On June 28, 2021, the newly instituted College of Patent Agents and Trademark Agents (“CPATA”) began operations as the professional regulator of patent and trademark agents. The organization is the fruit of more than a decade of work and is an important milestone under Canada’s Intellectual Property Strategy.
CPATA will be responsible notably for: (1) maintaining the registers of patent agents and trademark agents, (2) administering patent and trademark agent qualifying examinations, (3) collecting CPATA fees, and (4) maintaining a code of conduct. Prior to CPATA coming into force, the Canadian Intellectual Property Office (“CIPO”) oversaw these agents through either the Patent Rules or the Trademarks Regulations.
The changes to the way that IP professionals are regulated in Canada will have a number of impacts on the profession. One important change, as noted below, is how non-resident patent and trademark agents will be dealt with under the new regime.
The stated purpose of the CPATA according to its operating legislation, the Patent Agents and Trademark Agents Act is: “[…] to regulate patent agents and trademark agents in the public interest, in order to enhance the public’s ability to secure the rights provided for under the Patent Act and the Trademarks Act.”
To this effect, the CPATA Regulations (“Regulations”) clarify the CPATA’s authority. Among other things, the Regulations set up the licensing conditions and requirements for both patent agents and trademark agents and further authorize CPATA to make its own by-laws. These by-laws may concern the conditions that are imposed on licences and the determination as to what constitutes good character and fitness to practise.
Admission to the College and Transition From OPIC to CPATA
All agents who currently appear on the register of patent agents and/or the list of trademark agents will be transferred to CPATA’s register of patent agents or register of trademark agents. All of the currently appointed agents will be deemed to have been issued an agent licence by the College (no further action is necessary to preserve appointment). However, going forward, CPATA will administer the requirements to maintain or renew that licence (such as residency, training, good character and fitness, fees, etc.).
Licensing examinations will from now on be administered by CPATA. CIPO will process the candidacies for the 2020 exam cycle, but all new candidates and candidates who did not complete or pass the qualifying examination before the end of the 2020 cycle will have their information administered by CPATA.
CPATA’s Regulations will require agents to be residents of Canada to apply for or maintain their licence. Several amendments to the Patent Rules and the Trademarks Regulations will be made accordingly. One such consequences will be that the appointment of any patent agents or trademark agents who are not residents of Canada on the coming-into-force of these amendments will be revoked.
Non-resident practitioners who are authorized to act as a patent/trademark agent under the law of their country can apply to be added to the appropriate register. Foreign practitioners who are already listed on CIPO’s register of patent agents or list of trademark agents will be transferred automatically to the respective CPATA register. To remain on the register, a foreign practitioners will be required each year to provide a signed statement to CPATA setting out their country of residence and declare that they are authorized to act as a patent agent or trademark agent under the law of that country. Additional information regarding the annual declaration process will be communicated as soon as it becomes available.
Standards of Professional Conduct
Finally, CPATA also adopted a Code of Professional Conduct for Licensees (“Code”) which sets out several principles and rules along with their respective commentary for added guidance. Such principles include a duty of competence, a duty of confidentiality (very much akin to the lawyer’s solicitor-client privilege), a duty to not act if there is a substantial risk of a conflict of interest, as well as a duty to be honest and candid when advising a client.
The Act, the Code and the Regulations create a more robust set of enforcement mechanisms to protect the public against agents’ misconduct. The texts provide for more transparent and uniform complaint, discipline and investigation procedures. This new structure will ensure that all IP professionals, whether they are lawyers, engineers or doctors are bound by the same minimum regulatory standards.
CPATA is expected to be fully operational within the next two years: please reach out to any of our IP professionals should you have any questions or concerns.
Nicolas Charest graduated from McGill University with a joint civil law and common law degree and a minor in art history. He also studied abroad at Université Paris II Panthéon-Assas and Université de Reims. He joined Fasken during the summer of 2017.