thorough understanding of the code, their obligations under the code, and its application to the duties of their profession. The necessary awareness of the code and an understanding of how to abide by it must be learned prior to becoming an IP agent; ignorance of the code would pose a significant risk to the agent, client, profession and the public. Only those candidates with a sound understanding of the values and ethics required of an IP agent should be admitted to the profession. Confidence in the profession should be strengthened knowing that all members will have displayed sufficient knowledge of their responsibilities under the code.

3.4 Recommendations

It is the recommendation of this working group that:

  1. Eligibility to write the substantive 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.
  2. To improve administrative efficiencies and promote candidate preparedness, while ensuring qualified agents have passed current exams, limits on the carry-forward time and/or attempts allowed to pass the exams, and increasing fees with additional attempts, should be implemented.
  3. The scope of the 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).