On July 13, 2021, IPIC hosted the webinar College of Patent Agents and Trademark Agents - Regulations. The following is the complete list of questions submitted during the webinar, answered by IPIC President Stephanie Chong, the CEO/Registrar of CPATA Darrel Pink, and IPIC Patent Committee Practice Lead, Jenna Wilson.
Please can scroll down to view the FAQ or click on the following links to access a particular section.
CIPO Practice Questions
| Questions | Answers |
| When did these changes come into force? Hello, when do these changes go into effect, e.g. regarding insertion of agent name on CIPO correspondence? |
June 28, 2021. The consolidated Trademarks Regulations and Patent Rules on the Justice website are up to date. (It is not an error in the consolidation that there are now two section 32s in the Patent Rules. The amending regulation failed to repeal the old one.) |
| Can multiple agents working in-house for a corporation be named as agents for the corporation’s applications? | Yes, if the agents are associated with the corporation as a “firm” in the CPATA register. An appointment of agent can then identify all the agents of the corporation. (It is not necessary to list the agent names.) |
| Is there any register of firms now? How does CIPO know who are the agents of a given firm? |
There is no register of firms, but the CPATA register does associate agents with their respective firms. CIPO can determine whether an individual agent is a member of the firm whose agents were appointed by consulting the CPATA register. |
| If an individual agent within a firm is currently appointed, and you want to change to all the agents at the firm, do you need to revoke the individual appointment and then appoint "all the agents" at the firm? |
Yes. However, since all primary agents and associate agents must now be Canadian residents, both are entitled to communicate with CIPO in the role of an agent. To avoid having to submit a revocation, the individual agent could appoint all the agents of the firm as the associate agent. Side note: while the Patent Rules expressly provide that an appointment of one agent is revoked when that one agent’s licence is suspended, revoked or surrendered, that provision is missing from the Trademarks Regulations. The Trademarks Regulations only address the effect of suspension/revocation/surrender of the licence of an agent in a firm when all the agents of the firm are appointed. |
| Since agents will be managed by the College, to the comment that we should let CIPO know of comings/goings, how will that work, since they won't be tracking agent status? Or will they also be doing that, and so that is why we need to contact both the College and CIPO re: firm composition changes? |
As explained later in the webinar, CPATA will be providing daily updates to CIPO regarding changes to agent status, including affiliation with firms. However, CIPO maintains separate address records for the entities with whom it communicates. Therefore it is important to make sure that CIPO is advised of address changes for your firm, and even for you individually, just in case you are an individually appointed agent. Patent Branch plans to publish a practice notice on this point in the near future. |
| We're having trouble getting ISED to link individual accounts to the firm account - when will they be able to do that consistently? | Sorry, that is an issue with ISED, unrelated to the College or any of these amended regulations. You are going to have to seek assistance from ISED and the Patent and Trademarks Branches. |
| I received an email about having one email associated with two ISED accounts. One of those ISED accounts can be deleted. I sent an email asking about how to do that and haven't heard anything. How do we do that? |
If this is about your ISED account for logging into the CIPO website to perform transactions, this is something you will need to raise with ISED. If this is about an email from CPATA, please contact CPATA again. |
| What about when a firm only has one agent. Can we still correspond with CIPO as the firm? | Yes, if your appointment is of all the agents of your firm. |
| When are wet signatures ever required? |
Very rarely. Those cases where signatures are required (leaving aside assignments) are set out in the Patent Rules: appointments of agent not in the petition on the filing date or not accompanying the request for national phase entry; revocations of appointments of agent; small entity declarations. Patent Branch has not indicated that they have relaxed their electronic signature requirements, as set out in their now-archived COVID FAQ: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04762.html?open |
| It seems that lawyers who are not trademark agents may file trademark applications. But, if issues in the prosecution arise, such as office actions, can only a trademark agent respond? |
That is correct. Any person authorized by the applicant may file an application. This is expressly provided by subsection 25(4) of the Trademarks Regulations. Since any authorized person is permitted to carry out the activities in paragraphs 25(3)(a) to (e), they are not subject to the offence provisions in the CPATA Act by virtue of paragraph 17(a) of the CPATA Regulations. The applicant may represent themselves to respond to an office action, but the only other person who may represent the applicant to respond to an office action is an appointed trademark agent: subsection 25(1) of the Trademarks Regulations. |
