Bill C-86 and Its Impact on Trademark and Patent Prosecution

On October 29, 2018, the House of Commons introduced Bill C-86, A second Act to implement certain provisions of the budget tabled in Parliament on February 27, 2018 and other measures. The omnibus bill is 884 pages long and brings amendments to several laws, including the Patent Act and Trade-marks Act. The bill also enacts the College of Patent Agents and Trade-mark Agents Act, which establishes the College of Patent Agents and Trademark Agents.

“That Act, among other things,

(a) requires that individuals obtain a licence in order to act as patent agents or trade-mark agents and that licensees comply with a code of professional conduct;

(b) authorizes the College’s Investigations Committee to receive complaints and conduct investigations into whether a licensee has committed professional misconduct or was incompetent;

(c) authorizes the College’s Discipline Committee to impose disciplinary measures if it decides that a licensee has committed professional misconduct or was incompetent; and

(d) creates new offences of claiming to be a patent agent or trade-mark agent and unauthorized representation before the Patent Office or the Office of the Registrar of Trade-marks.”

The College of Patent Agents and Trade-mark Agents Act will contain the following provisions:

Unauthorized representation before Patent Office

70 (1) Subject to subsection (2) and the regulations, a person must not represent another person in the presentation and prosecution of applications for patents or in other business before the Patent Office.

Exception

(2) Subsection (1) does not apply to a patent agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.

Unauthorized representation before Office of the Registrar of Trade-marks

71 (1) Subject to subsection (2) and the regulations, a person must not represent another person in the presentation and prosecution of applications for the registration of trade-marks or in other business before the Office of the Registrar of Trade-marks.

Exception

(2) Subsection (1) does not apply to a trade-mark agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.

Commentary

In Canada, only registered patent agents are permitted to represent applicants before the Patent Office in obtaining patent protection. Section 15 of the Patent Act states:

Register of patent agents

15 A register of patent agents shall be kept in the Patent Office on which shall be entered the names of all persons and firms entitled to represent applicants in the presentation and prosecution of applications for patents or in other business before the Patent Office.

Similarly, registered trademark agents are the only professionals permitted to represent and act on behalf of trademark owners to obtain trademark registrations before the Office of the Registrar of Trade-marks. Subsection 28(2) of the Trade-Marks Act sates:

List of trade-mark agents

28 (2) The list of trade-mark agents shall include the names of all persons and firms entitled to represent applicants in the presentation and prosecution of applications for the registration of a trade-mark or in other business before the Trade-marks Office

It is important to note that agents need not be lawyers; although many agents are also lawyers.

Certain qualifications and examinations must be met in order to become patent and trademark agents. The process to become an agent requires a lot of preparation and is not easy. In fact, most candidates will write the Patent Agent Qualifying Examination more than once. According to the 2017 Report, 20.2% of the candidates were successful in the Examination in 2017. Patent and trademark agents are therefore very well qualified to represent their clients before the Patent and Trademark Office; whereas lawyers who are not agents do not have the same experience.

Paragraphs 70(2) and 71(2) of the College of Patent Agents and Trade-mark Agents Act are written in a way that may bring some ambiguity to the patent and trademark prosecution practice:

70 (2) Subsection (1) does not apply to a patent agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.

71 (2) Subsection (1) does not apply to a trade-mark agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.

The wording in these paragraphs implies that lawyers who are not agents will be able to make representations before the Patent Office and the Office of the Registrar of Trade-marks. This would be conflicting with the current wording in section 15 of the Patent Act, as well as subsection 28(2) of the Trade-marks Act. It is interesting to note, however, that the implementation of the College of Patent Agents and Trade-mark Agents Act will bring some consequential amendments; notably, s. 15 of the Patent Act and s. 28 of the Trade-marks Act will be repealed. Lawyers who are not agents lack the rigorous agent training process mentioned above, and therefore paragraphs 70(2) and 71(2) of the College of Patent Agents and Trade-mark Agents Act, along with the repeals of s. 15 of the Patent Act and s. 28 of the Trade-marks Act are quite troubling.

However, Bill C-86 is still in its early stages of the legislative process, having only been through the first reading in the House of Commons. Hopefully some clarifications, and perhaps modifications, will be brought to the above-mentioned sections.

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