Project charter—Enhancing relationships with stakeholders: IP agent community and associations
The Canadian Intellectual Property Office (CIPO) is responsible for administering most of the intellectual property (IP) regimes in Canada.
The IP agent community, represented by several associations, has had a long-standing relationship with CIPO. Patent and trademark agents are the primary interface between CIPO and Canadian and foreign inventors and innovators in drafting and prosecuting applications on behalf of our customers. Over the years, the agent community has brought to CIPO's attention a number of issues that it believes the Office should address. CIPO has taken these into consideration and will further consider and prepare recommendations this year concerning the following:
- the maintenance and oversight of the register/list of patent and trademark agents;
- the qualification and maintenance of patent and trademark agents on the register/list; and
- a values and ethics framework for trademark and patent agents in prosecuting applications before CIPO.
The following principles will guide this initiative:
- CIPO will work collaboratively with the IP agents to develop recommendations and options.
- The focus will be on our customers, innovators and businesses.
- Proposed recommendations and options will benefit from best practices in other jurisdictions.
Governance of the initiative
In keeping with the stated principle of collaboration with IP agents and their associations, CIPO will launch three working groups to develop options and recommendations to address the challenges of each of the three issues referred to above. Each of the three working groups will be co-chaired by one CIPO representative and one person from the IP agent community. Together, the co-chairs will select members for the working groups. To conduct their business, the working groups will be supported by a secretariat from CIPO.
The Commissioner of Patents, Registrar of Trademarks and CEO of CIPO is the decision-maker with respect to the recommended options submitted by the co-chairs of the working groups.
Deliverables and timelines:
- Co-chairs will be identified by end of June 2013.
- Call-out seeking members of the working groups will be sent out in July 2013.
- Members of the working groups will be selected and membership published on the CIPO website by September 2013.
- The working groups meetings will start in September 2013 and finish by December 2013.
- Co-chairs of each working group will submit a written report with considerations, recommendations and potential solutions to address the issues for consideration by the Commissioner of Patents, Registrar of Trademarks and CEO of CIPO.
Scope of work for each project
By statute, CIPO is required to maintain a "register of patent agents" and "a list of trademark agents". At the customer roundtables organized by CIPO, SMEs, inventors and innovators requested that this tool be made more useful. For instance, it is not comprehensive or searchable, and is not organized by area of expertise or specialization.
CIPO's clients need to make business decisions about intellectual property. Those decisions can have considerable financial impact. CIPO aims to assist its clients by improving the management/oversight of the register of patent agents/list of trademark agents. Once complete, a revamped register/list will be a more useful tool for CIPO's clients to consult when searching for IP professionals.
Review of how we qualify and maintain agents on the register/list
CIPO currently administers the qualifying exams in collaboration with IPIC for patent and trademark agents. The number of candidates writing the exam has increased over time. However, the qualification model has not been reviewed or substantively modified in well over 20 years and 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 benefit from international practices and 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.
Values and ethics
Although several of the IP associations have a code of conduct for their members, CIPO currently does not have any guidelines with respect to how to conduct oneself as an agent before the Office. As such, there is currently no indication as to how a member of the public can make a complaint about a registered agent, nor are there any provisions for recourse or discipline beyond removal of a patent agent from the register following a complaint. In many countries, there are standards, codes of conduct and mechanisms in place to ensure that agents provide clients with a comprehensive level of service and also for addressing complaints.
The working group will look at best practices and will make recommendations with respect to developing an appropriate model that will address these gaps.
Taken together, the recommendations that will be put forward by each group should enable CIPO to improve services to its clients and ensure that current and future patent and trademark agents are equipped with the essential tools and qualifications to best address the needs of Canadian business and innovators.