Canada Gazette, Part I, Volume 146, Number 39: Rules Amending the Patent Rules
September 29, 2012
Statutory authority
Patent Act
Sponsoring department
Department of Industry
REGULATORY IMPACT ANALYSIS STATEMENT
(This statement is not part of the Rules or the Regulations.)
1. Background
This regulatory initiative proposes to amend the Patent Rules and the Trade-marks Regulations under the authority of the Patent Act and the Trade-marks Act. The Patent Act and associated regulations relate to the protection of new inventions (art, process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention. The Trade-marks Act and associated Regulations relate to the protection of a mark (e.g. word, symbol or design) used to distinguish the wares or services of one person or organization from those of others in the marketplace.
Under the Patent Rules and the Trade-marks Regulations (herein jointly referred to as “the regulations”), the Commissioner of Patents / Registrar of Trade-marks is responsible for appointing two Examining Boards (Boards). The Boards are responsible for preparing, administering and marking the qualifying examinations for patent and trade-mark agents.
2. Issue
Over the past few years, there has been a steady decline in first time pass rates of the patent agent qualifying examination. Lack of experience prosecuting applications and other relevant work experience were identified as significant factors in the low success rate.
3. Objectives
The proposed amendments would harmonize the qualifying examination process and eligibility criteria to sit for the qualifying examinations in order to help ensure that agents entered on the Register of Patent Agents and the list of trade-mark agents have a comprehensive knowledge of intellectual property (IP) law before entering into practice. Harmonization of the eligibility criteria would simplify the processes for those individuals who work as both patent and trade-mark agents.
The proposed amendments would also provide the Canadian Intellectual Property Office (CIPO) with increased flexibility and efficiency in the administration of the qualifying examinations.
4. Description
Detailed descriptions of the proposed amendments are as follows.
Eligibility to sit for agent qualifying examination
The proposed amendment to paragraph 12(1)(a) of the Patent Rules would increase the level of practical experience required in the area of Canadian patent law and practice from 12 to 24 months in order to be eligible to sit for the patent agent examination. Further, the amendment introduces subparagraph 12(a)(iii), where up to 12 months of practical experience as a registered patent agent of good standing in another country would be recognized. With increased practical experience, prospective agents would be better equipped to represent and act on behalf of their clients.
With respect to the Trade-marks Regulations, the practical experience requirement to be eligible to sit for the agent examination is currently prescribed at 24 months. The proposed amendment would introduce subparagraph 18(a)(iii), where a person who was entitled to practice before the trade-marks office of another country could have up to 12 months of practical experience recognized for eligibility purposes. Further, the introduction of proposed subparagraph 18(a)(i) would allow persons employed for a period of at least 24 months in the Office of the Registrar of Trade-marks, as either a member of the examining staff or as a delegate of the Registrar’s authority under sections 38 or 45 of the Trade-marks Act, respectively, to be eligible to sit for the qualifying examination.
These changes would harmonize the eligibility criteria to sit for the agent qualifying examination of the Patent Office and of the Office of the Registrar of Trade-marks.
Date of the agent qualifying examinations
Currently, the patent agent and trade-mark agent exams must be held in April and October, as required by subsection 14(1) of the Patent Rules and subsection 20(1) of the Trade-marks Regulations, respectively.
To provide the Boards with greater flexibility in managing the examination process, it is proposed that the regulations be amended to stipulate that the Boards shall set and administer qualifying examinations for patent agents and trade-mark agents at least once a year, without reference to a specific month.
Communications with candidates
In response to an increase in the number of notifications of intent to sit for the qualifying examinations, these amendments would make administrative changes to increase efficiency and reduce costs in the examination process. Pursuant to subsection 14(3) of the Patent Rules and subsection 20(3) of the Trade-marks Regulations, the Commissioner of Patents / Registrar of Trade-marks is required to notify persons proposing to sit for the qualifying exam of the date of the exam by registered mail. The proposed amendments to these sections would permit the Commissioner/Registrar to notify candidates by any means deemed appropriate such as regular mail or electronic mail.
Refund of the patent agent qualifying examination fee
This amendment proposes to change the refunding practice of fees paid by candidates proposing to sit for the patent agent examination pursuant to subsection 4(11) of the Patent Rules. The current practice allows potential candidates to register for an examination well in advance and withdraw on short notice. This change would prevent the Examination Board from spending significant resources in organizing and administering the examinations with respect to candidates who will eventually withdraw by limiting the circumstance under which a candidate can request a refund. Specifically, a request for a refund would be restricted to only those situations where the candidate has passed a previously administered examination but not received results before the registration deadline.
