Canadian Lawyer

w w w . C A N A D I A N L a w y e r m a g . c o m A p r I L 2 0 1 5 39 rademark and patent agents often work side by side with their lawyer colleagues in intellectual property prac- tices and law firms, but unlike lawyers they are not self-regulated. While patent and trademark agents often have scientific backgrounds or professional designations as engineers, they aren't bound by the same requirements for continuing professional development and other professional and ethical regulations as lawyers are. Instead, patent and trademark agents answer to a federally regulated body — the Canadian Intellectual Property Office. To address this difference, a "Modernizing the IP Community" initiative was launched in June 2013 as a collaborative effort between CIPO and representatives from the IP community. Over several months, working groups of CIPO officials and members of the IP profession undertook an in-depth analysis of issues related to: • Improving the maintenance and over- sight of the register/list of patent and trademark agents; • Improving the qualification and main- tenance of patent and trademark agents on the register to ensure only the most prepared candidates write the qualifying exams and that successful agents con- tinue to update their skills throughout their careers; and • Creating a values and ethics framework for IP agents to support the IP profes- sion and ensure the highest value of service to innovators and businesses. The result was a final report and 11 recommendations designed to enable CIPO to improve services to its clients and ensure patent and trademark agents are equipped to address the needs of Canadian businesses and innovators. CIPO closed its consultation on the issues in December and while it's unknown what they will ultimately do with the com- ments they've received, most involved agree it's time to update, while others say some aspects of change are still missing. Some of the proposals would require regulatory amendments, which might be difficult to accomplish in an election year, but IP professionals are watching the devel- opments closely. "I think generally, an over- haul of the patent and trademark agent qualification and maintenance procedures is long overdue," says Jenna Wilson, a part- ner with IP boutique Dimock Stratton LLP. Wilson practises primarily as a patent agent and was a member of the IP mod- ernization group working with CIPO. If the recommendations were implemented she would be dealing with the profession- al obligations of both the Law Society of Upper Canada and CIPO (or whatever the regulator would be). A past member of the Canadian Patent Agent Examining Board, she currently serves as its liaison with the Intellectual Property Institute of Canada. While the idea to revamp the patent and trademark agent register and list with more useful information for the public seems an obvious improvement, bigger changes, however, would be the introduction of L E g A L r E p o rt \ I N t E L L E C t u A L p r o p E rt y Pete Ryan The modern IP family Is it the dawning of a new age for patent and trademark agents? By Jennifer Brown T

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