The following scenario and analysis consider the scope of practice of non-agents, including non-agent lawyers, as well as whether and when applicants are entitled to represent themselves.
By default, this analysis explores what is exclusively in the scope of practice of licensees and it helps distinguish between the Patent Rules and Trademarks Regulations – which are administered by CIPO – and the provisions of the CPATA Act – which are administered by CPATA.
The Scenario
There are a few scenarios we can consider when thinking about scope of practice:
- whether a non-agent lawyer or other representative is entitled to represent an applicant before CIPO;
- whether an applicant or opponent can represent themselves before the Office of the Registrar of Trademarks or the Trademarks Opposition Board.
For clarity, the Patent Rules and the Trademarks Regulations set out who is entitled to appear before CIPO, the Office of the Registrar of Trademarks and the Trademarks Opposition Board on behalf of an applicant or opponent. In contrast, the CPATA Act sets out what constitutes unauthorized practice.
The Rules
The CPATA Act sets out what constitutes unauthorized practice.
Unauthorized representation before Patent Office
70 (1) Subject to subsection (2) and the regulations, a person must not represent another person in the presentation and prosecution of applications for patents or in other business before the Patent Office.
Exception
(2) Subsection (1) does not apply to a patent agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.
Unauthorized representation before Office of the Registrar of Trademarks
71 (1) Subject to subsection (2) and the regulations, a person must not represent another person in the presentation and prosecution of applications for the registration of trademarks or in other business before the Office of the Registrar of Trademarks.
Exception
(2) Subsection (1) does not apply to a trademark agent whose licence is not suspended, to legal counsel who is providing legal services as authorized by law or to a person who is part of a class of persons exempted under the regulations.
The Patent Rules provide that an applicant may appoint an agent to represent them, but they generally do not require that an applicant do so (with some exceptions, noted below).
Power to appoint patent agent
27 (1) An applicant for a patent, a patentee or other person may appoint either one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of a patent or an application for a patent.
The Patent Rules also provide that where there are joint applicants in respect of a patent, one applicant can be appointed as their common representative.
Power of joint applicants to appoint common representative
26 (1) If, in respect of an application for a patent, there are joint applicants, one applicant may be appointed by the other applicants as their common representative
Power of joint patentees to appoint common representative
(2) If, in respect of a patent, there are joint patentees, one patentee may be appointed by the other patentees as their common representative.
The Patent Rules provide for three scenarios where it is mandatory that a patent agent be appointed:
Mandatory appointment of patent agent
27 (2) An applicant for a patent must appoint one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of their application for a patent if
(a) the application is filed by a person other than the inventor;
(b) there is more than one inventor and the application is not filed jointly by all of the inventors; or
(c) a transfer, in whole or in part, of the application has been recorded by the Commissioner under section 49 of the Act.
The Trademarks Regulations also do not require an applicant to appoint an agent.
The Trademarks Regulations do, however, prohibit anyone who is not a trademark agent from representing an individual before the Office of the Registrar of Trademarks (and, by extension, the Trademarks Opposition Board (TMOB) acting on behalf of the Registrar in opposition proceedings and section 45 proceedings).
The exceptions for non-agent representation – i.e. what a non-agent is entitled to do on behalf of an applicant – are set out in subregulation 25(3) and authorized in subregulation 25(4).
Persons authorized to act
25(1) Subject to subsection (4), in any business before the Office of the Registrar of Trademarks, a person may be represented by another person only if that other person is a trademark agent.
Cases involving trademark agents
(2) Subject to subsections (2) and (3), in any business before the Office of the Registrar of Trademarks in respect of which a person has appointed a trademark agent
(a) the person must not represent themselves; and
(b) no one other than the trademark agent, if that agent resides in Canada, or an associate trademark agent appointed by that trademark agent, is permitted to represent that person.
Exceptions
(3) A person that has appointed a trademark agent may represent themselves for the purpose of
(a) filing an application for the registration of a trademark, an application for international registration referred to in sections 98 to 100 or a transformation application referred to in section 147;
(b) paying a fee;
(c) giving notice under section 23;
(d) renewing the registration of a trademark under section 46 of the Act; or
(e) making a request or providing evidence under section 48 of the Act.
Exceptions
(4) With respect to any business referred to in paragraphs (3)(a) to (e), a person may be represented by another person authorized by them, whether or not that other person is a trademark agent.
CPATA’s Guidance
As a general rule, an applicant can represent themselves before CIPO and/or the Office of the Registrar of Trademarks.
An exception to that general rule is seen in subsection 27(2) of the Patent Rules, which provide that an agent must be appointed if any of the following apply:
- the application is filed by a person other than the inventor;
- there is more than one inventor and the application is not filed jointly by all of the inventors; or
- a transfer, in whole or in part, of the application has been recorded by the Commissioner under section 49 of the Act.
No such mandatory appointment rules are found in the Trademarks Regulations.
The Trademarks Regulations do not prohibit an applicant from representing themselves before the TMOB provided they have not appointed an agent, nor do they require an applicant to appoint an agent. The Regulations do, however, as noted above, have rules with respect to what an applicant may do themselves in the event they have appointed an agent.
In effect, the Patent Rules determine who can appear before CIPO on behalf of an applicant and the Trademarks Regulations determine who can appear before the TMOB.
The CPATA Act, on the other hand, sets out what would be considered unauthorized practice. The CPATA Act at sections 70 and 71 have carved out exceptions for legal counsel providing legal services as authorized by law or for a person who is part of a class of persons exempted under the regulations. This does not mean, however, that they are necessarily entitled to appear before CIPO and/or the TMOB – entitlement to appear on behalf of an applicant before CIPO and/or the TMOB is determined by CIPO and the governing Patent Rules and Trademarks Regulations.
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