Names entered on the list of trade-mark agents
Subparagraph 21(b)(ii) of the Trade-marks Regulations currently allows for the qualifying exam to be waived for any barrister or solicitor who has practised in the area of trade-mark law, including the preparation and prosecution of applications for registration of trade-marks, for a period of at least 24 months. For the purpose of harmonization with the Patent Rules and to ensure that only agents with a comprehensive knowledge and practice of IP law be entered on the list, CIPO proposes to remove this exemption and apply a uniform set of requirements to all candidates. This change was broadly supported by stakeholders during the consultation phase. By eliminating this special privilege accorded to barristers and solicitors, all candidates must meet a uniform set of requirements and possess a comprehensive knowledge of IP to be entered on the list.
Removal from the list of trade-marks agents
To further harmonize the Patent Rules and the Trade-marks Regulations, new language is proposed for subsections 22(2) and 22(3) of the Trade-marks Regulations related to the removal of a trade-marks agent from the list which is more in line with the language used for the equivalent provisions in the Patent Rules.
Definition of trade-mark agent
It is proposed that the definition of “trade-mark agent” in section 2 of the Trade-marks Regulations be amended in order to refer to firms as well as persons. The new definition would be “trade-mark agent means a person or firm whose name is entered on the list of trade-mark agents referred to in section 21.”
5. Consultation
A consultation document including drafts of the proposed regulations was posted on CIPO’s Web site from August 25, 2009, to October 25, 2009, in order to solicit comments from stakeholders and members of the public. Written comments were received from stakeholders, including the Intellectual Property Institute of Canada (IPIC), the International Federation of Intellectual Property Attorneys (FICPI) as well as individuals and firms currently engaged in the practice of intellectual property law.
Stakeholders expressed strong support for the amendment proposing to extend the required practical experience from 12 months to 24 months for Patent Agents. It is widely recognized that 24 months of practical experience is required in order for a candidate to attain a comprehensive understanding of IP. It was suggested that CIPO consider recognizing certain IP experience gained outside of Canada. After consideration, the suggestion was incorporated and the proposed amendments provide for the recognition of up to 12 months of practical experience before patent and trade-marks offices in other countries towards fulfilling the eligibility requirements to sit for an agent examination. Further, there was also consensus that transitional provisions were required to ensure that agents currently on the list and candidates who have previously passed at least one part of the examination procedure would not be prejudiced by the proposed changes.
With regards to the administration of the agent examinations, there were suggestions to ensure that adequate studying time is given to the candidates. It was also suggested that adequate time was required between patent and trade-mark exams, as some candidates write both exams. Some stakeholders noted that CIPO should provide candidates with the scheduled examination dates well in advance in order to allow candidates sufficient time to prepare for the qualifying examinations. CIPO will incorporate these suggestions into their administrative practices.
6. Small business lens
The improvements to the examination process will come at no administrative costs to small business or candidates.
7. Rationale
The proposed amendments do not require additional resources toward administering Canada’s intellectual property system. The proposed changes would provide greater flexibility to the Boards in administering the examinations by removing the fixed annual exam date, and would increase the likelihood that candidates have a comprehensive understanding of IP prior to sitting for the examinations.
With greater flexibility, the Boards will be able to better allocate resources and increase efficiency in delivering their mandated responsibilities to administer the examination process. As a Special Operating Agency (SOA), CIPO’s self-funded status is an important factor guiding its planning and operations. A reliance on the revenues that CIPO generates for its services, including those from the examination process, reinforces the organization’s commitment to be responsive, effective and efficient.
The increase in candidates’ required experience participating in prosecuting applications, from 12 to 24 months, is designed to provide candidates with increased practical knowledge in order to succeed in the examination process. Currently, the majority of candidates are attempting the examinations without having sufficient first hand knowledge of these intricate IP fields, resulting in CIPO expending resources in administering and marking a high percentage of unsuccessful examinations (historically, over 70% of candidates fail to pass the examination each year). In addition, candidates incur additional time and expenses in preparing and sitting for exams on multiple occasions.
By raising the practical experience requirements to 24 months, CIPO and industry representatives are of the shared opinion that candidates will be better equipped with the knowledge and tools necessary to approach the examinations with confidence and a higher probability of success.
8. Implementation, enforcement and service standards
The Patent Rules and Trade-marks Regulations are enforced by the application of existing provisions in the Patent Act and the Trade-marks Act, respectively. For instance, provisions in the Patent Act relating to the register of patent agents and misconduct permit the Commissioner to refuse to recognize any person as a patent agent or attorney. Therefore, enforcement and compliance provisions remain unchanged as a result of the proposed regulatory amendments. Accordingly, no additional costs are required to monitor and enforce these regulatory changes.
