Patent and Trade-Mark Agent Requirements

New requirements are coming for lawyers wanting to become patent and trademark agents. Registered patent and trademark agents are able to represent applicants before the Canadian Intellectual Property Office.

Proposed amendments to the governing regulations were recently published in the Canada Gazette (“Rules Amending the Patent Rules”, “Regulations Amending the Trade-marks Regulations”) for comment. I expect the final amendments to be very similar to these proposed changes and will likely come into force in the next several months. Earlier versions of these changes were published by the Canadian Intellectual Property Office (CIPO) several years ago.

Many of these changes harmonize the requirements for the two examination procedures and provide additional flexibility to CIPO to administer the exams.

Patent Agents

Currently, to become a patent agent, one has to apply to write the patent agent exam which is held once a year in April (s.14). An affidavit certifying to at least 12 months of experience working on patent prosecution and opinions is required along with the fees (s.12).

The exam consists of four papers written over four days on the subjects of a) patent drafting, b) patent validity, c) patent office practice and d) patent infringement. A mark of at least 50/100 is required on each paper and a total mark of over 240 is needed in order to pass the exam. Fortunately, papers with scores of over 60/100 can be carried over into the next year.

The exam is considered difficult and only approximately 10% of eligible candidates pass in a given year. Of the 225 candidates who wrote the exam in April 2011 (the last year for which data has been posted) and were in a position to pass all four papers, only 23 passed. Statistics posted by CIPO show that the pass rates have been decreasing over the last several years.

The proposed changes increase the amount the amount of experience required to apply to write the exam from 12 months to 24 months. The proposed requirements also allow for recognition of foreign experience as a patent agent and the experience of patent examiners.

More flexibility for scheduling the exam are being introduced, including removing the requirement that the exam only be held once a year in April but allows the exams to be held any time during the year.

The proposed changes remove the ability to receive a refund of the examination fee if a candidate decides not to write the exam – last minute cancellations will no longer receive refunds.

Candidates planning on writing the patent exams in April 2013 will do so under the current rules even if the new rules come into force before April under the transition provisions. The next set of patent agent exams will be held on April 23 to 26, 2013.

Trade-mark Agents

More significant changes are being proposed for the registration of trade-mark agents. Currently, under the Trade-mark Rules, any lawyer who has practiced in the area of Canadian trade-mark law and practice for more than 24 month can apply to be a trade-mark with only an affidavit setting out the experience – no exam is required.

Under the proposed changes, everyone, including lawyers, will have to write the trade-mark examination.

The proposed rules expand the type of experience eligible for writing the exam to include foreign experience and working as an examiner at CIPO. The changes maintain the requirement for 24 months of experience in trade-mark law and practice.

As with the patent agent exam, the proposed changes provide for more flexibility in the scheduling of the exam. Currently, the trade-mark exam is held once a year in October but under the proposed rules can be held any time during the year.

Under the proposed rules, it appears that trade-mark agents who were exempted from writing the exam under the current rules will be grandfathered in the new regime. Although lawyer/agents who did not write the exam, will likely have to pass the exam in order to reinstate their status if they miss a renewal deadline.

In past years, the trade-mark agent examination has contained a first part focused on pre-advertisement issues and a second part focused on post-advertisement issues. For each part, the candidate had three hours. To pass, a candidate needs at least 65% on each part.

Apply Now

If you are a lawyer practicing in the area of trade-marks and currently meet the requirements under the Trade-marks Regulations, you should consider applying now before the new regulations come into force.

Applications for the 2013 patent agent examinations must be completed by November 30, 2012 to meet this year’s deadline. This will likely be the last year with the patent exams in their current form.

The proposed changes will strengthen the qualifications of patent and trade-mark agents in Canada but will likely be frustrating for candidates trying to obtain these qualifications.

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