Episode 38: How the IP agent profession is regulated

Lisa Desjardins (Lisa): You're listening to Canadian I.P. Voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor, or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights, industrial designs and trade secrets work in real life. I'm Lisa Desjardins, and I'm your host. The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office.

In today's economy, when most part of the company's value consists of intangible assets, like know-how and intangible property, it's no wonder that almost all patent applications and over half of trademark applications coming into Canada's I.P. office are prepared by a licensed patent agent or a licensed trademark agent. These professionals know the lingo, laws and procedures to get quality I.P. rights and as such, they are stakeholders in the I.P. ecosystem, their work has direct impact on companies' I.P. portfolios and therefore also the Canadian innovation system. But who regulates this profession and what are some of the tools available for creators and innovators to ensure that they get accessible, ethical and quality expertise from patent agents and trademark agents?

To learn more, I'm joined by Juda Strawczynski, who is the C.E.O. and Registrar of the College of Patent Agents and Trademark Agents, in short, CPATA. Juda it's a really special opportunity for us to have this interview, and I'm very happy to have you here, so welcome to this podcast.

Juda Strawczynski (Juda): Well, thank you so much for the invitation and for having me here today, thrilled to share information about the College's work.

Lisa: First of all, maybe you want to tell us a little bit about CPATA and your role as a registrar over there.

Juda: Sure. So CPATA is the College of Patent Agents and Trademark Agents. We were created by the government of Canada as part of Canada's Innovation Strategy. The idea behind it was that Canadians and innovators all should feel trust that there are highly ethical, highly competent expert professionals who can help from start through to fruition of a trademark or patent application and prosecution. Prior to the creation of the College, there were trademark agents and patent agents, but they weren't the beneficiaries of a full, robust modern regulatory structure, and that also meant that consumers didn't have access to that either. The government decided that with the importance of intangible assets that trademarks and patents in particular can play in our economy and in businesses, it was important to ensure that all Canadians benefited from a robust, modern, right touch regulator and they created the College to meet that goal. So our mandate is to regulate patent agents and trademark agents of the public interest. That means that we act in the best interests of all Canadians on behalf of innovators, on behalf of the licensees themselves, to make sure that we balance access with competency and make sure that we can facilitate access to true experts.

Lisa: And when was CPATA established?

Juda: Yeah, we're relatively new. So we were created as part of Canada's Innovation Strategy. But the College only came into force in June of 2021. So we're into our third year of operations right now. We're still in startup mode. It's been a rocket ship, and, from day one, we've been there to help the public navigate to be able to find trademark agents or patent agents. And one of the first things we had to do was create a new registry system where anyone from around the world could go online and search to find an agent by area of expertise. And I'm thrilled to say that if you go to CPATA's website, you can search for agents to find trademark agent or patent agent based on their license, based on the firm they're with, based on their geographic location, or by combining these search factors to narrow your search to find agents and make sure that they are in good standing and ready to accept inquiries from the public.

Lisa: That's fantastic, and we're gonna drop that link into the description of this episode as well so people can find it. The coming about of CPATA meant a bit of a change. So I was wondering if you could comment a little bit about your position in the ecosystem?

Juda: Right, so the College really was quite a catalyst into the system. Before the College was created, Canada had a partnership almost between the Canadian Intellectual Property Office and the Intellectual Property Institute of Canada, which was an association of members that focused on education and advocacy for its members, and the 2 together would build out training programs and exams. And the pathway to becoming a patent agent or trademark agent was really through serving as an apprentice for an existing agent and then passing exams that were administered by the government through the Canadian Intellectual Property Office. The problem with that model was that it wasn't really creating any independence between either government or the member association. And so the public as a whole wasn't necessarily sure where to go, or perhaps needed an extra level of regulatory oversight to have faith that those who are responsible for setting exams and for investigating complaints or setting standards is looking at the ecosystem as a whole, is looking at consumer needs, and not just those needs of licensees, is looking at consumer needs, and not just the government whose institutions are the ones who are actually going to be determining whether an application for a trademark or a patent application gets valid. And so when the College was created, it was created to be independent from government, and independent from the association. Although we consult with both significantly to make sure that we can have a well-functioning regulatory role, where the standards reflect true practice and can evolve over time to reflect changes in practice.