| Why permit any foreign practitioner to practice who does not pass our exams? |
The role of a foreign practitioner is set out in the Patent Rules. This really is no different than what a foreign practitioner could do as a CIPO-registered agent before June 28. |
Reciprocity
| Questions | Answers |
| Were the reciprocal patent agent clauses reviewed by the USPTO or other relevant party to confirm that the U.S. considers the new regulations to be acceptable reciprocal rights? | The USPTO was not directly involved in the development of the Regulations. There have been discussions with the USPTO and there is no reason to believe there are any concerns about the College structure. |
| Prior to June 2019, Canadian resident lawyers could file trademarks in the US without having to appoint a US attorney. This is no longer possible. Will the current regulations require USPTO to revert back to its previous practice? |
No. The USPTO amended their representation provision for other stated reasons. You can see that 37 CFR 11.14 still includes the reciprocal recognition provision; it was amended to impose an additional requirement to appoint a US attorney. The question suggests that a change to our Trademark Regulations in June 2019 provoked the USPTO rule change. However, the June 2019 amendments did not actually change our agent representation rules: until June 28, 2021, a foreign-resident trademark agent could qualify as a trademark agent, but had to appoint a domestic associate agent under 22(2). This was always the case under the previous Trade-marks Regulations (1996). The June 28, 2021 amendments now provide that an applicant has to either represent themselves in prosecution, or else be represented by a Canadian-resident agent. There are no provisions for “foreign practitioners” as in the amended Patent Rules. |
| Is there a way to raise the issue of the loss of effective reciprocity for trademark agents with the USPTO? | IPIC advocated for the profession in 2018-19 to try and preserve this right for its members when the USPTO was passing their rule change on foreign-domiciled applicants and parties. Based on this advocacy work, the USPTO revised their amendment to allow Canadian trademark agents and lawyers to be recognized and appointed as ‘additionally appointed’ practitioners on the file for receiving communications but would not amend the rules to permit receipt of communications from Canadian parties. IPIC is always open to hearing from members to discuss strategy for future advocacy efforts with Canadian and foreign governments as required. |
| Can foreign practitioners on the CPATA register file Canadian trademark applications, while Canadian trademark agents cannot file United States trademark applications? |
Any person authorized by the applicant may file a trademark application in Canada, but only the applicant themselves or an appointed agent (who is resident in Canada) may prosecute the application, as explained above. Currently, only a US licensed attorney can file a trademark related submission with the USPTO. As for Canadian trademark attorneys and agents activity before the USPTO:
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Residency
| Questions | Answers |
| What does “resident” mean? Where is CPATA's policy on residence found on their website? |
If you have questions about your particular situation, please contact CPATA. |
| What proof of residency does CPATA require from agents in training? | It will depend on the indicators of residence. A long-time Canadian resident will show proof through government issued ID. Those with a shorter duration or connection will be required to provide additional evidence. |
| Are there any special requirements for agents in training who have recently established their residency or have recently immigrated? | No. The policy contemplates residence will be evidenced by the process the applicant has just completed. |
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If an agent employed by a corporation leaves Canada to work abroad for an affiliated company for some period of time, say two years, and then returns, it appears they lose their licence for the period they are outside Canada—or can the agent retain their licence even though they may not be permitted to represent clients before CIPO? If the agent cannot retain their licence, can this residency policy be revisited? |
The residency policy contemplates that short term absence from Canada does not result in a loss of residence. Each case will be considered on its individual facts. |
Agents in Training and Examinations
| Questions | Answers |
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Can you please clarify what an "agent in training" is - this language is new so who does it cover? Must an agent in training be currently employed as an agent in training? |
An agent in training (AIT) is a person who is intending to qualify as a Class 1 Licensee on completion of the qualification period and on success in the qualifying exams and other College requirements. As a Class 3 Licensee the AIT has status as an agent and so long as supervision is provided as is required, the AIT can carry on the tasks of an Agent. Please also see: https://cpata-cabamc.ca/agents-trainees/become-an-patent-agent-in-training/ |
| Would a currently unemployed agent trainee (as they would have been understood pre-June 28) and who completed the required training/experience qualify as an agent in training? |
