College of Patent Agents and Trademark Agents Regulations
SOR/2021-129
COLLEGE OF PATENT AGENTS AND TRADEMARK AGENTS ACT
Registration 2021-06-10
College of Patent Agents and Trademark Agents Regulations
P.C. 2021-526 2021-06-10
His Excellency the Administrator of the Government of Canada in Council, on the recommendation of the Minister of Industry, pursuant to paragraph 46(1)(d) and sections 72, 76 and 86 of the College of Patent Agents and Trademark Agents ActFootnote a, makes the annexed College of Patent Agents and Trademark Agents Regulations.
Return to footnote aS.C. 2018, c. 27, s. 247
Definition
Marginal note:Definition of Act
1 In these Regulations, Act means the College of Patent Agents and Trademark Agents Act.
Committees
Marginal note:Conditions for Investigations Committee and Discipline Committee members
2 The majority of the members of the Investigations Committee and of the Discipline Committee, established under subsection 21(1) of the Act, must be individuals who
(a) are not licensees; and
(b) are not employed by a department, as defined in section 2 of the Financial Administration Act.
Marginal note:Committee administering licensing requirements
3 The committee of the College that is established to administer the requirements, including a qualifying exam, that are to be met in order to obtain a licence under section 26 or 29 of the Act must
(a) be composed of individuals who may be removed at pleasure by the Board;
(b) not include any individual who is a member of an association the primary purpose of which is to represent the interests of persons who provide advice on patents or trademarks;
(c) include a representative from the Patent Office and the Office of the Registrar of Trademarks; and
(d) be subject to a conflict of interest policy established by the Board.
Patent Agent Licence
Marginal note:Applicant for patent agent licence — requirements
4 For the purposes of subsection 26(1) of the Act, an individual who makes an application for a patent agent licence must
(a) be resident in Canada; and
(b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) training,
(ii) qualifying examinations,
(iii) good character and fitness to practise, and
(iv) fees.
Marginal note:Patent agent licence — conditions
5 A patent agent licence is subject to the following conditions:
(a) the licensee must be resident in Canada; and
(b) the licensee must meet the requirements for a holder of a patent agent licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) training,
(ii) good character and fitness to practise, and
(iii) fees.
Marginal note:Applicant for patent agent in training licence — requirements
6 For the purposes of subsection 26(2) of the Act, an individual who makes an application for a patent agent in training licence must
(a) be resident in Canada; and
(b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) education,
(ii) good character and fitness to practise,
(iii) fees, and
(iv) the provision of administrative forms.
Marginal note:Patent agent in training licence — conditions
7 A patent agent in training licence is subject to the following conditions:
(a) the licensee must be resident in Canada; and
(b) the licensee must meet the requirements for a holder of a patent agent in training licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) training,
(ii) good character and fitness to practise, and
(iii) fees.
Trademark Agent Licence
Marginal note:Applicant for trademark agent licence — requirements
8 For the purposes of subsection 29(1) of the Act, an individual who makes an application for a trademark agent licence must
(a) be resident in Canada; and
(b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) training,
(ii) qualifying examinations,
(iii) good character and fitness to practise, and
(iv) fees.
Marginal note:Trademark agent licence — conditions
9 A trademark agent licence is subject to the following conditions:
(a) the licensee must be resident in Canada; and
(b) the licensee must meet the requirements for a holder of a trademark agent licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) training,
(ii) good character and fitness to practise, and
(iii) fees.
Marginal note:Applicant for trademark agent in training licence — requirements
10 For the purposes of subsection 29(2) of the Act, an individual who makes an application for a trademark agent in training licence must
(a) be resident in Canada; and
(b) meet the requirements for an applicant for such a licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) education,
(ii) good character and fitness to practise,
(iii) fees, and
(iv) the provision of administrative forms.
Marginal note:Trademark agent in training licence — conditions
11 A trademark agent in training licence is subject to the following conditions:
(a) the licensee must be resident in Canada; and
(b) the licensee must meet the requirements for a holder of a trademark agent in training licence, as set out in the by-laws made by the Board or the College, including requirements with respect to
(i) training,
(ii) good character and fitness to practise, and
(iii) fees.
Investigations
Marginal note:Application to Federal Court
12 For the purposes of sections 44 to 48 of the Act, an application may be made to the Federal Court by notice of application.
Marginal note:Prescribed period
13 For the purposes of paragraph 46(1)(d) of the Act, the prescribed period is the period of 10 days after the day on which the investigator removes the sealed package containing the document or thing.
Marginal note:Federal Court orders
14 (1) For the purposes of subsection 46(5) of the Act, the Federal Court may make orders respecting the retention, opening or return of sealed packages.