Lisa: Hmm. Very important role. And so if we're switching chairs for a little bit and I'm thinking about the agents who have been in Canada for quite some time then, what is their relationship now with CPATA?

Juda: Well, I think that it always takes a bit of growth to understand the roles of a regulator versus the role of an association versus the role of the I.P. office. And we're all coming to learn that over time, but I think that patent agents and trademark agents are extremely expert knowledge economy-focused workers, and they have quickly been understanding that the role of the regulator is a public interest function. We're looking at the system overall, trying to make sure that standards are clear and transparent, that our code of conduct would apply to all, that we are considering licensees' needs and practical considerations, but balancing that with needs to facilitate access to services and to make sure that there are proper safeguards in place just in case there are matters where there may be risk to the public. And so these days, we have a pretty strong working relationship with licensees. We actually rely on them heavily for standard setting, to help us come up with questions for exams, to help us understand how the rules are operating in practice, those ethical rules of conduct that apply to them, to understand market trends and we actually have over 80 licensees helping us at any given moment to advance our regulatory work and so well, it obviously always takes a little bit of getting used to significant changes in an environment with the introduction of a more modern, robust regulatory structure that is independent from the profession, the profession has come a long way in understanding the role of the regulator and coming along with us on this journey.

Lisa: That's quite a bit of engagement. I'm thinking about the agents for somebody who doesn't really know the different levels of agents. How many agents are there? Can you talk a little bit about the typical type and demographics of agents?

Juda: Yeah, the demographics are, of course, always shifting, and one of the first things we did is we surveyed the profession and we worked with Atticus, which is a known Canadian survey company to obtain information about our agents. And for the most part, the patent agent and trademark agent demographic reflects the population of Canada. There are some areas where it's not quite clear, based on the lower statistical information, so we're not sure whether we are representative, over-representative or under-representative of Black Canadians or Indigenous Canadians, but generally speaking, particularly compared to other legal service professions, we are more representative of Canada's demographic makeup. We're a small group, though, and so just looking at the numbers today, as of February 2024, if you look at our patent agent side, we have just over 900 fully licensed Class 1 patent agents. These are the patent agents who can not only file a patent but who can then prosecute it, can engage with the Canadian Intellectual Property Office for any substantive issues that may arise in the course of seeking a patent through the Canadian authorities. So it's a relatively small number, given the importance of patents to our economy. There are also a couple of dozen Class 2 licensees is what we are calling them, this again on the patent side, and these are patent agents who hold themselves out as patent agents. At times they will be in-house counsel. At times they will be working for in particular work environments where they don't need to necessarily prosecute a patent all the way through, but they're doing advisory work. They're working with their in-house client, and they are doing work, potentially even for clients in the public that comes up to the gates of CIPO, perhaps includes a filing before CIPO, but doesn't take the matter any further. And so there are particular workplaces where agents continue to hold themselves out and do this important work but don't necessarily need that full level license. We have 135 trainees at the moment for patents, and the training currently is a 24-month stage, a 24-month placement with a licensed patent agent followed by rigorous exams, and these exams are now administered both in English and in French, and available for the language of choice of the applicant by us, by the College. We then have a few inactive licensees. These are people who may be off on a parental leave or a medical leave, who just aren't sure right now whether they wish to continue to offer the services but don't want to resign as a licensee at this time. But generally speaking, we have just under 1,000 active patent agents in Canada. On the trademark side, some less technical work, but very important work, nonetheless, we have a few more licensees, we have about just under 1,500 Class 1 licensees who can advance the trademark not just at the filing, but through the full prosecution stages in front of the Canadian Intellectual Property Office, we have about 150 who are training and just under 90 in that class that might either be in-house or are directly serving the public to the filing stage, but no further. And so, all in all, we've got approximately just over 2,900 licenses. Of course, some people are both patent agents and trademark agents and there are all sorts of ways that this can happen. There are dual licensees with the full rights of both. There are some who have completed one license and are training to be another. But all in all we have about 2,900 licensees for all of Canada and located in Ontario primarily, and then Quebec, B.C., Alberta and the rest of Canada.