The proposed amendments would come into force 30 days after the day on which they are registered.
9. Contact
Ann McMonagle
Senior Policy Advisor
Canadian Intellectual Property Office
Industry Canada
Place du Portage, Phase I
50 Victoria Street
Gatineau, Quebec
K1A 0C9
Telephone: 819-934-0085
Fax: 819-997-5052
PROPOSED REGULATORY TEXT
Notice is hereby given that the Governor in Council, pursuant to section 12 (see footnote a) of the Patent Act (see footnote b), proposes to make the annexed Rules Amending the Patent Rules.
Interested persons may make representations with respect to the proposed Rules within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part Ⅰ, and the date of publication of this notice, and be addressed to Raouf Ali Ahmed, Canadian Intellectual Property Office, Industry Canada, 50 Victoria Street, Gatineau, Quebec K1A 0C9.
Ottawa, September 20, 2012
JURICA ČAPKUN
Assistant Clerk of the Privy Council
RULES AMENDING THE PATENT RULES
AMENDMENTS
1. Subsection 4(11) of the Patent Rules (see footnote 1) is replaced by the following:
(11) The fee paid under subparagraph 12(b)(ii) shall be reimbursed if, within 30 days after receipt of notification from the Commissioner that a candidate has passed an equivalent paper of a previously administered examination, the candidate notifies the Commissioner in writing that they no longer intend to sit for the paper.
2. Section 12 of the Rules is replaced by the following:
12. A person is eligible to sit for the qualifying examination for patent agents if the person,
- (a) on the first day of the examination, resides in Canada and
- (i) has been employed for at least 24 months on the examining staff of the Patent Office,
- (ii) has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, or
- (iii) has worked in the area of patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in a country other than Canada where the person was registered as a patent agent in good standing with a patent office of that country; and
- (b) within two months after the day on which the notice referred to in subsection 14(2) was published,
- (i) notifies the Commissioner in writing of their intention to sit for the examination,
- (ii) pays the fee set out in item 34 of Schedule II, and
- (iii) furnishes the Commissioner with evidence establishing that they meet the requirements set out in paragraph (a).
3. Section 14 of the Rules is replaced by the following:
14. (1) The Examining Board shall administer a qualifying examination for patent agents at least once a year.
(2) The Commissioner shall publish in the Canadian Patent Office Record a notice that specifies the date of the next qualifying examination and that indicates that any person who intends to sit for the examination shall comply with the requirements set out in paragraph 12(b).
(3) The Commissioner shall designate the place or places where the qualifying examination is to be held and shall notify, at least two weeks before the first day of the examination, every person who has met the requirements set out in section 12.
4. The portion of section 15 of the Rules before paragraph (b) is replaced by the following:
15. The Commissioner shall, on written request and payment of the fee set out in item 33 of Schedule II, enter on the register of patent agents the name of
- (a) any resident of Canada who has passed the qualifying examination for patent agents;
5. (1) Subsection 16(2) of the Rules is repealed.
(2) Paragraphs 16(3)(a) and (b) of the Rules are replaced by the following:
- (a) fails to comply with subsection (1); or
- (b) no longer meets the requirements under which the name of the patent agent was entered on the register unless the patent agent is a person referred to in paragraph 15(a) or (b) or a firm referred to in paragraph 15(c).
6. Section 17 of the Rules is amended by adding “and” at the end of paragraph (a) and by replacing paragraphs (b) to (d) with the following:
- (b) either
- (i) is a person referred to in paragraph 15(a) and pays the fees set out in items 35 and 36 of Schedule II,
- (ii) is a person referred to in paragraph 15(b) and files the statement referred to in paragraph 16(1)(b), or
- (iii) is a firm referred to in paragraph 15(c) and files the statement referred to in paragraph 16(1)(c).
| Item | Column I Description |
|---|---|
| 34. | On notifying the Commissioner, under subparagraph 12(b)(i) of these Rules, of the intention to sit for the whole or any part of the qualifying examination, per paper |
TRANSITIONAL PROVISION
8. A person who, before the coming into force of these Rules, passed a part of the qualifying examination for patent agents referred to in section 14 of the Patent Rules is not required to comply with subparagraphs 12(a)(i) to (iii) of those Rules for any examination on or before December 31, 2013.
COMING INTO FORCE
9. These Rules come into force 30 days after the day on which they are registered.
[39-1-o]