Marginal note:Application
(2) An investigator or any interested person may apply to the Federal Court for an order referred to in subsection (1).
Marginal note:Conditions for opening sealed package
(3) Subject to any order made by the Federal Court under subsection (1), a sealed package may be opened if
(a) consent is given by the holder of a privilege with respect to that document or thing; or
(b) the sealed package was returned to the owner of the document or thing in that sealed package.
Marginal note:Applicable period
15 For the purposes of subsection 47(1) of the Act, the applicable period is the one that ends the latest among the following periods:
(a) the period of 30 days after the day on which the investigator took possession of the document or thing;
(b) the period of 30 days after the day on which the sealed package containing that document or thing was, or could have been, opened, if applicable; and
(c) the period agreed to by the owner of the document or thing in the sealed package and, if applicable, the holder of a privilege with respect to that document of thing.
Unauthorized Representation — Exemptions
Marginal note:Representation before Patent Office
16 Subsection 70(1) of the Act does not apply to
(a) a person who is permitted to represent another person before the Patent Office under the Patent Rules or under the Patent Act or any other Act of Parliament or any Act of the legislature of a province;
(b) an employee who is representing their employer, unless their employer is representing another person; or
(c) a person who is performing an administrative activity, if they have the permission of a patent agent, whose licence is not suspended, to perform that activity.
Marginal note:Representation before Office of Registrar of Trademarks
17 Subsection 71(1) of the Act does not apply to
(a) a person who is permitted to represent another person before the Office of the Registrar of Trademarks under the Trademarks Regulations or under the Trademarks Act or any other Act of Parliament or any Act of the legislature of a province;
(b) an employee who is representing their employer, unless their employer is representing another person; or
(c) a person who is performing an administrative activity, if they have the permission of a trademark agent, whose licence is not suspended, to perform that activity.
Authorization to Make By-laws
Marginal note:Authority for College to make by-laws
18 The College is authorized to make by-laws with respect to
(a) the conditions that are to be imposed on licences or classes of licences, including a condition that requires a licensee to be of good character and fit to practise;
(b) the requirements that individuals or classes of individuals must meet under section 26 or 29 of the Act, including requirements in relation to qualifying examinations, to fees with respect to qualifying examinations and to being of good character and fit to practise;
(c) the determination as to what constitutes good character and fitness to practise for the purposes of the conditions and requirements referred to in paragraphs (a) and (b), respectively; and
(d) restrictions on the entitlement of licensees or classes of licensees to provide representation under section 27 or 30 of the Act.
Registers — Additional Information
Marginal note:Register of Patent Agents — additional information
19 (1) For the purposes of paragraph 28(1)(f) of the Act, the Registrar must include in the Register of Patent Agents the name and contact information of an individual who
(a) is a resident of a country other than Canada and is authorized to act as a patent agent under the law of that country; and
(b) has made a request in writing to the Registrar to be included in the Register.
Marginal note:Register of Patent Agents — annual requirement
(2) In order to maintain their name in the Register, an individual referred to in subsection (1) must continue to meet the requirements of paragraph of (1)(a) and must in each year, within the period established by by-laws made by the Board, provide to the Registrar a statement signed by the individual setting out their country of residence and declaring that they are authorized to act as a patent agent under the law of that country.
Marginal note:Register of Trademark Agents — additional information
20 (1) For the purposes of paragraph 31(1)(f) of the Act, the Registrar must include in the Register of Trademark Agents the name and contact information of an individual who
(a) is a resident of a country other than Canada and is authorized to act as a trademark agent under the law of that country; and
(b) has made a request in writing to the Registrar to be included in the Register.
Marginal note:Register of Trademark Agents — annual requirement
(2) In order to maintain their name in the Register, an individual referred to in subsection (1) must continue to meet the requirements of paragraph (1)(a) and must in each year, within the period established by by-laws made by the Board, provide to the Registrar a statement signed by the individual setting out their country of residence and declaring that they are authorized to act as a trademark agent under the law of that country.
Transitional Provisions
Marginal note:Deemed holder of patent agent in training licence
21 (1) An individual is deemed to hold a patent agent in training licence during the period described in subsection (2) if that individual
(a) is working in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent;
(b) is supervised, in respect of that work,
(i) by an individual who holds a patent agent licence or who, before the day on which these Regulations come into force, is a patent agent, or
(ii) by an individual who is responsible for a legal clinic associated with a Canadian faculty of law;
(c) is resident in Canada; and
(d) provides notice to the College that they meet the requirements of paragraphs (a) to (c).