AIT applicants who previously completed the 24-month training requirement under the supervision of a registered Class 1 licensee but who are not currently employed would be required to provide a letter of attestation from their supervisor with their application that indicates:
Upon receipt and review of this documentation, we would confirm if the AIT is eligible to proceed with the qualifying examinations. If an individual previously attempted the qualifying examinations and was not successful, the letter of attestation is not required but the individual still must apply to register as an AIT to access exam registration. |
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Is there procedure in place for individuals to provide notice to CPATA under section 21(1)(d) or 22(1)(d) of the CPATA Regulations (transitional provisions for agent in training licenses)? |
If AITs submit the application form, character references etc. that would be considered their notice to the College. |
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What level of criminal record check does CPATA require for a class 3 licence application for the good character requirement? Generally, in Ontario there are two levels of criminal record check. For example, Toronto Police Service provides: Criminal Record Check Level 1 (covers criminal convictions, violations under Youth Criminal Justice Act), and a more comprehensive Criminal Record and Judicial Matters Check Level 2. Does CPATA require the criminal record document to be sent directly by the respective police service to CPATA or can the applicant send it along with the application form? Please note, some police services do not offer this choice of mailing services. |
The Good Character and Fitness to Practice Policy provides information about the type of information required in the background check and the name of the check required from each province. In Ontario, this is the Criminal Record and Judicial Matters Check. The Policy requires a criminal background check be obtained from the applicant’s local police station and contain the information in Appendix A. Additionally, the report must:
If an applicant lived or worked in a country outside of Canada after the age of 18, a criminal background check must also be provided by a police and/or law enforcement agency authorized to do so in that (or those) jurisdiction(s). |
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The repealed provisions of the Patent Rules allowed patent agents registered in a country other than Canada to be eligible to take the Canadian patent agent exam after 12 months of work experience Canada, as opposed to those without similar qualifications, who would be eligible only after 24 months. Do the CPATA Regulations or by-laws give similar credit to foreign qualifications to reduce the work experience requirement? |
All experience completed outside of Canada is reviewed on a case by case basis when the AIT applicant submits their registration package. The Prior Experience Assessment Policy outlines the College’s framework for these reviews. |
| Will CPATA provide a pool of patent and trademark agents willing to mentor agents in training? | Yes, we do plan to provide a mechanism to support prospective AITs find employment with a Training Supervisor. This has not been developed but is on our radar. |
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I passed 2 of 4 patent agent exams several years ago. I haven't written in a couple of years and I don't plan to write in 2021. Do I need to register as a trainee in 2021? If I don't register in 2021 as a trainee, do I keep the credit for the two exams I already passed and would only need to write the other two exams if I decided to write again in a year or two? |
Because the exam system will change, if a person does not rewrite in 2021, they will likely not be able to carry over any marks into 2022 and beyond. If someone has not completed the previous version of the exam before the new version is administered, they will need to start at the beginning of the exam process. Therefore, if someone does not want to write the exams this year, they are doing so at their own risk of having to start the process over again. If they do wish to write this year, they need to submit their AIT application and supporting documentation as soon as possible. |
| It seems that changing the trademark agent exam from one day to two days doubles the burden on candidates to take time away from work. Was this considered? What was the reason for moving to two days? | The dates were established by CIPO and adopted by the College. We understand in 2020 these exams were offered over 2 days. |
| Are the three reference letters needed for every new trainee, even those with a firm? |
Yes. The Letters of Reference Policy provides additional guidance on the content of the letters. |
| Is it correct that for the time being agents in training should get registered with CPATA even without having an arrangement with a "training supervisor" formally in place (i.e., they continue to be supervised in the manner they were supervised prior to June 28)? |
AITs currently in progress with the 24-month training requirements should register with CPATA as soon as possible to ensure that their work experience is recognized. Until the contractual agreement requirements have been developed, we require a letter from the supervisor that indicates/demonstrates:
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| If I signed up as agent in training in 2021, am I required to take the exam in 2021 or can I take the exam in 2022 or later? |
