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Prior Experience Assessment

In this policy:
  1. “Applicant” means an individual who has applied to the College to be a Patent Agent or Trademark in Training.
  2. “Agent” means an individual registered with the College as a Patent Agent or Trademark Agent;

Policy

The College’s registration program ensures individuals applying to write the qualifying examinations have completed the required 24-month supervised training requirement. Applicants who have not completed their experience with a Class 1 Licensee in Canada may apply to the Registrar to have some or all of their prior training recognized toward the 24-month training requirement. Applicants must demonstrate how their prior experience provided them with the competencies required to prepare, present and prosecute patent or trademark applications before the Canadian Intellectual Property Office. To be eligible for consideration, prior experience must have been completed either:
  1. Under the supervision of a registered patent or trademark agent/attorney who is engaged in or has substantial experience in preparing, presenting and prosecuting patent or trademark applications in the jurisdiction in which they are registered, if the applicant was not registered themselves in that jurisdiction; or
  2. As a registered patent or trademark agent/attorney in another jurisdiction.
When evaluating an applicant’s request, the Registrar will consider:
  • The length, recency, nature, scope, complexity, level of responsibility and diversity of the applicant’s experience;
  • The effect of employment interruptions or changing assignments on the applicant’s retention of, and ability to build upon, the experience gained;
  • The degree of supervision by, and guidance of registered patent or trademark agents/attorneys; and
  • The relevance of the non-Canadian experience to the competencies required to prepare, present and prosecute applications before the Canadian Intellectual Property Office.
Upon reviewing the prior experience, the Registrar may take one of the following actions:
  1. Grant full or partial credit towards the 24-month training requirement. If the full 24-month training period is not recognized, a decision with reasons will be provided which will indicate how many additional months of training is required under the supervision of an approved Class 1 Licensee (training supervisor), and the areas in which the experience should be focussed, and will include instructions for appealing the decision to the Registration Committee; or
  2. Deny recognition of the 24-month training requirement. In this case, a decision with reasons will be provided with instructions for appealing the decision to the Registration Committee; or
  3. Request additional information if the Registrar was unable to render a decision based on the information provided. Upon receipt the Registrar will reconsider the application.

PROCEDURES

  1. An individual seeking credit for prior experience will submit a request for the recognition of that prior experience with their Agent in Training (Class 3) Application form and the following supporting documentation:
    1. A letter from the applicant, setting out:
      1. the specific period of the applicant’s practice experience;
      2. a description of each practice setting;
      3. the relevance of the applicant’s practice experience to the competencies identified in Appendix A;
      4. names and addresses of all employers, position title, and a technical outline of the nature of the duties and responsibilities associated with each position;
      5. Periods of absence from employment and the reasons for them.
    2. If registered with another jurisdiction, an original Certificate of Standing from the governing body sent directly from the governing body to the Director of Registration1.
    3. Original letters of attestation from one or more referees, sent directly to the Director of Registration2, verifying the applicant’s experience in that jurisdiction and how it relates to the to the competencies identified in Appendix A.
    4. Official transcripts from any post-secondary institutions where the applicant obtained training or education in the areas listed in Appendix A, if applicable. The transcript must be sent directly from the academic institution to the Director of Registration1. If available, the applicant should also request that the academic institution submit course outlines or syllabi for the courses that demonstrate learning the competencies in Appendix A. If the applicant is unable to request an original transcript be sent directly from the academic institution to the Director of Registration, a credential authentication report must be sent directly from an approved organization3 to the Director of Registration.
    5. If the applicant is unable to provide official documentation due to exceptional circumstances such as war, natural disaster or personal prosecution, but who demonstrates efforts, although unsuccessful, to obtain official documentation may provide alternative evidence to the Registrar, which may include but is not limited to signed affidavits and documentary evidence from academic instructors.
  2. Registration staff will acknowledge receipt of the request and will follow up with applicants if documentation or information is missing from their submission, or if additional documentation or information is required for the Registrar’s review.
  3. Registration staff will prepare completed request for the Registrar’s review and decision.
  4. The Registrar will consider the application and render a decision.
  5. The College will provide the Registrar’s written decision to the applicant and will provide instructions for appealing the decision to the Registration Committee should the Registrar decide to deny the recognition of prior experience or grant partial recognition of prior experience.

Related REGISTRAR’S policies

Appendix A

Prior experience submissions should reflect how the following skills, practices and systems were developed for either prior trademark agent/attorney experience or prior patent agent/attorney experience:

Trademark Competencies:

  1. Applications
  2. Office actions
  3. Availability
  4. Registrability
  5. Opposition proceedings
  6. Post-Registration (Section 45 proceedings, renewals, transfers etc.)
  7. Official marks
  8. Certification marks
  9. Chain of title
  10. Distinguishing guises
  11. Ethics
  12. Licensing
  13. Infringement
  14. Passing off
  15. Foreign Protection
  16. The Madrid Protocol and the International Regulation System
  17. Knowledge of the Canadian Trademark Act, Trademark Regulations, and Trademarks Examination Manual (TEM)
  18. Knowledge of the College of Patent Agents and Trademark Agents Act, Regulations, By-laws and Policies

Patent Competencies:

  1. Understanding client disclosure
  2. Analysis of prior art relevant to the invention
  3. Identification of points of invention of the client’s disclosure
  4. Preparing a patent application
  5. Legal, analytical and knowledge competencies required to deal with validity issues respecting patents issued in Canada.
  6. Legal, analytical and knowledge competencies required to maintain and prosecute a patent application in Canada, with primary emphasis on Patent Office Practice and responding to examiners’ reports using appropriate form and content
  7. Legal, analytical and knowledge competencies required to manage claim infringement issues respecting patents issued in Canada.
  8. Knowledge of the Canadian Patent Act, Patent Rules, and the Manual of Patent Office Practice (MOPOP)
  9. Knowledge of the College of Patent Agents and Trademark Agents Act, Regulations, By-laws and Policies
  10. Basic skills of patent agency, demonstrated knowledge of important principles of patent law and practice, and practical issues encountered in practice, such as but not limited to:
    1. Reissuance and re-examination of a patent;
    2. Unity of invention and divisional practice;
    3. Final actions and review of rejected applications by the Commissioner;
    4. Issues relating to requisitions and time limits;
    5. Administrative procedures such as maintenance fees and national entry;
    6. Ownership issues such as assignments, legal title and inventorship;
    7. Deemed abandonment and reinstatement;
    8. The Patent Cooperation Treaty;
    9. International applications and international search and examination;
    10. Foreign practice as it relates to advising a client about a Canadian application; and
    11. Complementary protection, such as copyrights and industrial designs.
1. Any documents that are not in English or French must be translated by a Certified Translator. The Certified Translator must send both the original and translated copies to the Director of Registration.
2. Letters of attestation should be in English or French or translated into one of those languages by a Certified Translator. The Certified Translator must send both the original and translated copies to the Director of Registration and sent as an email attachment to registration-inscription@cpata-cabamc.ca
3. Approved organizations must be members of the Alliance of Credential Evaluation Services of Canada. Visit https://canalliance.org/en/ for a list of approved organizations.