New regulatory body for patent and trademark agents proposed

The Intellectual Property Institute of Canada (IPIC) is celebrating its 80th anniversary by proposing the creation of the Canadian College of Patent Agents and Trademark Agents. Most Canadian IP lawyers and agents are members of IPIC voluntarily. IPIC membership has never been mandatory for patent or trademark agents.

Under IPIC's proposal, membership of the College of Patent and Trademark Agents would be mandatory for both patent and trademark agents, thereby providing the college with the necessary tools to regulate the profession efficiently. In essence, the proposed changes would increase consistency for IP professionals by providing many of the same safeguards and mechanisms which are available for the legal profession. Such changes include the implementation of an enforceable code of ethics, compulsory professional liability insurance, the creation of a client indemnity fund and a transparent disciplinary process.

Most importantly, however, the IPIC proposal includes the protection of confidential communications between agents and clients. While many IP practitioners are also lawyers, and their clients therefore enjoy protection from the doctrine of solicitor-client privilege, many are non-lawyers, which leaves their communications non-privileged and vulnerable to disclosure during litigation. Therefore, this measure in particular would eliminate an important inconsistency between IP professionals. Furthermore, it would align this aspect of Canadian law with that of some other countries such as Australia, New Zealand, the United Kingdom, Japan, France, Germany and the Netherlands, which have implemented statutory privilege for patent and trademark agents.

Other aspects of the proposal include formalizing the concept of an agent-in-training (for a period of 24 months), mandatory continuing education, regulation of trust funds held by agents, and of course, the creation of the college itself, to be governed by a board consisting of members and appointees of the Federal Minister of Industry.

Jérôme Bastien, Macera & Jarzyna - Moffat & Co, Canada