The exam can only be taken after the 24 month training period is completed, unless the Registrar otherwise allows. |
| When will agents in training need to have the arrangement with a training supervisor in place? |
One of the registration requirements is to have an agreement with a Training Supervisor. Therefore, for AITs that have not completed the 24-month training requirement, the training arrangement must be in place at the time of application to the College. For AITs that have completed the training requirements prior to CPATA’s coming into force, the agreement is not required but a letter of attestation (as described above) is required to confirm eligibility for the examinations. |
| For agents in training, is a written training agreement required for year 1? If there is an employment agreement in place, is that sufficient? |
Until the contractual agreement requirements have been developed, we require a letter from the supervisor that indicates/demonstrates:
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| Is training a requirement for licensure as a trademark agent with respect to those who have had more than 24 months’ experience with trademarks in another country (US trademark laws), as well as 12 months experience within Canada (not under supervision)? |
When evaluating an applicant’s request, the Registrar will consider:
An individual seeking credit for prior experience will submit a request for the recognition of that prior experience with their Agent in Training (Class 3) Application form and the following supporting documentation:
All applications and requests will be assessed on a case-by-case basis. |
| Are the 2021 agent exams going to be administered electronically and remotely? |
Yes, they are going to be administered electronically and remotely. CPATA will be using a service that will operate on the candidate’s computer and lock out other applications. This service also includes live invigilators who must be able to monitor the candidate’s actions during the exam period using either a webcam or separate camera on another device (e.g., mobile phone). |
Foreign Practitioners
| Questions | Answers |
| Can a registered foreign practitioner who is a member of a Canadian firm of agents sign CIPO correspondence such as an office action response? |
No. All communications that must come from an appointed agent must bear the name of an individual appointed agent, not that of a foreign practitioner. However, communications that do not have to come from an appointed agent, but may be submitted by an authorized party, may be signed by the foreign practitioner. |
| Can non-resident foreign practitioners who are not currently registered become registered without being resident in Canada? | Yes, they must provide a request, in writing to the Registrar to be included in the register. They must confirm they are a resident of another country and prove that they are registered to practice as an agent in that jurisdiction. |
Administrative and Register Matters (excluding fees)
| Questions | Answers |
| How do we confirm if we are listed on the College register, especially if we have not received any communication from the College? |
Please contact admin@cpata-cabamc.ca as soon as possible. |
| The firm name indicated in my CPATA file is the previous firm where I worked. How do I have this corrected? | Contact admin@cpata-cabamc.ca |
| I currently have two separate login accounts (two separate emails) in CPATA, one for my trademark agent listing and another for my patent agent listing. Is it possible to consolidate into one login account at some point? | Yes |
Inactive Agents
| Questions | Answers |
| Can you comment on the implications of the inactive agent status? | It is intended to allow a licensee to call themselves an agent while not carrying out the work of an agent before CIPO. |
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There has been conflicting information from CPATA regarding class 2 licences. Is there annual fee for class 2 licensees? And/or is there a fee to move between class 1 and class 2? |
There is no fee this year but the change fee is $150. There will be a small fee in 2022. |
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Do inactive agents need to be indicated in the list of all agents of the firm? |
The College will publish a list of Class 2 Licensees. When one changes to that Class there is a commitment not to carry on the work of a Class 1 Agent vis. CIPO As regards appointments of agent before CIPO, there is no need to list the agents of the firm by name. An appointment of all the agents of a firm can list the firm name instead of a full list of all agents. |
| How long can an agent stay "inactive"? | There is no limit but there may be a requalification requirement after a number of years. This is a policy the College will develop in consultation with the profession. |
Renewal Fees and Reinstatement
| Questions | Answers |
| What is the deadline for payment of renewal fees? | The deadline for payment for the 2021 fee is August 31, 2021. This fee payment covers your registration until December 31, 2021. |
| Do we still have to pay the CIPO agent renewal fee? If we paid the CIPO agent renewal fee for 2021, do we still have to pay the College’s fee? |
