By-laws of the College of Patent Agents and Trademark Agents (College): SOR/2021-167

Canada Gazette, Part II, Volume 155, Number 14

Registration
SOR/2021-167 June 24, 2021

COLLEGE OF PATENT AGENTS AND TRADEMARK AGENTS ACT

The College of Patent Agents and Trademark Agents makes the annexed By-laws of the College of Patent Agents and Trademark Agents (College), pursuant to

• a) subsection 76(2) of the College of Patent and Trademark Agents Act ^{footnote a}; and
• (b) section 18 of the College of Patent Agents and Trademark Agents Regulations.

June 24, 2021

Thomas G. Conway
Chairperson, Board of Directors
College of Patent Agents and Trademark Agents

By-laws of the College of Patent Agents and Trademark Agents (College)

Definitions

Definitions

1 The following definitions apply in these By-laws.

Act

means the College of Patent Agents and Trademark Agents Act. (Loi)

class 1

with respect to a licence, describes either a patent agent licence issued under subsection 26(1) of the Act or a trademark agent licence issued under subsection 29(1) of the Act that is not covered by class 2. (catégorie 1)

class 2

with respect to a licence, describes either a patent agent licence issued under subsection 26(1) of the Act or a trademark agent licence issued under subsection 29(1) of the Act that is subject to the restrictions under section 27. (catégorie 2)

class 3

with respect to a licence, describes either a patent agent in training licence issued under subsection 26(2) of the Act or a trademark agent in training licence issued under subsection 29(2) of the Act. (catégorie 3)

Committee

means the Committee of the College referred to in section 3 of the College of Patent Agent and Trademark Agents Regulations. (comité)

fees

means the fees set out in the schedule to the By-laws of the College of Patent Agents and Trademark Agents (Board). (droits)

supervisor

means a Class 1 licensee who is authorized under section 18 to be a supervisor of a Class 3 licensee. (superviseur)

General Rules

Competence standards

2 The Committee must approve standards for the evaluation of the competencies that are to be assessed by the qualifying examinations and the passing marks for those examinations to ensure that all licensees have the necessary skills and competencies to represent persons under section 27 or 30 of the Act.

Good character

3 (1) If the Registrar must determine whether an applicant is of good character, the Registrar must do so by assessing the applicant’s integrity and competence in accordance with the highest standards of the profession in order to preserve the trust, respect and confidence of members of the profession and the public.

Fitness to practise

(2) If the Registrar must determine whether a person is fit to practise the Registrar must do so by assessing the person’s ability to be a licensee with sufficient knowledge, skill and judgment that is not substantially impaired by a physical, mental or emotional condition, disorder or addiction.

Registrar may waive or modify requirements

(3) If it is in the public interest to do so, the Registrar may waive or modify one or more of the training and licence issuance requirements.

Accommodation

4 The Registrar must reasonably accommodate a Class 3 licensee if the Class 3 licensee provides medical or other information, satisfactory to the Registrar, that demonstrates the need for an accommodation to provide a fair opportunity for the Class 3 licensee to successfully complete the College’s training and meet the requirements for obtaining a Class 1 licence.

Review

5 A decision of the Registrar under these By-laws must be reviewed by the Committee on the request of the affected applicant or licensee.

Decision of Committee

6 After reviewing the Registrar’s decision, the Committee may

• (a) request that the Registrar obtain additional information;
• (b) approve the application under review, with or without conditions, and specify the effective date of the decision; or
• (c) conduct a hearing and make a decision with reasons.

Decision final

7 A decision of the Committee under section 5 cannot be reviewed by the Board.

Decision modified by Committee

8 If a decision of the Registrar is modified by the Committee, the Registrar must notify the applicant and, if applicable, the supervisor of the decision and give effect to the decision.

Patent Agent in Training

Requirements

9 An applicant for a Class 3 patent agent licence must provide an application to the Registrar that provides proof of the applicant’s Canadian residency and must

• (a) be of good character and provide, in support, three letters of reference, a criminal background check, records of any disciplinary sanction by an academic institution or professional or non-professional body, records of any bankruptcy or insolvency, and any other information necessary for the Registrar to assess good character;
• (b) be fit to practise;
• (c) be proficient in English or French;
• (d) pay the applicable fees;
• (e) provide a specimen signature, a current photograph and any other information required to confirm identity;
• (f) have a training agreement executed by the applicant and the supervisor or a representative of the Patent Office.

Effective date of licence

10 If the Registrar issues a Class 3 patent agent licence under subsection 26(2) of the Act, the Registrar must set the effective date of the licence.

Conditions

11 A class 3 patent agent licensee is subject to the following conditions:

• (a) the licensee must comply with the terms of the training agreement; and
• (b) the licensee must not represent any person in the presentation or prosecution of an application for the registration of a patent or in other business before the Patent Office without the supervision of a class 1 patent agent licensee whose licence is not suspended.

