Third Party Proposal to Aid in Unauthorized Practice
It has come to the attention of the College that a third party or “service aggregator” may be approaching licensees stating that they are looking for a patent agent or trademark agent in Canada. While this may not be unusual, concerns arise with what follows: the third-party states they will file, pay for, and prosecute their own clients’ applications and respond to their own clients’ office actions. The third party proposes that the licensee be listed as the agent before CIPO, but that the third party will respond to office actions, bypassing the agent. This appears to be a request to “borrow” or “rent” the trademark agent’s licence to file and prosecute trademark applications on behalf of the company’s clients. To accomplish this, they would effectively pose as the trademark agent, or as the agent’s assistant making submissions under the trademark agent’s name.
The third party concludes by noting the fees they would pay the licensee to effectively list them as the agent for their client’s applications while diverting work that can be completed only by a Class 1 licensee to the third party, who will proceed unsupervised by the licensee.
The Trademarks Regulations provide that when a trademark agent is appointed, only the appointed agent can prosecute a trademark application (see section 25 of the Trademarks Regulations). The Patent Rules provide that when a patent agent is appointed or when an appointment of a patent agent is required, only a patent agent may prosecute a patent application (see subsection 36(1) of the Patent Rules).
The College of Patent Agents and Trademark Agents Act (the “Act”) prohibits a person from representing another person in the presentation and prosecution of patents before the Patent Office (s. 70) and/or in the presentation and prosecution of applications for the registration of trademarks or in other business before the Office of the Registrar of Trademarks (s. 71), except for agents whose licences are not suspended, legal counsel providing legal services as authorized by law or a person who is part of a class of persons exempted under the College of Patent Agents and Trademark Agents Regulations.
The Act makes contravening this prohibition (and therefore engaging in unauthorized practice) an offence punishable by summary conviction or a fine or imprisonment (s. 73).
The Criminal Code of Canada provides anyone who conspires with another person to commit an offence punishable on summary conviction – a possible example being conspiracy to contravene the prohibition on non-agents from prosecuting office actions – guilty of an offence punishable on summary conviction (s. 465(1)(d)). A licensee caught up in a scheme where a person is breaching sections 70 or 71 of the CPATA Act, for example, could also be held responsible for the offence set out at section 73 of the CPATA Act, and may engage application of the Criminal Code.
The Code of Professional Conduct (the “Code”) rules help prevent a licensee from engaging in aiding or assisting with unauthorized practice, which could result from an agent in this scenario agreeing to engage in the third party proposal summarized above.
This analysis focuses on a licensee’s obligation to assist in preventing unauthorized practice, the prohibition on aiding or assisting a person engaging in unauthorized practice and the obligation of licensees to supervise staff, assistants, agents in training and others under the Code. Attention is also given to the duty to avoid conflicts of interest set out in the Code.
Part 10 of the Code addresses unauthorized practice and sets out as the principle of that section that
An agent owes a duty to assist in preventing any unauthorized practice, including any practice not authorized under the relevant intellectual property statutes or by the applicable provincial law society.
Rule 10-2 of the Code contains the express prohibition on an agent from aiding or assisting in unauthorized practice and states
An agent must not aid or assist a person who is practicing as a patent agent or a trademark agent in an unauthorized manner.
The Code also sets out that licensees must supervise their staff. Rule 1-3 reads
An agent must assume complete professional responsibility for all agency services that they provide and maintain direct supervision over staff and assistants such as agents in training, students, clerks and legal assistants to whom they may delegate particular tasks and functions.
Last, a licensee has an obligation to avoid conflicts of interest under Rule 3 of the Code. The principle to Part 3: Conflicts provides that
In each matter, an agent’s judgment and loyalty to the client’s interest must be free from compromising influences.
The Commentary to Rule 3 states that
An agent must examine whether a conflict of interest exists not only from the outset but throughout the duration of a mandate because new circumstances or information may establish or reveal a conflict of interest.
There are also practical risks if a licensee consents to having a third party appoint them as agent on random trademark or patent applications, or respond to office actions without their involvement, besides actual breaches of the Code and possible conspiracy to commit an offence or an actual offence under the CPATA Act:
- potential loss of insurance coverage for errors and omissions.
- an insurer may consider this type of practice arrangement falls within an exception for fraud, dishonesty, or negligence.
- potential misdirection of the licensee’s own clients’ CIPO correspondence if the third-party attempts to direct correspondence to their own address, which has an added risk of breach of confidentiality in patent applications.
- possible financial management issues should CIPO remit fees under the Service Fees Act, since fee remissions are paid to the appointed agent.
Licensees are prohibited from assisting in unauthorized practice by the “Code… If a third party is purporting to involve an agent in the prosecution of a trademark application or patent application only to the extent that the agent appears as the appointed agent with CIPO, the licensee may assist in unauthorized practice.”
The duty on a licensee is two-fold: a licensee must assist in preventing unauthorized practice, and a licensee must not aid or assist a person engaging in unauthorized practice. A licensee, therefore, should not engage in any practice or enter into a practice arrangement where they are appointed as the agent before CIPO but otherwise have nothing to do with an application or prosecution.
Licensees are permitted to delegate tasks to their staff, such as authorizing their staff to respond to CIPO on their behalf, but the licensee must supervise their staff and the licensee takes on the professional responsibility (read: ethical obligations) for their staff acting on their behalf. This means that a licensee may be held accountable for actions taken by their staff.
Note again that the College of Patent Agents and Trademark Agents Act (the “Act”) takes unauthorized practice seriously, making unauthorized practice an offence which could result in a substantial fine or imprisonment (see section 73) and the Criminal Code of Canada makes it an offence to conspire to commit an offence.
The duty to evaluate whether a conflict of interest exists is ongoing through the duration of the agent-client relationship and often beyond that. In the proposed scenario it is unclear how the licensee could perform that ongoing evaluation if they are listed as the agent for the application but have no control over filing the application or its prosecution.
Licensees should know the ethical risks of this proposal and the practical risks and potential legal implications.
Licensees should be mindful of practice arrangements that carry these possible risks. Licensees bear an ethical responsibility to ensure they are not entering into a practice arrangement where they are aiding or assisting with unauthorized practice. Throughout this article, there are several legal and other risks certain practice arrangements may attract.
None of the above information is intended to be legal advice, rather this analysis sets out possible rules that could be engaged if a licensee aided or assisted in unauthorized practice.
Ultimately each Licensee must decide what the correct course of action is to adhere to their professional obligations. Every circumstance is unique and it is up to the licensee to exercise their own professional judgement. Through the Ethics Inquiry process we are happy to help interpret the Code as part of the process of risk-assessment and ethical analysis.
We look forward to receiving more inquiries and providing more guidance to licensees. It helps us identify areas where further information or analysis might be instructive and it will help to inform our consultation on the Code, which will roll out in early 2023.