Lisa: Are these mostly lawyers?

Juda: Interestingly, the demographics so far, and this is a bit dated because our survey's from a couple of years ago now, but just under half of our patent agents are lawyers as well. On the trademark side that tends to be a higher number. It's important to know, though, that it's not just lawyers. There are also engineers and other professionals who may also hold this professional designation. Given the technical legal nature of the work, it's unsurprising that lawyers are interested in this field and have often sought to become licensed patent agents or trademark agents. At the same time, however, given that law school in Canada is a 3-year commitment, and it's a second degree for those outside of Quebec, in order to make sure that we have the high-level technical expertise, particularly on the patent side, many do not pursue a law degree. This gets even more interesting given Canada's multicultural backgrounds and origins because in Quebec law is a first degree program, which means that it is even less likely in Quebec that you necessarily have a law degree, if you're going on to be a patent agent. Patent agents typically come from a technical science, engineering, maths type of background given the technical nature of our patents.

Lisa: Could you explain the training program to become an agent from A to Z?

Juda: From A to Z, the pathway to become an agent currently in Canada is that if you are doing the training in Canada, you first would find a mentor. You would find somebody who's willing to take you on as an apprentice. There are solo agents. There are agents working in intellectual property boutique firms. There are agents in law firms, and those agents have the ability to supervise trainees. You would work at their hip, basically, as was the historic model for many professions, for 24 months. And at that point, starting in 2024, we have a new exam process. But you would then write those exams. You would start with a knowledge-based exam. And then there is a series of exams to test the application of that knowledge. And once you had completed those steps, assuming that you have been successful in each, you would be able to apply through the College to become a full licensee, able to do the full work of a patent agent and trademark agent at that time. You would also ensure that you have professional liability insurance as a Class 1 licensee so that as you engage and work on behalf of clients, both you and your client are protected in the event that a mistake might get made along the way. So it is quite a demanding path. It's a fairly demanding path across the global ecosystem of patent agents and trademark agents. The pathways are somewhat different in other areas of the world, and actually this year we're starting to explore that, and we're going to be looking at the pathways both to see if there's more we can be doing to make sure that people get the most out of apprenticeships but also we'll be looking at the other pathways that at times in other jurisdictions involve the ability to take post-secondary coursework towards the completion of the requirements to become an agent to see if there might be other ways that we could also create new pathways to become a patent agent or trademark agent in Canada. I'd be remiss also Lisa if I didn't mention that for foreign-trained applicants, for people who have already been working as patent agents or trademark agents, the College has recently revisited the requirements. It used to be that there is a minimum one year of prior work experience in Canada before you could write the exams to be considered to become an agent in Canada. And when the College came into existence, we looked at that requirement and decided that it was arbitrary and a bit unnecessary. There are some from other countries who could be serving as patent agents and trademark agents could have been working in their common law jurisdiction similar to ours or in other countries with lots of experience that would be applicable to the Canadian landscape. And so rather than requiring between 12 months and 24 months, the new requirement is between zero months and 24 months, and we look at each application on a case by case basis, and I'm pleased to see that what's happened as a result is on some occasions we've seen applicants with significant experience in intellectual property who have not had to complete a Canadian work placement before writing our exams, have written our exams and passed them on the first try, and therefore are immediately able to begin to serve clients. And so those are real Canadian immigration success stories that further build our economy at the same time.

Lisa: You mentioned the licenses and we've mentioned the link to where to find agents. And you also mentioned liability insurance. What would your words be to an S.M.E.? How should they go about choosing an agent? And what do they do if they're not happy with an agent?

