CIPO Publishes Modernizing IP Community Report for Consultation

Last year CIPO (in conjunction with IPIC, FICPI and AIPPI) launched the “Modernizing the IP Community” project, in which Paula Clancy was invited to participate.  Three working groups were established to examine and make recommendations on the following issues:

• improving the maintenance and oversight of the register/list of patent and trademark agents;
• improving the qualification and maintenance of patent and trademark agents on the register/list to ensure only the most prepared candidates write the qualifying exams and that successful agents continue to update their skills throughout their careers; and
• creating a values and ethics framework for IP agents to support the IP profession and ensure the highest value of service to innovators and businesses.

The final report containing the recommendations of the working groups has been published and a consultation period has begun.  CIPO will accept commentaries on the final report until December 9, 2014.
The 11 recommendations put forth in the report are as follows (Source: Summary Overview published on the CIPO site):

1. For both patents and trademarks, a public, comprehensive list of agents and firms should be published with biographical information including name, address, phone number, email, link to agent/firm website, and year of agent registration. The lists should be fully searchable by the public and easy to find on CIPO’s website.
2. Agents should be capable of and responsible for keeping their personal contact information up-to-date on the lists.
3. A comprehensive agent database should be published that includes all registered agents on the lists as well as those agents that have been temporarily suspended or permanently removed from the lists.
4. Eligibility to write the substantive agent qualification papers should require a “pre-screening” part of the examination that tests core knowledge so as to ensure that candidates have sufficient knowledge to proceed to the substantive papers.
5. To improve administrative efficiencies and promote candidate preparedness, while ensuring qualified agents have passed current exams, limits should be placed on the time and/or number of attempts allowed to pass the exams, and exam fees should increase with the number of attempts.
6. The scope of agent qualification exams should be expanded to include
   1. relevant aspects of foreign IP law and practice and
   2. values and ethics (conditional on the adoption of a code of conduct).
7. A continuing professional development (CPD) requirement should be implemented as a condition to remain on the register of patent agents and the list of trademark agents.
8. A single body (the CPD administrator) should be responsible for both the administration of the CPD requirement and monitoring agent compliance.
9. There should be consequences to non-compliance with the CPD requirement, culminating in suspension or removal from the register of patent agents or list of trademark agents.
10. There should be a requirement for all registered agents on the lists to abide by a code of conduct. The code should be modeled after the IPIC Draft Code of Conduct, which is aligned with the Federation of Law Societies Model Code of Professional Conduct.
11. A values and ethics framework should be created, comprising members of CIPO and the IP profession, as appropriate, tasked with the following functions in the disciplinary process:
    1. complaint-receipt function;
    2. review function;
    3. investigative function; and,
    4. tribunal (with an additional member from the public).

If you have any comments with respect to the recommendations put forth, please submit them to CIPO prior to December 9, 2014.  Submissions may be made directly on the CIPO at OPIC-CIPO.consultations@ic.gc.ca, by fax at 819-997-5052, or by regular mail to the following address:

Canadian Intellectual Property Office
Policy, Planning, International and Research Office
50 Victoria Street
Place du Portage II
Gatineau, QC K1A 0C9
Attention: Konstantinos Georgaras, Director of Policy, Planning, International Affairs and Research Office

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