Trademark Agent in Training

Requirements

12 An applicant for a Class 3 trademark agent licence must provide an application to the Registrar that provides proof of the applicant’s Canadian residency and must

• (a) be of good character and provide, in support, three letters of reference, a criminal background check, records of any disciplinary sanctions by an academic institution or professional or non-professional bodies, records of any bankruptcy or insolvency, and any other information necessary for the Registrar to assess good character;
• (b) be fit to practise;
• (c) be proficient in English or French.
• (d) pay the applicable fees;
• (e) provide a specimen signature, a current photograph and any other information required to confirm identity;
• (f) have a training agreement executed by the applicant and the supervisor or a representative of the Office of the Registrar of Trademarks.

Effective date of licence

13 If the Registrar issues a Class 3 trademark agent licence under subsection 29(2) of the Act, the Registrar must set the effective date of the licence.

Conditions

14 A class 3 trademark agent licence is subject to the following conditions:

• (a) the licensee must comply with the terms of the training agreement; and
• (b) the licensee must not represent any person in the presentation or prosecution of an application for the registration of a trademark or in other business before the Office of the Registrar of Trademarks without the supervision of a class 1 trademark agent licensee whose licence is not suspended.

Class 3 Licensees — Requirements

Training period

15 Prior to writing the qualifying examinations, a trainee must

• (a) work under a training agreement for a period of 24 months; and
• (b) complete the agent training course.

Supervisors

Application

16 (1) A class 1 licensee may apply to the Registrar to be authorized to act as a supervisor.

Representative

(2) A representative of the Patent Office or the Office of the Registrar of Trademarks may apply to the Registrar to act as a supervisor if they provide a training agreement that demonstrates a commitment to providing a learning of ethical and competent practices.

Supervisor requirements

17 An applicant to be a supervisor under subsection 16(1) must

• (a) provide a training agreement that demonstrates a commitment to the learning of ethical and competent practices;
• (b) not be the subject of a matter before the Investigations Committee or Discipline Committee; and
• (c) not have a suspended licence.

Authorization — supervisor

18 The Registrar must authorize an applicant to be a supervisor who meets the requirements under subsection 16(2) or section 17 to act as a supervisor.

Revocation of authorization

19 The Registrar may revoke a supervisor’s authority to act as a supervisor if

• (a) the supervisor is the subject of a matter before the Investigations Committee or Discipline Committee;
• (b) their licence is suspended;
• (c) they are no longer a licensee; or
• (d) they do not comply with the terms of the training agreement.

Qualifying Examinations

Process

20 The Registrar must publish a policy on the College’s website with respect to the qualifying examinations, which includes

• (a) the dates of the examinations;
• (b) the registration process;
• (c) the applicable fees;
• (d) the process for administering the examinations;
• (e) the method of communication of the results of the examinations; and
• (f) the opportunity to request a re-correction of the examination.

Examinations

21 A class 3 licensee must write either the qualifying examination for patent agents or the qualifying examination for trademark agents, as applicable, at the first sitting of the examination that follows the completion of their training period.

Advisory group

22 The Registrar may appoint an advisory group made up of class 1 patent agent licensees, class 1 trademark agent licensees and representatives of the Patent Office and the Office of the Registrar of Trademarks to assist the Registrar in preparing, administering and marking the qualifying examinations.

Application for Licence

Content and requirements

23 An applicant for a class 1 patent agent licence or class 1 trademark agent licence must provide an application to the Registrar that provides proof of the applicant’s Canadian residency and must

• (a) obtain a passing mark on the applicable qualifying examinations;
• (b) complete the applicable agent training course;
• (c) comply with the terms of the training agreement;
• (d) remain of good character and provide, in support, letters of reference from the applicant’s supervisor and others with whom they worked, as a class 3 licensee or any other evidence that demonstrates that the applicant complied with the terms of the training agreement;
• (e) remain fit to practise;
• (f) affirm a declaration on registration, declaring that the licensee will practise with integrity, uphold the independence of the patent and trademark professions and comply with the Code of Professional Conduct; and
• (g) pay the applicable fees.

Effective date of licence

24 If the Registrar issues a class 1 licence, the Registrar must set the effective date of the licence.

Change of Licence Class

25 A class 1 licensee may apply to the Registrar to change the class of their licence to a class 2 licence if they meet the following requirements:

• (a) they provide their current and, if known, future contact information;
• (b) they provide their professional employment history;
• (c) they provide confirmation in writing
  • (i) that all client matters have been completed or that arrangements have been made to the satisfaction of their clients to have their files returned to them or transferred to another class 1 licensee,
  • (ii) that any matters in progress at the Patent Office or the Office of the Registrar of Trademarks have been assigned to another class 1 licensee and the appropriate office has been advised in writing of the successor licensee,
  • (iii) of the location of the files from the licensee’s practice; and
• (d) they pay the applicable fee.