Yes, you must pay the College’s fee to maintain your agent registration. The CIPO renewal fee was due March 31, 2021 and you should have paid by then; if you had not maintained your CIPO registration, then you should have been removed from the register before agent registration information was transferred to the College. The fees paid to CIPO were transferred to the College and are not refundable. The College fee due by August 31, 2021 covers your registration with the College for the balance of 2021. No further agent renewal fees are due to CIPO. Those provisions of the Trademarks Regulations and the Patent Rules have been repealed. |
| What happens if renewal fees are not paid by August 31, 2021? | The agent’s license will be suspended. |
| What will be the deadline for paying renewal fees in 2022 and going forward, and what will be the amount? | March 31. |
| How can a firm arrange for group payment for the licences of all their agents? |
Contact admin@cpata-cabamc.ca. |
| Will the payment system be updated in future to permit a firm/single agent to renew all their firm’s agents in a single transaction? | That is a work in progress. It will depend on what we can do with our technology provider. |
| My profile currently shows that there are no fees due, but I did not pay the $700 fee yet. Is this an error? | Contact admin@cpata-cabamc.ca. |
| Will CPATA issue invoices for fee payment in future years? |
It is not our plan to issue advance invoices. Invoicing requires a much larger infrastructure than the College wants to create. After you have paid, you can check the “Invoices & Receipts” tab in the Agent Portal to view a receipt itemizing the licence fees and applicable taxes, along with CPATA’s GST/HST registration number. |
| What is the status of trademark agents who became CIPO-registered trademark agents under the old regime that permitted lawyers to become registered based on 24 months of work experience, without writing the exam? | If you were an individual listed on the register of trademark agents maintained by CIPO on June 28, your registration was automatically transferred to CPATA and you continue as a licensed trademark agent—subject to payment of the renewal fee of $700 plus HST due to CPATA by August 31, 2021. |
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Will there be any distinction between trademark agents who qualified by writing the CIPO-administered or CPATA-administered exam, vis-à-vis those who qualified several years ago as lawyers without writing the CIPO-administered exam? The only difference before CIPO was that if an agent who qualified without writing the exam was removed from the register, reinstatement would require writing the exam. Is there a similar difference with CPATA, for example if their licence is revoked or suspended (for non-payment of fees or another reason) and they seek to be reinstated? Will they be required to write the CPATA-administered exam? |
No. |
| If I live in a different province than my office, which tax should be applied to my renewal fee? | The tax of your business address will be automatically added. |
| If neither the agent nor firm will receive confirmation via email when their fees have been paid, how can we confirm that fees have been paid? via the CPATA website? | The system will generate a receipt on request. |
| When an individual renews online, will the firm with which he's associated with be automatically renewed as well? |
Recall that firms are no longer “agents” in the Trademarks Regulations or Patent Rules, so there is no “renewal” of a firm as an agent. |
| Is there any fee reduction for retirees? | Not unless they become Class 2 Licensees. There is no ‘retired’ status. |
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What is the process to lift a suspension due to non-payment of fees? |
Pay the outstanding fee and the reinstatement fee. |
| Is there a fee for being included in the Register as a foreign practitioner? Is there or will there be a licence category for foreign practitioners? |
Not at present. The College has no authority over foreign practitioners so they will not have a license category. |
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In the future could the annual fees be based on the amount of revenues received from the licensee’s practice? These fees present a hardship to a solo agent who generally earns no more than $20,000 per year from agent work. |
The method for fee calculation is very complicated. The College hopes to engage in a process that will allow for a fuller discussion about various approaches, but that may require resources the College does not currently have. |
| Fees for patent and trademark agents have increased significantly with CPATA as compared to fees previously paid to CIPO. What additional services can agents expect for these additional costs? | The College is not intended to provide ‘services’ to the profession. It is to protect the public interest. The College’s ‘value’ will be assessed based on that. The costs of providing that protection is borne by the profession, but the College must do so as cost effectively as it can while achieving its mandate. |
CPD Requirements
| Questions | Answers |
| Will there be continuing professional development requirements for agents? | That is on the College’s agenda. |
| Will these requirements require agents to provide logs or statements of their CPD hours, and/or evidence (e.g, attestations) of CPD attendance, to CPATA? | No model has yet been considered. |
| Will these requirements overlap CPD requirements of lawyers, and will lawyers be able to count their law society-mandated CPD towards their CPATA CPD requirement? | The College will endeavor to eliminate duplication in CPD requirements. |
