4. Continuing professional development for patent and trademark agents
The working group was asked to consider whether the lack of ongoing professional requirements for agents to maintain their status as a registered patent agent or listed trademark agent is appropriate. As stated in the Project Charter (Appendix A) for this initiative:
“…there are currently no ongoing professional requirements for agents to maintain their status as a registered/listed agent. The current model needs to be modernized to a first-class learning and development regime for IP professionals. A new qualification model should […] encourage ongoing knowledge and competencies development throughout the career of an IP agent to ensure we continue to have high levels of quality service from IP professionals.”
The foregoing passage references continuing professional development (CPD), an initiative already adopted by several law societies and other professional organizations in Canada and around the world.
Generally, CPD is any learning activity that maintains or enhances an individual’s professional knowledge, skills, and ethics throughout their career. In the context of an IP agent, these learning activities are:
- relevant to the professional needs of agents, including the cultivation of new knowledge about patent/trademark law and practice;
- pertinent to the agent’s long-term career interests in patent/trademark law and practice; and/or
- related to the professional ethics and responsibilities of agents.Footnote 11
4.2 Reasons for mandatory CPD
CPD protects clients and the public interest. It is a preventive measure that ensures that professionals not only maintain, but also further enhance the professional knowledge and skill they use to serve others.Footnote 12
Currently, patent and trademark agents participate in CPD activities on a purely voluntary basis.Footnote 13 While there has been no indication that Canadian patent or trademark agents as a group are somehow deficient in their knowledge or skill, nothing in the current regime requires that agents proactively keep abreast of changes in law or practice.
Mandatory CPD appears to be generally endorsed by the patent and trademark agent profession in Canada. In an informal survey of its membership in 2010, the Intellectual Property Institute of Canada (IPIC) found that 72% of respondents supported the idea of setting requirements for CPD.Footnote 14
4.3 CPD in other jurisdictions
In Canada, many provincial and territorial regulators for lawyers, accountants, engineers and physicians, who face similar challenges in keeping up-to-date with legal and/or practice developments, have instituted mandatory CPD.
The United Kingdom, China, Japan and Australia are among the jurisdictions that require patent and trademark attorneys to complete annual CPD requirements. The United States Patent and Trademark Office does not have any mandatory CPD system.
4.4 A CPD program for the IP profession
A CPD requirement should apply to all registered agents on the lists, regardless of the amount of time they devote to actual patent or trademark work. It is expected that the CPD requirement may be waived or reduced in appropriate cases such as parental leave. However, a practising agent should not be exempt from a CPD requirement, or benefit from a reduced CPD requirement, simply because they do not practice full time. An agent working part time, or very little in the field, still makes use of professional skill, knowledge, and ethics to serve clients, just as a full-time agent does. CPD is therefore still a necessity.
A minimum number of hours should be established for both patent and trademark agents, taking into account comparable standards in similar Canadian professions, and in particular the legal profession, which is a close comparator. The mandated hours should be divided between professionalism topics and substantive IP topics. Professionalism topics include ethics, practice management, and client relationships. Substantive IP topics may be directed to patent, trademark, copyright, industrial design, trade secret law and topics in contract law, administrative law, and civil procedure related to IP matters.
There should be a nexus between the subject matter of CPD and the domain of the agent’s registration. Therefore, for both patent and trademark agents, a minimum number of hours should be set for substantive topics relating to the field of registration (i.e. patent law/practice for patent agents, and trademark law/practice for trademark agents). As a result, individuals who are qualified as both a patent agent and a trademark agent will be required to complete more than the defined minimum CPD requirement for each field. This model is followed in the Australian continuing professional education regime, in which an individual who is registered as both a patent attorney and a trademark attorney is required to complete five hours more of CPD than an individual registered as only a patent attorney or a trademark attorney.
It is expected that IP-related CPD currently offered by law societies or other CPD providers will be suitable for patent and trademark agents. Those agents who are also lawyers with CPD obligations would likely find that fulfilling their law society CPD obligations could meet many of the proposed agent CPD requirements.
It is suggested that the ability to carry forward hours of CPD earned in a given year to a subsequent year be prohibited. This would encourage agents to make CPD an annual habit.
A single regulatory body (the CPD administrator) should be responsible for both the administration of the CPD program and monitoring compliance, since these tasks are related.
Agents should be required to report their completed CPD hours to the CPD administrator on a regular basis, at least once per reporting period. The reporting and compliance monitoring processes should be defined by the CPD administrator, as well as any requirement for agents to retain attestations of participation, materials, and other documentation to support their reported CPD hours. An example of a suitable compliance monitoring process is a random audit of the documentation retained by the agent to support the reported CPD hours from the previous reporting period.
A mandatory CPD regime is ineffectual without an enforcement mechanism. The consequence for non-compliance should be suspension and potential removal of the agent from the register or list. However, client rights should not be placed in jeopardy (due to the removal of their agent) without first giving the agent time to rectify a deficiency and providing adequate notice to the client. For example, non-compliance with the CPD requirement (by failing to report, meet the target number of hours, or actually participate in eligible activities) could trigger a grace period during which the agent must complete their CPD obligations, failing which the agent is suspended from the register or list. The agent should still be given an opportunity to complete the CPD requirement and request reinstatement on the register or list.
4.5 What are valid CPD activities?
CPD activities should contain significant substantive, practical, or intellectual content relevant to the agent’s field. However, not every activity involving the exercise of intellect in the practice of patents or trademarks should be considered CPD; professional development is not earned in a vacuum. An agent who merely works on a client file may be perpetuating dated or incorrect knowledge, habits, and prejudices.
For CPD to have the desired benefit, a significant portion of the training activities should include an element of engagement or interaction with other professionals, such as trainees, peers and teachers. This gives the agent an opportunity to develop professionally through the exchange of knowledge with others. Consideration should be given to whether or not to limit the number of eligible hours of non-interactive CPD in a given year.
Eligible activities could include:
- attending in-person or remote conferences, courses, and seminars;
- attending in-person or remote organized in-house professional development sessions;
- presentations to peers, in person or remotely;
- teaching courses;
- structured mentoring or tutoring of agent trainees or junior agents;
- writing articles directed to peers; and
- developing course materials or agent examinations.
Ineligible activities could include:
- committee membership or participation on a board (although eligible activities performed in the course of the agent’s duties on the committee or board would remain eligible);
- self-directed study;
- marking coursework or examinations;
- work or activity attributable to a client file, whether billable or pro bono; and
- any activity aimed at marketing to clients, or time spent developing the agent’s business.
Based on presently available training activities run by professional associations (e.g. IPIC and the Law Society of Upper Canada) there appears to be sufficient access to relevant and creditable training opportunities.
The above findings have led the working group to conclude the following:
- CIPO and the profession share a desire to ensure that, post-qualification, IP agents stay abreast of changes in their line of work. A CPD requirement is a tangible indication that an IP agent maintains their qualifications throughout their career. A formal CPD system will promote the need for continuing education to IP agents and demonstrate to the public that ongoing training is an important tenet of the profession.
- CPD requirements have become conventional in the professional world and it seems appropriate to be adopted by IP professionals.
- The IP community has expressed a desire to adopt a mandatory CPD program. Its implementation should have minimal impact on IP agents since career education is generally already well entrenched in the professional IP culture.
- It appears that sufficient relevant CPD activities and opportunities are already available to the profession.
It is the recommendation of this working group that:
- 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.