A New Approach: Modernizing the “Regulatory Framework for Patent and Trade-mark Agents” in Canada

On July 23^rd, 2013 the Intellectual Property Institute of Canada (IPIC) issued a statement to its members about an upcoming collaboration between itself, the Canadian Intellectual Property Office (CIPO) and the Canadian chapters of the International Federation of Intellectual Property Attorneys (FICPI) and the International Association for the Protection of Intellectual Property (AIPPI) for the purpose of “Modernizing the Intellectual Property Community”.

The purpose of this modernization project is to update three aspects of the profession of trade-mark and patent agents that would help align the industry with ‘best practices’ adhered to in different professional fields. The three mandates to be fulfilled include:

1. The maintenance and oversight of the register/list of trade-mark and patent agents;
2. The qualification and development of patent and trade-mark agents; and
3. A values and ethics framework for trade-mark and patent agents.
   
   

This initiative for change was spurred by discussions between IPIC and CIPO over the past few years about existing deficiencies within the regulatory framework. On May 27^th, 2010 IPIC submitted a consultation paper entitled “Sustaining Excellence: A Modernized Regulatory Framework for Patent and Trade-mark Agents” to its members with the intent of collaborating with CIPO to create new guidelines addressing these growing concerns. The main objectives summarized in the report included:

• The profession, through IPIC, would be responsible for the establishment of entrance requirements to become a patent or trade-mark agent, and determine whether the requirements are met.
• IPIC would maintain a code of ethics and a code of conduct for all agents.
• The profession, through IPIC, would manage the process for the discipline of agents.
• CIPO would continue to maintain the registers.
• CIPO would retain final say on disciplinary matters, including suspension or removal from the registers.
• CIPO and IPIC would establish requirements for insurance and for continuing professional development.
  
  

The members of IPIC approved this proposal at the 2010 AGM and gave the mandate to the IPIC Board of Directors to seek its implementation in collaboration with CIPO. However, because of changes in its leadership shortly afterwards, CIPO began the process in 2013 and invited IPIC, FICPI, and AIPPI to collaborate with them.

As per Michel Gérin, Executive Director of IPIC, the first step when CIPO launched the project was to outline and agree (i) to the general scope of the project, (ii) on the three working groups, and (iii) on their co-chairs (each of the associations has one). The plan is to conduct the actual study and discussions from September to March. CIPO will later invite patent and trade-mark agents ‘at large’ to comment on the recommendations made by the committees.

As Mr. Gérin, pointed out, it is likely that not all of the issues will be resolved in this short time, but it is moving forward in a positive and “transparent way”. Based on a generous interview granted by Mr. Gérin, on July 31^st, 2013, a summary of the objectives and changes are listed below.

MAINTENANCE AND OVERSIGHT OF THE REGISTER
By law, CIPO is required to maintain a “register of patent agents” and a “list of trade-mark agents” in order to facilitate access to clients. CIPO wants to ensure that these lists are always a true picture of the professionals available to serve Canadian innovators. Some small businesses owners have expressed to CIPO the desire to see more information about the agents on these lists. This will be a topic for discussion for the committee working on this project.

QUALIFYING EXAM/CONTINUING EDUCATION

Qualification
The licensing process for patent and trade-mark agents involves on-the-job training, self-study, and optional courses offered by IPIC. It culminates in an examination managed by CIPO in collaboration with IPIC (i.e. three of the four papers for the patent exam are prepared by IPIC members).

Trade-mark and patent agents are not required to be licensed lawyers, nor are they required to have a legal education. A patent agent applicant must be a trainee for one year (either in a law firm or an intellectual property firm) and must write the self-study examination. IPIC supports a CIPO proposal that the training period be changed to two years because a single year is not enough. After consultations, this change is now awaiting a cabinet decision. A trade-mark agent applicant is required to train at a firm for two years and then complete the exam, unless s/he is a lawyer who has already practiced in the area for two years. The changes to the regulations propose that lawyers will also have to write the examination.

CIPO has proposed the creation of this project group to determine whether the admission process outlined above needs to be modernized. Mr. Gérin hopes that the members of this project committee will consider IPIC’s proposal to manage the entire qualification process with CIPO continuing to administer the list and decide who may be added or removed from the list, based on IPIC’s recommendations. IPIC proposed to manage the process because it has done a lot of committee work and research over the years to identify possible improvements to the admission process.

Continuing Education
Once successful, those patent and trade-mark agents who are not lawyers are not obliged to take continuing education requirements the same way agents who are licensed lawyers do. CIPO would like this project committee to consider continuing education requirements for agents. Mr. Gérin stated that IPIC supports this view because “more and more, there is an expectation for continuing education requirements . . .” by the public. He also observes that although the continuing education classes are not required for agents, the agents themselves have already been quite active in taking the webinars and courses that are offered by IPIC and by other associations.

CODE OF ETHICS
Currently, CIPO does not regulate the conduct of registered agents via a code of ethics, even though it has the power to remove an agent from the practice. There are several deficiencies in this practice – first, there is no clear process; second, there are no intermediary measures; and finally, there are no clear mechanisms in place to facilitate communication between CIPO and the public for the purpose of complaints.

Trade-mark agents are mostly lawyers who would have to adhere to the Rules of Professional Conduct set out by the Law Society of Upper Canada, while patent agents are individuals who are highly educated in science and engineering fields and whom do not have the same requirements. As Mr. Gérin stated, “We [IPIC] felt that . . . this profession should be held up to the same standards as other professions in Canada. You should have a mandatory code of ethics or code of conduct for the profession.”

Members of IPIC already agree on a voluntary basis to adhere to IPIC’s Code of Ethics, which is now in the process of being updated (last adopted in 2001) to reflect recent changes in the codes for lawyers and case law regarding conflicts of interest. Mr. Gérin believes that the work done by IPIC  in this area will be useful for the project committee.

CIPO would also like the committee to look at intermediary disciplinary measures such as additional training. Finally, the working group will examine “best practices” to aid in making this process accessible and transparent for the public. Admittedly there are very little complaints against patent and trade-mark agents, which is why this initiative had not started years earlier.

OTHER CONSIDERATIONS
Finally, unlike many professions that are regulated provincially by self-regulated associations, IPIC’s proposal is modeled on a hybrid of self-regulation (via IPIC) and government involvement. This way CIPO can have the final say, which will guarantee public protection.

(Click here for CIPO’s August 12^th, 2013 response to our request for an interview.)

This modernization initiative by CIPO is a very welcome step forward for the community of patent and trade-mark agents. It seems like IPIC has much of the infrastructure already in place, and where it doesn’t it is willing to undertake much of the responsibility. We look forward to hearing the outcome of this initiative in March 2014.