October 9, 2014 to December 9, 2014
Innovation and the development of new ideas and new products are central to Canada's future prosperity. For this reason, the Government of Canada has been moving forward over the last several years to modernize Canada's intellectual property (IP) framework to better align it with international practices.
During this same period, the Canadian Intellectual Property Office (CIPO) has been working to transform its services to more effectively support businesses innovative undertakings and ultimately, their success. These efforts have coincided with the ongoing interest of the IP agent community to deliver the best services possible to Canadian businesses and innovators.
Within this environment of IP modernization and service improvements, CIPO and the IP agent community recognized the importance of also modernizing the way in which they do business together to serve Canadian businesses and innovators.
The Modernizing the IP Community initiative was therefore launched in June 2013 as a collaborative effort between CIPO and representatives from the IP professional community. Over a period of several months, working groups made up of CIPO officials and members of the IP profession undertook an in-depth analysis of issues related to:
- improving the maintenance and oversight of the register/list of patent and trademark agents;
- improving the qualification and maintenance of patent and trademark agents on the register/list to ensure only the most prepared candidates write the qualifying exams and that successful agents continue to update their skills throughout their careers; and
- creating a values and ethics framework for IP agents to support the IP profession and ensure the highest value of service to innovators and businesses.
The result of this work is a comprehensive final report and a total of eleven (11) recommendations designed to 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 businesses and innovators.
Consultation and discussion
It is the purpose of this consultation to obtain feedback on these recommendations, which follow below. For more details on the proposed changes, your attention is directed to: Modernizing the IP Community. Please review this report and provide your comments.
A) The maintenance and oversight of the register/list of patent and trademark agents
By statute, CIPO is required to maintain a "register of patent agents" and "a list of trademark agents." At customer roundtables organized by CIPO, SMEs, inventors and innovators requested that this tool be made more useful. For instance, it is neither comprehensive nor searchable. The report proposes several approaches to improve the register/list of agents.
- 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.
- Agents should be capable of and responsible for keeping their personal contact information up-to-date on the lists.
- 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.
B) IP agent qualification
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, too many candidates are not adequately prepared to write the exams, and there are no limits to how many times someone can write an exam or how long they are allowed to carry forward their qualifying marks. Plus, agents are not tested on foreign IP law, although they may assist clients in filing for IP protection in other countries.
The report therefore proposes the following:
- Eligibility to write the substantive agent qualification 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.
- To improve administrative efficiencies and promote candidate preparedness, while ensuring qualified agents have passed current exams, limits should be placed on the time and/or number of attempts allowed to pass the exams, and exam fees should increase with the number of attempts.
- The scope of agent qualification 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).
C) Continuing professional development
In Canada, there are no ongoing professional requirements for IP agents to maintain their status as a registered/listed agent. Currently, patent and trademark agents participate in CPD activities on a purely voluntary basis. The report provides the following recommendations:
- 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.
D) A values and ethics framework for trademark and patent agents in prosecuting applications before CIPO
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 or in conducting business with innovators. 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 order to support the IP profession and ensure the highest value of service to innovators, the report proposes:
- There should be a requirement for all registered agents on the lists to abide by a code of conduct. The code should be modeled after the IPIC Draft Code of Conduct, which is aligned with the Federation of Law Societies Model Code of Professional Conduct.
- A values and ethics framework should be created, comprising members of CIPO and the IP profession, as appropriate, tasked with the following functions in the disciplinary process:
- complaint-receipt function;
- review function;
- investigative function; and,
- tribunal (with an additional member from the public).
Submission of comments and contact information
Any comments you may wish to submit or factors that would be useful to consider will be reviewed during the consultation period and will be considered prior to being posted on this website. Please note that all comments will be retained online for three (3) months from the date of posting.
Please submit comments by December 9, 2014 by email to the attention of Konstantinos Georgaras, Director of Policy, Planning, International and Research Office to OPIC-CIPO.firstname.lastname@example.org, by fax at 819-997-5052, or by regular mail to the following address:
Canadian Intellectual Property Office
Policy, Planning, International and Research Office
50 Victoria Street
Place du Portage II
Gatineau, QC K1A 0C9
Attention: Konstantinos Georgaras, Director of Policy, Planning, International Affairs and Research Office