Marginal note:Period for purposes of subsection (1)
(2) For the purpose of subsection (1), the applicable period begins on the later of the day on which these Regulations come into force and the day on which the notice referred to in paragraph (1)(d) is received and ends on the earliest of
(a) the day on which the individual is issued a patent agent licence or a patent agent in training licence under section 26 of the Act,
(b) the day on which the applicable licence referred to in subsection (1) is surrendered,
(c) the day on which the applicable licence referred to in subsection (1) is revoked, and
(d) the day that is one year after the day on which these Regulations come into force.
Marginal note:Deemed holder of trademark agent in training licence
22 (1) An individual is deemed to hold a trademark agent in training during the period described in subsection (2) if that individual
(a) is working in the area of Canadian trademark law and practice, including the preparation and prosecution of applications for the registration of trademarks;
(b) is supervised, in respect of that work,
(i) by an individual who holds a trademark agent licence or who, before the day on which these Regulations come into force, is a trademark agent, or
(ii) by an individual who is responsible for a legal clinic associated with a Canadian faculty of law;
(c) is resident in Canada; and
(d) provides notice to the College that they meet the requirements of paragraphs (a) to (c).
Marginal note:Period for purposes of subsection (1)
(2) For the purpose of subsection (1), the applicable period begins on the later of the day on which these Regulations come into force and the day on which the notice referred to in paragraph (1)(d) is received and ends on the earliest of
(a) the day on which the individual is issued a trademark agent licence or a trademark agent in training licence under section 29 of the Act,
(b) the day on which the applicable licence referred to in subsection (1) is surrendered,
(c) the day on which the applicable licence referred to in subsection (1) is revoked, and
(d) the day that is one year after the day on which these Regulations come into force.
Marginal note:Qualifying examination for patent agents
23 If, before the day on which these Regulations come into force, an individual sat for a paper of the qualifying examination for patent agents and, on that day, the final mark for that paper was not yet determined,
(a) the Examining Board established under section 20 of the Patent Rules, as it read immediately before the day on which these Regulations come into force, must mark that paper; and
(b) the individual may meet the requirements of subsection 26(1) of the Act by passing that qualifying examination and paying the fee, if any, established for that purpose by by-laws made by the Board or the College.
Marginal note:Qualifying examination for trademark agents
24 If, before the day on which these Regulations come into force, an individual sat for a qualifying examination for trademark agents and, on that day, the final mark for that examination was not yet determined,
(a) the examining board established under section 17 of the Trademarks Regulations, as it read immediately before the day on which these Regulations come into force, must mark that examination; and
(b) the individual may meet the requirements of subsection 29(1) of the Act by passing that examination and paying the fee, if any, established for that purpose by by-laws made by the Board or the College.
Marginal note:Patent agent licence — requirements for former patent agent
25 An individual who is resident in Canada, who has passed the qualifying examination for patent agents and who was a former patent agent whose name was removed under subsection 23(2) of the Patent Rules from the register of patent agents kept under section 15 of the Patent Act, as those provisions read immediately before the day on which these Regulations come in to force, is considered to meet the requirements for a patent agent licence if
(a) they apply in writing to the Registrar for reinstatement not later than one year after the day on which their name was removed from that register; and
(b) they pay the fee, if any, established for that purpose by by-laws made by the Board or the College.
Marginal note:Trademark agent licence — requirements for former trademark agent
26 An individual who is resident in Canada, who has passed the qualifying examination for trademark agents and who was a former trademark agent whose name was removed under subsection 20(2) of the Trademarks Regulations from the list of trademark agents kept under section 28 of the Trademarks Act, as those provisions read immediately before the day on which these Regulations come into force, is considered to meet the requirements for a trademark agent licence if
(a) they apply in writing to the Registrar for reinstatement not later than one year after the day on which their name was removed from that list; and
(b) they pay the fee, if any, established for that purpose by by-laws made by the Board or the College.
Marginal note:Request deemed to be made — patent agents
27 If, on the day before the day on which these Regulations come into force, the name of an individual was on the register of patent agents in accordance with paragraph 22(b) of the Patent Rules, as it read immediately before the day on which these Regulations come into force, the individual is deemed to have made the request referred to in paragraph 19(1)(b) of these Regulations on the day on which these Regulations come into force.
Marginal note:Request deemed to be made — trademark agents
28 If, on the day before the day on which these Regulations come into force, the name of an individual was on the list of trademark agents in accordance with paragraph 19(b) of the Trademarks Regulations, as it read immediately before the day on which these Regulations come into force, the individual is deemed to have made the request referred to in paragraph 20(1)(b) of these Regulations on the day on which these Regulations come into force.
Coming into Force
Marginal note:S.C. 2018, c. 27, s. 247
Footnote *29 These Regulations come into force on the day on which paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act come into force, but if they are registered after that day, they come into force on the day on which they are registered.
Return to footnote *[Note: Regulations in force June 28, 2021, see SI/2021-30.]
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