New regulations for patent and trademark agents

Summary#

This notice (published March 13, 2021) sets out proposed College of Patent Agents and Trademark Agents Regulations to put the new independent regulator created by the College of Patent Agents and Trademark Agents Act into operation. If adopted, the rules would move oversight of patent and trademark agents out of the Canadian Intellectual Property Office (CIPO) and onto the new College, add residency and licensing rules, and change how firms and agents are listed and communicate with CIPO.

What it does#

• Establishes how the College will run key panels:
  • the Investigations Committee and Discipline Committee must have a public-interest majority (a majority of members who are not licensed agents or federal employees).
  • the College’s testing committee must include CIPO representation and exclude members of agent‑advocacy groups.
• Moves licensing and exams for agents from CIPO to the College:
  • licences, qualifying exams, and entry requirements will be set in the College’s by‑laws.
  • trainees will have a new “agent in training” licence and some current trainees can be deemed holders during transition.
• Requires licence holders to be Canadian residents:
  • being resident in Canada becomes a requirement to apply for and keep a patent or trademark agent licence.
• Changes how representation before CIPO works:
  • only individuals (not firms) will be recognized as agents going forward.
  • clients may appoint either a single agent or all agents of the same firm; a single agent must be identified to receive official communications.
• Sets investigation procedures and timelines:
  • an application to the Federal Court in relation to investigations may be made by motion.
  • a 10‑day period is prescribed for certain notification steps about sealed material.
• Carves out exemptions to the new rules on unauthorized representation:
  • allows representation where other laws already permit it, employees representing their employer, or employees doing purely administrative tasks with permission.
• Makes consequential amendments to the Patent Rules and Trademarks Regulations to reflect the transfer of responsibilities from CIPO to the College.

Who's affected#

• Patent and trademark agents — about 2,300 currently registered with CIPO.
• Firms that use or employ agents — CIPO counted roughly 107 firms for patent work and 228 firms for trademark work in past material.
• Businesses, inventors and creators who hire agents to file or prosecute patents, trademarks or industrial designs before CIPO.
• Non-resident (foreign) agents — appointments of non-resident agents would be revoked when these rules come into force unless other arrangements apply.
• Trainees/apprentices and legal clinics — there are transitional rules to avoid accidental unauthorized-practice offences during the switch.
• Canadian Intellectual Property Office (CIPO) — it would stop administering exams, keeping the agent register and collecting related fees once responsibilities transfer.

Why it matters#

• It creates an independent, professional regulator for patent and trademark agents. That aims to give the public more confidence in agent competence and ethics through licensing, a code of conduct, and formal complaints and discipline processes.
• For clients (businesses and inventors) this may mean clearer standards and a formal process to raise complaints about agent conduct.
• Some practical effects:
  • foreign agents will have fewer direct powers in Canada unless they appoint a Canadian agent.
  • small administrative savings are expected for firms that no longer need to register with CIPO as agents — estimated total savings of $83,998 over 10 years (about $5,401 per year, or $16.12 per firm, in the government’s estimate).
  • agents may face new fees or requirements set by the College (the Government says these costs are expected to be minor).
• These regulations were published as proposals (not yet law). Comments were invited for 30 days after publication.