The CBA’s Intellectual Property Law Section took the opportunity in August to comment on a federal consultation paper on establishing a governance framework for patent and trade-mark (IP) agents. This followed on their June submission on a proposed code of conduct for IP agents.
The consultation paper asked a series of questions, which the IP Section grouped by theme: governance models, disciplinary process and conflicts.
Before choosing a governance model, the Section says, it’s important to define the objectives of the regulatory framework. When it comes to regulated professions, the Section argues that the primary objective should be to serve and protect the public interest.
[E]ntities that regulate their members in the public interest should be distinguished from those that advocate for the interests of their members. In the legal community, this distinction characterizes the role of law societies and bar associations…. The CBA Section believes that modernization of the IP agent profession should be guided by the same principles.
In keeping with its public interest mandate, the CBA Section recommended the governing body include elected representatives of the profession (including lawyer and non-lawyer IP agents) and appointed members of the public who are not part of the IP community.
The Section noted that the IP agent community has a long and distinguished history in Canada working in collaboration with the legal community to advance the highest standards of practice, which currently include rigorous statutory admission requirements for new agents, an existing code of ethics, an errors and omissions insurance regime, and a robust continuing professional development program. Given the maturity of the IP agent community, the Section recommended a self-governance model, provided that appropriate regulatory objectives are set, that a governing body with appropriate accountabilities is established; that scope of practice issues are addressed and that potential conflicts between overlapping regimes for lawyer agents are resolved.
The Section also recommends “measures of public accountability” including an obligation to provide annual reports, Ministerial oversight, and access to judicial review of decisions.
The disciplinary process presents unique issues since many IP agents are also lawyers who are governed by law societies.
For general purposes, however, it recommends that disciplinary remedies should include letters of reprimand, conditions or restrictions on practice, fines, suspensions and disqualification from practice and/or removal from the patent or trade-mark register.
Where there is a direct conflict “the law society’s code of conduct should prevail with respect to lawyer agents,” but there should also be a mechanism for communication between the two bodies “to clarify the appropriate forum where there are overlapping issues or where a law society determines that it is not a matter within its jurisdiction.