Juda: So let's start with the proactive because there's always work that can be done. There are lots of different ways the patent agents and trademark agents offer their services and there are lots of different types of firms, lots of different offerings by different types of professions and different professionals. And I think part of the question is making sure that you are comfortable with your expert professional service provider. Regardless of whether this is a technical, legal, professional or even your accountant for that matter. There needs to be a right fit. And so some patent agents and trademark agents may generally work with innovators or may generally be comfortable working with SMEs, while others may work with more mature large-scale organizations, and so I think that anyone reaching out should feel free to ask about the experiences of the professional they're seeking to deal with. Ask them about the types of work, representative work that they have had experience in, whether they are comfortable and typically work with SMEs. Whether they are understanding of IP strategy more generally as it fits to the sector and how they would work with you to figure out the strategic goals and not just the product at the end of a trademark or a patent, to better understand the business needs and to understand a bit more about how they work, who they will be putting on a file to work with you. If it's a solo practice, it's quite self-evident. If it's a larger firm, you'll want to consider who's going to be part of your team, what the general reporting relationship will be, what is the expected pace at which you'll hear from them, when to pick up the phone, when it might be appropriate to email, what is the preferred method of communication? And you can ask about these, and of course you can ask about fees. Fees will vary, it will vary depending on the complexity of the matter, the amount of time spent on a matter and other factors, but you'll want to get a sense about whether it is block fee for a particular service A to Z, or whether it is a time-based fee and what steps you can be doing to make sure that you don't create churn, you don't create extra time, if it's on a time-based model, so that you get the best value out of working with a professional whose time is extremely valuable, as is yours, and so there are lots of ways to do this, word of mouth is obviously one way that can help. There are different innovator networks where you can ask for some recommendations, and you should feel free to ask as many questions as you feel you need to get a sense of the potential professional. Some will offer a free initial consult. Others may not, and that you can also take as an indicator as to which type of provider you may wish to be working with.

Lisa: And if the relationship turns sour, what can happen?

Juda: So when relationships with the professional patent agent or trademark agent turns sour, there are all sorts of reasons why that may happen and all sorts of ways to offboard. So when in doubt, you can always reach out proactively to the College. We have an agent inquiry form where you can reach out to say “I may be having an issue” and we can try to help informally resolve any issue that may come up. Sometimes it really depends on the reason for things not working. Sometimes projects are complex, and it could be an issue of fees. If you had only allocated X, and it looked like the fees were gonna take to Y, sometimes, that's not actually the fault of anyone. But it is a reality and as a professional, they are entitled to be paid for their services. And so sometimes it's a fee issue where it may not be wrong of that professional to say we can't continue this work unless we receive funds to cover invoices on an ongoing basis. Sometimes it's different than that. Sometimes it can be a miscommunication. Sometimes it can be about some sort of mistake that may happen along the way by one or by both sides of an arrangement. And so there's always the opportunity to try to resolve those by discussing the issues proactively as you see them coming. If you're having some trouble, if you're worried about where things are heading, it's a good time to check in with your professional. But if things are really starting to sour to you, you're always welcome to reach out to the College to raise the concerns and we have proactive ways to try to mediate or resolve conflicts before they might lead to a formal complaint. Now we also do accept formal complaints. And so if something is really not working, and you're frustrated, and you believe that this might have amounted to a true breach, not just some little mistake or some one-off mistake, but a real breach of their ethical duties or of their professional duties or of what you would expect of a competent agent, then you can file a complaint with CPATA and we will be duty-bound and will investigate it.

Lisa: That's very good to know. We are going to drop the link to the code of professional conduct if anyone wants to read more about that. Juda it's been fantastic. Thank you so much for taking your time to talk about the College with us and our listeners. Thanks for sharing your expertise today.

Juda: Well, thanks very much for having us Lisa.

Lisa: You're listening to Canadian I.P. Voices where we talk intellectual property. In this episode Juda Strawczynski, CEO and Registrar of the College of Patent Agents and Trademark Agents explained the role and mandate of his organization in Canada's I.P. ecosystem. If you are looking for an I.P. agent to help you with your I.P., or if you're interested to learn more about their code of conduct, open the description to this episode for links to CPATA.