On June 28, 2021, the new College of Patent Agents and Trademark Agents (CPATA) began to operate as the professional regulator of patent and trademark agents in Canada.
Like the Law Society of Ontario, CPATA is an independent organization set up to allow patent and trademark agents to oversee their own regulation. It is the result of more than a decade of lobbying by the Intellectual Property Institute of Canada (IPIC), the primary trade association for patent and trademark agents in Canada. IPIC will continue to operate independent of the College as the voice of profession similar to the way in which the Ontario Bar Association operates independently of the Law Society of Ontario.
Patent and trademark agents had been previously regulated directly by the Canadian Intellectual Property Office (CIPO). However, except for administering qualifying examinations and collecting annual license fees, CIPO engaged in little proactive governance and rarely administered any discipline. It is clear that CPATA intends to play a much more active role.
Initial Membership & Increased Dues
Prior to the establishment of the College, all patent and trademark agents were required to pay license fees to CIPO each year by March 31st. For a trademark agent, the annual fee was $300. For a patent agent, the annual fee was $350.
All patent and trademark agents licensed by CIPO prior to June 28, 2021 were automatically granted a license by CPATA. As its first order of business, CPATA increased the license fees. All currently licensed agents were required to pay supplemental fees by August 31, 2021 to maintain their license to practice for the balance of 2021 and, going forward, the annual fee will increase threefold:
- For individuals who are a trademark agent or a patent agent, the supplemental fee was $700 for 2021 and, going forward, the annual fee is expected to be $1000.
- For individuals who are both patent and trademark agents, the supplemental fee was $1050 for 2021 and, going forward, the annual fee is expected to be $1500.
Although many patent and trademark agents are also lawyers today, a law degree is not a requirement. Historically, lawyers could be registered as a trademark agent in Canada with minimal qualifications and without writing the qualifying examination, but this has not been true for several years.
For registration as a trademark or patent agent in Canada, all candidates must now:
- complete 24 months of work experience under the supervision of a registered agent;
- complete a training course prescribed by the College; and
- successfully complete the qualifying examination.
The qualifying examinations are administered each year in October for trademark agents and in November for patent agents. The College assumed responsibility for administering the examinations in 2021 and, due to the pandemic, the examinations were administered electronically.
Candidates must pay fees to register as an agent in training as well as fees to sit each examination. For trademark agents, the fees to sit both parts of the two-part exam is $400. For patent agents, the fees to sit all parts of the four-part exam is $800.
On October 5, 2021, CPATA announced that it would be introducing mandatory professional liability insurance in 2022 for all licensees actively engaged as agents in providing services to the public. The minimal requirements are:
- a liability insurance policy provided by an insurance company licensed in Canada, that will indemnify for civil liability arising from the licensee acting as a patent agent or a trademark agent;
- limit of liability is a minimum of $1.0 million per claim and a $2.0 million aggregate;
- liability insurance policy must cover claims made outside of Canada; and
- these requirements will be satisfied so long as inception of coverage under a liability insurance policy meeting the requirements is in 2022.
Agents who work in government or in-house are exempt from the insurance requirement.
Although licensees are not required to be insured against professional liability until the end of 2022, they are required to make all reasonable efforts to obtain the required insurance early in 2022. Licensees will be required to report on the status of their insurance when they complete their annual report which will be due March 31, 2022.
At this point, only the following insurers have confirmed that their programs comply with the College requirements:
- The Magnes Group Inc.
- Law Society of British Columbia Program offered by the Lawyers Indemnity Fund
- The Fonds d’assurance responsabilité professionnelle du Barreau du Québec
The policy offered by The Magnes Group Inc. was developed in consultation with IPIC over many years and is endorsed by IPIC.
The mandatory insurer for all lawyers in Ontario, LawPro, has indicated that its policies do NOT comply with the College requirements and that it does not expect to be in a position to offer such insurance for at least two years, if ever. As a result, lawyers in Ontario who are also agents will be required to obtain a second professional liability insurance policy specifically for their practice as an agent.
Code of Professional Conduct
On June 28, 2021, the code of professional conduct for agents also came into force. For agents who are also lawyers, it is also important to note that the rules do NOT apply to the extent that they conflict with other codes of professional conduct, statutes or regulations. If governed by two codes of professional conduct, the rule of thumb seems to be that you should comply with the more restrictive requirement where there is overlap.
The fundamental canon of the rules is succinctly stated as follows:
The most important attribute of an agent is integrity.
The code is divided into sections to address several fundamental issues such as competence, confidentiality, loyalty, candour, fair fees, withdrawal of services, courtesy, advertising and unauthorized practice.
Unique issues in these rules that may not be familiar to lawyers or that differ from those applicable to lawyers in Ontario include:
- no suggestion of academic or professional qualifications not possessed;
- no false indications of office locations;
- conflicts of interest when the agent contributes to an invention or trademark that is the subject of a patent or trademark application;
- implied consent to a conflict of interest will only be permitted where the client: (1) is a gov’t; (2) is a financial institution; (3) is a public company; or (4) has in-house counsel;
- non-agent cannot fix fees unless using schedule approved by agent;
- referral fees permitted if client consents and do not increase total fees for client;
- contingency fees permitted with conditions; and
- when discharged, agents are required to forward copies of any notices received before the gov’t updates its records to record the change.
Although not included in the rules of professional conduct, it should also be noted that the enabling statute prohibits agents from serving on the board and most committees for the College who are also members of “an association whose primary purpose is to represent the interests of persons who provide advice on patents or trademarks” such as IPIC.
Complaints & Discipline
The enabling statute mandates the formation of an investigations and discipline committee. It also requires that non-licensees form the majority of the members of this committee.
The committee is required to consider all complaints received by the College which, in the opinion of the committee, relate to allegations of professional misconduct or incompetence. It may also initiate its own investigation if it has reasonable grounds to believe that violations have occurred. With the consent of the complainant, it may also refer complaints to another body with authority to regulate a profession such as a law society.
The committee has broad powers of investigation and enforcement akin to those of a superior court. It can compel the production of documents and summon individuals to participate in oral hearings. Where discipline is warranted, the committee may discipline licensees in a range of ways, including the suspension or revocation of their license. Its decisions and the reasons for it must be provided in writing and may be appealed to the Federal Court.
Impact on Practice
While patent and trademark agents generally welcome the establishment of a college that recognizes their professional status and preserves the independence of their profession, its implementation has not been without controversy. The annual license fee increase was generally expected, but it was an unwelcome surprise for lawyers who already pay mandatory liability insurance that many will be required to obtain a second policy for their practice as an agent.
Together with the more rigorous requirements to become an agent, the additional administrative costs will discourage many lawyers from becoming a trademark agent or maintaining their status as a trademark agent. It may also encourage some trademark and patent agents who focus their practice exclusively on the prosecution of patents and trademarks to give up their license to practice law.
On the other hand, being licensed as both an agent and a lawyer is expected to be mandatory for those who are primarily engaged in advocacy respecting patents and trademarks. Only lawyers can appear before the courts and only agents can appear before the trademark opposition board and the patent appeal board.
Overall, the College and its new requirements for patent and trademark agents is expected to lead to the consolidation of IP services in law firms that specialize in such services.