Change of licence by Registrar

26 If an applicant for a change of class of licence meets the requirements of section 25, the Registrar must change the licence to a class 2 licence and set the effective date for the change.

Class 2 licence

27 A class 2 licensee is subject to the following restrictions as of the effective date of the change of licence:

• (a) in the case of a class 2 patent agent license, the licensee is not entitled to represent persons in the presentation and prosecution of applications for the registration of patents or in other business before the Patent Office; and
• (b) in the case of a class 2 trademark agent licence, the licensee is not entitled to represent persons in the presentation and prosecution of applications for the registration of trademarks or in other business before the Office of the Registrar of Trademarks.

Reinstatement of class

28 (1) A class 2 licensee may apply to the Registrar to be reinstated as a class 1 licensee if they meet the applicable requirements under paragraphs 23(d) to (g).

Review of request

(2) Upon receipt of an application, the Registrar may

• (a) require the applicant to provide additional information that is useful for the consideration of the request; or
• (b) require the applicant to demonstrate that they have complied with any continuing professional development requirements.

Registrar’s decision

(3) The Registrar must either

• (a) reinstate the applicant as a class 1 licensee if they meet the requirements or if the Registrar determines it is in the public interest, reinstate the licensee with restrictions; or
• (b) refuse to reinstate the applicant’s licence if they do not satisfy the requirements or it is in the public interest to do so.

Transitional provisions

Deemed to be under supervision — patent agent

29 (1) For the purposes of paragraph 11(b), for a period of one year from the coming into force of these By-laws, a class 3 patent agent licensee is deemed to be supervised by a class 1 patent agent licensee if they are being supervised by an individual who is responsible for a legal clinic associated with a Canadian faculty of law.

Deemed to be under supervision — trademark agent

(2) For the purposes of paragraph 14(b), for a period of one year from the coming into force of these By-laws, a class 3 trademark agent licensee is deemed to be supervised by a class 1 trademark agent licensee if they are being supervised by an individual who is responsible for a legal clinic associated with a Canadian faculty of law.

Coming into Force

30 These By-laws come into force on the day on which paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act, section 247 of chapter 27 of the Statutes of Canada, 2018, comes into force, but if they are registered after that day, they come into force on the day on which they are registered.

EXPLANATORY NOTE

(This note is not part of the by-laws.)

Proposal

Pursuant to section 75 and subsection 76(2) of the College of Patent Agents and Trademark Agents Act (“Act”), and section 18 of the College of Patent Agents and Trademark Agents Regulations, the Board of Directors (“Board”) of the College of Patent Agents and Trademark Agents (“College”) is establishing the by-laws of the College.

Objective

The College is intended to be a modern, risk-focused, public interest regulator of Canadian patent and trademark agents (“IP Agents”). Its core mandate is to protect and promote the public interest in the delivery of patent and trademark services.

Background

IP Agents play an essential role in preserving and promoting intellectual property rights. They are experts who represent applicants, registered owners and persons doing business before the Canadian Intellectual Property Office (CIPO).

As part of the National Intellectual Property Strategy, in 2018, government passed legislation to establish the College as an independent professional regulator of IP Agents. The College’s primary role is to promote and protect the public interest.

The College has authority over all aspects of the profession from the training and examination requirements for new agents to addressing concerns and complaints of misconduct and incompetence. It will also oversee other aspects of regulation to promote IP services and ensure public protection through continuing competence initiatives, insurance requirements, continuing professional development and pro bono work. The College is self-funding and will collect fees from the profession for its operations.

The Act requires the College’s key governance and regulatory bodies, namely the Board of Directors and regulatory committees to be constituted with a majority of public interest members. The Board’s members will be appointed by the Minister. IP Agent members will be elected by the profession. The Board has appointed a CEO and Registrar, and together they have responsibility to oversee the College’s public interest mandate.

Implications

The start-up Board has adopted College by-laws relating to matters necessary to carry on the activities of the College, such as registration procedures, fees and governance practices. They are transitional, as they will need to be confirmed by the Board following the appointment and election of the first Board.

Consultation

Consultations were not held on the by-laws as they are required for the start-up operations of the College. Members of the College and the public will be able to provide input to the Board by attending public Board meetings, and the upcoming annual general meeting.

Contact

Darrel Pink
Interim CEO and Registrar of the College
College of Patent Agents and Trademark Agents
Telephone: 343‑309‑5742
Email: ceo@cpata-cabamc.ca