| How will CPATA protect the public in situations where the public receives services from a registered trademark agent that was not required to pass the trademark agent examination (lawyers) yet do not have experience in IP nor are qualified to practice? |
CPATA’s work will not be affected by the means one used to gain agent status. ‘An agent is an agent’ regardless of how they came into the profession. |
| Will CPATA be putting together practice committees / webinars for professional development? | CPATA does not intend to have a practice committee. |
Code of Conduct
| Questions | Answers |
| Will the definition of "firm" in the Code of Conduct be expanded to include government organizations, Crown corporations and public bodies? | There will be a review of the Code, but the College cannot yet speak to individual issues. |
| The current CPATA documentation appears to be geared almost entirely towards firms. Will further guidance be coming for in-house agents? | Once CPATA has a greater understanding of the demographics of the profession, it will be better able to tailor its approaches in all areas of professional regulation. |
Unauthorized Practice
| Questions | Answers |
| In Quebec, we’ve had non-agents drafting patent applications and filing them under the name of the applicants. CIPO was of the view they could not act against this. How is CPATA planning to actually enforce the requirement to be licensed agents? |
The College is not able to comment on this situation. |
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Does unauthorized practice include a person who is not a patent or trademark agent holding themselves out as such? And if so, will CPATA take any steps against such people? And if so, what about a foreign-licensed agent (e.g. a US patent agent) who is not a CPATA licensee holding themself out as a patent agent in or for Canada? |
The College has not done any analysis relating to this issue. |
| How can CPATA fulfil its role in protecting the public if it does not patrol unauthorized practice? |
UAP in most professions has not served the role of public protection, but usually is seen as self-protection for the profession. That is not the College’s role. It is government that has defined what agents are authorized to do. It is their responsibility to police that. The College has not been required to prosecute UAP. |
Insurance
| Questions | Answers |
| Are in-house agents required to carry insurance as well? | The scope of the insurance requirements will be addressed in a soon to be released Consultation Paper. |
| Will class 2 (inactive) licensees be required to continue their mandatory insurance coverage? |
They will not be required to be insured. |
| Do lawyers who already have professional liability insurance have to obtain additional liability insurance? | The answer will depend on the final decisions about required scope of coverage and whether it will be provided by the law society program. |
Investigations & Discipline
| Questions | Answers |
| Does the college have jurisdiction to hear complaints about past conduct by a member that is the subject of ongoing litigation? | Yes. |
| If there are complaints, will there be a list for the public to view? | Complaints are confidential until a finding is made. |
Public Outreach
| Question | Answer |
| How will CPATA educate current agents and the public regarding which services can and cannot be provided by non-lawyer agents? | No decision has been made on this yet. |
Other
| Questions | Answers |
| Is there any profession that is already governed by a similar regime? | Patent and Trademark Attorneys in the UK are subject to a similar regulatory regime (IPReg). |
| Please explain what added value CPATA’s higher licence fees offer a trademark agent who is also an attorney, who is already subject to high standards of practice, liability coverage, and subject to disciplinary controls and sanctions? I just don't see what benefit CPATA provides me, because it appears to be redundant. |
The ‘value’ question was answered above. Furthermore, as noted earlier, only a trademark agent may represent an applicant in prosecution of a trademark application before CIPO. |
| If an agent must resign from IPIC to become a member of a CPATA committee, they will lose the benefit of lower prices for IPIC’s CPD offerings, but they are still going to need access to specialized CPD programs. Has IPIC considered offering the reduced pricing to former IPIC members in these circumstances? | Yes, IPIC will do whatever it can to support members who need to resign their IPIC membership for the period that they volunteer with the College. |
| Can individuals with inactive licenses sit on one of the CPATA committees? | Yes. A Class 2 licensee remains an agent, although there are restrictions on practice. |
| What role does IPIC see for its Code of Ethics going forward? | IPIC will be discussing a plan to either repeal or amend the IPIC Code of Ethics with the IPIC Board this fall. IPIC will communicate the outcomes with members as soon as possible. |
| What role does CPATA see for IPIC going forward? |
Effective regulation works best in an environment where there is an excellent professional association. They share many responsibilities, and it is expected there will be a mutually supportive relationship between CPATA and IPIC moving forward. IPIC plans to continue their role as the voice of the profession with any external organizations, including the College. IPIC will also continue to provide education and training, research, programs and services for the profession. |