Training Survey – Trainees

Technical competency development often occurs through workplace-based learning activities, such as taking part in team-based work (e.g., meetings, consultations), engaging with client files under supervision, performing tasks with feedback, and reflection. These experiences are typically complemented by structured self-directed learning, formal instruction, observation of experienced professionals, and review of exemplar work. A suitable mix of approaches depends on the trainee’s stage of development and the nature of the work.

Rating instructions: This section uses a 6-point scale to reflect the range and depth of exposure a trainee is likely to have to each area during the supervised practice period.

Patent Agent Competencies

Demonstrating foundational knowledge includes developing familiarity with key sources and knowledge concepts that are fundamental to patent practice. (Refer to CPATA’s Technical Competencies for a list of relevant sources and knowledge concepts).

Developing a client-centred patent strategy includes the ability to:

• Identify a client’s needs and goals
• Assess the innovation context
• Identify, given a set of facts, available types of intellectual property protection
• Plan a patent search
• Interpret search results
• Define the scope and breadth of protection available in view of the prior art
• Outline, given a set of facts, the costs and benefits of patent protection
• Outline, given a set of facts, practical and strategic timelines
• Plan strategies for protection outside of Canada
• Identify, given a set of facts, limits on patent agent privilege

Drafting a patent application includes the ability to:

• Identify, given a set of facts, claim drafting objectives
• Draft claims, of multiple claim types, with proper scope, characteristics, and structure
• Describe an invention, including its embodiments and alternatives
• Plan the drawings that illustrate the features of an invention

Prosecuting a patent application includes the ability to:

• Analyze a patent family file history
• Assess the citability of prior art for anticipation and obviousness
• Respond to an office action
• Prepare substantive submissions to CIPO other than in response to an office action
• Amend independent or dependent claims, as appropriate
• Manage Canadian prosecution in the context of a global portfolio

Assessing validity includes the ability to:

• Identify, given a set of facts, validity issues beyond claim validity issues
• Construe claim terms for the purpose of assessing validity
• Assess the citability of a document of disclosure event for anticipation and obviousness
• Assess whether a claim is anticipated, given the prior art
• Assess wether a claim is obvious, given the prior art
• Assess the validity of a claim, for reasons other than anticipation or obviousness

Assessing infringement includes the ability to:

• Construe claim terms for the purpose of assessing infringement
• Identify, given a set of facts, potential acts of infringement
• Analyze a claim to determine infringement
• Identify, given a set of facts, who can or must assert infringement
• Assess wether one or more parties are liable for infringement
• Assess whether a party is liable for inducing infringement
• Identify, given a set of facts, defenses to an allegation of infringement
• Outline potentially available remedies for infringement

Trademark Agent Competencies

Demonstrating foundational knowledge includes developing familiarity with key sources and knowledge concepts that are fundamental to trademark practice. (Refer to CPATA’s Technical Competencies for a list of relevant sources and knowledge concepts).

Assessing the registrability of a trademark includes the ability to:

• Plan a trademark search
• Interpret search results
• Assess distinctiveness
• Assess likelihood of confusion
• Assess descriptiveness
• Assess entitlement to registration
• Identify, given a set of facts, potential areas of conflict with third parties
• Identify, given a set of facts, prohibited marks
• Identify, given a set of facts, potential technical objections

Developing a client-centered trademark strategy includes the ability to:

• Identify a client's needs and goals
• Identify, given a set of facts, available types of intellectual property protection, including types of trademarks
• Outline, given a set of facts, the costs and benefits of trademark protection
• Outline, given a set of facts, practical and strategic timelines
• Analyze situations involving trademark use
• Analyze situations invilving trademark ownership, licensing, or transfer of rights
• Assess a registration's vulnerability to invalidation
• Identify, given a set of facts, when a new application or an application extend a statement ogf goods or services is advisable
• Identify, given a set of facts, strategies for rendering a mark registrable
• Identify, given a set of facts, practical ways to manage a portfolio for domestic and international protection
• Identify, given a set of facts, limits on agent privilege

Prosecuting a trademark application includes the ability to:

• Analyze a trademark file history
• Classify goods and services
• Draft a statement of goods and services
• Respond to an office action
• Support the preparation and negotiation of consent and co-existence agreements
• Manage Canadian prosecution in the context of a global portfolio

Representing a client before the trademarks opposition board includes the ability to:

• Assess wether a registration is likely to be expunged or amended for lack of use
• Assess grounds of opposition
• Identify, given a set of facts, deficiencies in evidence
• Prepare formal requests
• Manage the collection, assessment, and preparation of evidence
• Conduct oral hearings, as appropriate
• Prepare representations
• Negociate settlements, as appropriate

CPATA's Professional Foundations document sets out the more universal professional competencies that support agents in practising safely, effectively, and sustainably. Supervised practice is intended to help trainees develop these competencies in real-world settings.

Supervised practice often provides other opportunities for professional growth, such as helping trainees apply knowledge in context, form their professional identity, connect with the professional community, and grow as reflective practitioners.

A well-structured experience helps trainees grow over time through broad exposure, increasing responsibility, consistent supervision, and regular check-ins. The following questions explore the supports and structures that enable this.

Ideally, a training record is maintained for every supervised practice experience. Common elements of a training record include a training plan, interim assessments, and a summative evaluation.

To express interest in being part of future resource development, or to share tools or resources for information purposes, please contact the Director of Registration, Jennifer Slabodkin, at registration-inscription@cpata-cabamc.ca.