Vol. 147, No. 26 — December 18, 2013

Registration

SOR/2013-231 December 6, 2013

PATENT ACT

Rules Amending the Patent Rules

P.C. 2013-1333 December 5, 2013

His Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 12 (see footnote a) of the Patent Act (see footnote b), makes the annexed Rules Amending the Patent Rules.

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,

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 on the web site of the Canadian Intellectual Property Office 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

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 (1) Subsection 16(2) of the Rules is repealed.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:

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:

7. The portion of item 34 of Schedule II to the Rules in column I is replaced by the following:

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 section 3, 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 the Rules for any examination on or before December 31, 2014.

COMING INTO FORCE

9. (1) Sections 5 and 6 come into force on April 1, 2014.

(2) Sections 1 to 4 and 7 and 8 come into force on May 1, 2014.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Rules or the Regulations.)

Background

This regulatory initiative amends 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.

Issue

Over the past few years, there has been a steady decline in first time pass rates for 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. The low success rate also results in unnecessary costs for both the Canadian Intellectual Property Office (CIPO) and the unsuccessful applicants.

Objectives

The amendments will 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 will simplify the processes for those individuals who work as both patent and trade-mark agents.

The proposed amendments will also provide CIPO with increased flexibility and efficiencies in the administration of the qualifying examinations.

Description

Detailed descriptions of the amendments are as follows.

Eligibility to sit for agent qualifying examination

The proposed amendment to the Patent Rules, paragraph 12(a), will 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 will be recognized. With increased practical experience, prospective agents will 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 amendment will introduce subparagraph 18(a)(iii), where a person who was entitled to practise 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 subparagraph 18(a)(i), will 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 to be eligible to sit for the qualifying examination.

These changes will harmonize the eligibility criteria to sit for the agent qualifying examination under the Patent Office and 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, the regulations will 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 will 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 will permit the Commissioner/Registrar to notify candidates by any means deemed appropriate, such as regular mail or electronic mail.

Notification of examination dates

Upon review, references to the Canadian Patent Office Record and the Trade-mark Journal in subsection 14(2) of the Patent Rules and subsection 20(2) of the Trade-marks Regulations relating to the notification of the dates of the exams will be removed. Publishing notices in these publications was practical when they were weekly paper documents, but CIPO is increasingly moving to a more modern system where notices are sent through automated emailing lists or posted electronically on the Internet where they can be easily located. As a result, the amended regulations will refer to the notification being published on the Web site of the Canadian Intellectual Property Office.

Refund of the patent agent qualifying examination fee

This amendment will 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 will prevent the Examination Board from spending significant resources in organizing and administering the examinations with respect to candidates that will eventually withdraw by limiting the circumstances under which a candidate can request a refund. Specifically, a request for a refund will be restricted to only those situations where the candidate has passed a previously administered examination but has not received their 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 who practice IP law be entered on to the list, CIPO will remove this exemption and apply a uniform set of requirements to all candidates. This change was broadly supported by stakeholders during the consultation phase. Eliminating this special privilege accorded to barristers and solicitors means that all candidates must meet a uniform set of requirements and possess a comprehensive knowledge of IP to be entered onto the list.

Removal from the list of trade-mark agents

To further harmonize the Patent Rules and the Trade-marks Regulations, new language is provided in subsections 22(2) and 22(3) of the Trade-marks Regulations related to the removal of a trade-mark 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 will 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.”

Consultation

The proposed regulations were published in the Canada Gazette, Part I, on September 29, 2012, followed by a comment period of 30 days. Prepublication comments addressing the amendments were received from one organization, one group of individuals, and three individuals.

In general, there is support for the amendment proposing to extend the required practical experience from 12 months to 24 months for patent agents. It is recognized that 24 months of practical experience is required in order for a candidate to attain a comprehensive understanding of IP.

With regard to the administration of the agent examinations, there were suggestions 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. It was also suggested that adequate time was required between patent and trade-mark exams as some candidates write both exams. As previously indicated, CIPO will incorporate these suggestions into its administrative practices.

As already noted in the description, CIPO will also remove references to the Canadian Patent Office Record and the Trade-mark Journal with regard to the notification of dates of exams.

Other proposals received during the consultation process will not form a part of the final regulations.

Concern was expressed by the Intellectual Property Institute of Canada (IPIC) about the repeal of subsection 16(2) which provides that the Commissioner shall send a notice of compliance to every patent agent who fails to comply with the annual payment of the fee. This change is being made to eliminate what is reasonably considered to be undue administration. However, in recognition of IPIC’s concern that the repeal of this subsection could pose a risk and burden to the agent profession, CIPO will work to put in place an annual courtesy notification for all agents in advance of the payment deadline either online or using the contact information that is required to be on record with CIPO. This notification will remind agents both of the payment and the consequences of non-payment for themselves and their clients.

One individual suggested that the proposed regulations create a two-tier system for trade-mark agents whose names are currently on the trade-mark agent list having qualified under paragraph 21(b) [barrister or solicitor].

As a consequence, the concern was expressed that a long time practising trade-mark agent could potentially have his/her livelihood jeopardized as a result of failing to pay a fee through a clerical error on the agent’s part or be compelled to write the exam. CIPO believes that a three-month period is a fair and sufficient amount of time to provide for a fee payment. In addition, CIPO has previously made efforts to make it much simpler for the fee to be paid, such as by making a direct payment through a bank.

CIPO considered the suggestion made by IPIC that a prospective agent’s experience should be acquired under the supervision of a qualified agent. However, the concept of “supervision” can be interpreted differently and such a provision would likely prove difficult to monitor. It could also conceivably result in unintended situations where an individual would be unable to qualify for exams should a supervisor fail to provide confirmation of having served in a supervisory role.

Finally, IPIC foresaw circumstances where there may be a contradiction between having to meet the requirements for the exams on the first day of the exams and having to provide evidence of meeting those requirements within two months after the notice has been published. IPIC therefore suggested that subparagraph 12(b)(iii) of the Patent Rules and subparagraph 18(b)(iii) of the Trade-marks Regulations be amended to stipulate that the candidate must provide evidence that he or she will meet the requirements by the date of the exam and must provide further confirmation at that time if necessary. However, CIPO believes that an applicant’s indication that he or she will meet the requirements provides the necessary evidence and that an amendment of this nature is not necessary.

“One-for-One” Rule

The “One-for-One” Rule does not apply to this proposal as the regulatory amendments do not increase the administrative burden on businesses.

Small business lens

The improvements to the examination process will come at no administrative costs to small business or candidates.

Rationale

The proposed amendments do not require additional resources toward administering Canada’s IP system. The proposed changes will provide greater flexibility to the Boards in administering the examinations by removing the fixed annual exam date, and will 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.

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 these regulatory amendments. Accordingly, no additional costs are required to monitor and enforce these regulatory changes.

The coming-into-force dates for the amendments have been chosen to provide adequate transition time for prospective agents planning to undertake the exams and to also allow adequate time to comply with new requirements.For the amendments related to the Patent Rules, sections 5 and 6 will come into force on April 1, 2014, and sections 1 to 4, and 7 and 8 will come into force on May 1, 2014. The amendments related to the Trade-marks Regulations will come into force on April 1, 2014.

Contact

Ann McMonagle
Senior Policy Advisor
Canadian Intellectual Property Office
Industry Canada
50 Victoria Street
Place du Portage, Phase I
Gatineau, Quebec
K1A 0C9
Telephone: 819-934-0085
Fax: 819-997-5052