When the terminology surrounding a particular area is conflicting, anything that can lend a little clarity to the situation is very welcome.
Take, for instance, the area of patents and trademarks: worldwide, the terms patent attorney, patent agent and patent lawyer are used almost interchangeably in some jurisdictions, but can mean quite different things in others. In Canada, many lawyers are also registered patent or trademark agents, but if they’re not, then they lack the authority to prepare and file patent or trademark applications.
Professionals and their regulatory bodies have a responsibility to contribute to public awareness on this issue – in their own and their clients’ best interests.
This is a point the CBA’s Intellectual Property Section made sure to emphasize in its submission to Innovation, Science and Economic Development Canada, which is, with the Canadian Intellectual Property Office, conducting consultations on the regulatory framework for patent and trademark agents.
The Section broke its submission into two parts – the first part, a commentary on a proposed code of conduct for patent and trademark agents, was sent in June. The second part, which will deal with the rest of the consultation paper, including the governance model and disciplinary process, is to follow at a later date.
The consultation paper posed two questions about the draft code of conduct – 1) Does the draft cover all of the right elements? and 2) Should the code of conduct or other applicable regulations clearly define what activities qualify as permitted practice? – to which Section Chair Mala Joshi replied respectively, not quite, and yes.
Pointing to a previous submission in which the Section voiced its concerns about the “unauthorized practice of law by non-lawyer patent and trademark agents,” Joshi said the Section was pleased to see the question addressed in the code of conduct, but notes that the wording in the French draft is clearer than in the English, and therefore recommends the English be reworded to say:
An agent owes a duty to assist in preventing the unauthorized practice of persons or entities. This includes practice not authorized under the relevant intellectual property statutes or by laws regulating the provision of legal services in Canada.
To underline the point, and to provide greater clarity, the Section recommends adding a specific prohibition against the unauthorized practice of law:
An agent must act within the scope permitted under the Patent Act and the Trademarks Act. An agent must take particular care to avoid providing advice and services that would amount to the practice of law, unless the agent is also authorized to practise law in a province or territory in Canada.
As well, a proposed change to Rule 9.1 would read, “An agent must not advertise services that amount to the practice of law, unless the agent is also authorized to practise law in a province or territory.”
As for clearly defining the activities that patent and trademark agents may carry out, Joshi writes, “the CBA Section has consistently advocated the importance of clearly defining what activities qualify as permitted practice in in front of the Patent Office or Trademarks Office. … A definition of permitted agent activities would … assist agents and encourage greater understanding by the public and by clients about the IP system in Canada.”
The Section also provides ISED and CIPO with an annotated copy of the proposed code to point out other areas where the wording may be clarified in order to more firmly draw the line between the work of an agent and the work of a lawyer.
“In conclusion, we thank ISED and CIPO for acknowledging the concerns expressed in our December 2014 submission,” Joshi writes. “We encourage you to strengthen these provisions to ensure that IP clients have the best protections possible in a modern regulatory framework and to advance the interest and understanding of the public in the Canadian IP system.”