College of Patent Agents and Trademark Agents Act (S.C. 2018, c. 27, s. 247)

Marginal note:Notice to Registrar

• 58 (1) The Discipline Committee must provide a copy of every decision made under section 57 to the Registrar.

• Marginal note:Notice to licensees — revocation or suspension

  (2) The Registrar must notify all licensees of every decision made under subsection 57(3) to revoke or suspend a licence.

• Marginal note:Notice to licensees — dismissal of application

  (3) The Registrar must, if requested by the licensee who was the subject of an application to the Discipline Committee that was dismissed, notify all licensees of the dismissal.

Marginal note:Appeal to Federal Court

59 A party to an application may appeal a decision of the Discipline Committee made under section 57 to the Federal Court within 30 days after the day on which the decision is made.

Marginal note:Filing of decision in Federal Court

• 60 (1) The College may file in the Federal Court a certified copy of a final decision of the Discipline Committee made under section 57 that is not subject to appeal.

• Marginal note:Effect of filing

  (2) On the certified copy being filed, the decision becomes and may be enforced as an order of the Federal Court.

Marginal note:Suspension lifted if conditions met

• 61 (1) If the Discipline Committee suspends a licence under paragraph 57(3)(c) until specified conditions are met, the Committee must, on application by the licensee, lift the suspension if the Committee is satisfied that the conditions are met.

• Marginal note:Ex parte application

  (2) An application under subsection (1) may be made ex parte.

• Marginal note:Notice to Registrar

  (3) The Discipline Committee must provide written notice to the Registrar as soon as feasible after it lifts the suspension.

• Marginal note:Revocation by Registrar

  (4) The Registrar may, at any time after the second anniversary of the day on which a licence is suspended under paragraph 57(3)(c) until specified conditions are met and after giving at least 30 days’ written notice to the licensee, revoke the licence if the suspension has not been lifted under subsection (1).

• Marginal note:Notification

  (5) The Registrar must notify the licensee in writing as soon as feasible after their licence is revoked.

Marginal note:Amounts paid as penalty

62 Amounts paid to the College as a penalty under paragraph 57(3)(f) may be expended only for the purpose of supporting the mental health of licensees.

Practice and Procedure

Marginal note:Rules

63 The Investigations Committee and the Discipline Committee may make rules respecting the practice and procedure before them and rules for carrying out their work and for the management of their internal affairs.

Confidentiality

Marginal note:No waiver

64 For greater certainty, the disclosure of privileged information to the College, including to the Investigations Committee or to the Discipline Committee, or to an investigator does not constitute a waiver of the privilege.

Marginal note:No disclosure

• 65 (1) Subject to subsection (2), the following persons must not disclose a complaint received by the College or any privileged or confidential information obtained in the course of an investigation or proceeding under this Act:

  • (a) a current or former director of the Board;

  • (b) a current or former member of the Investigations Committee or of the Discipline Committee;

  • (c) the Registrar or a former Registrar;

  • (d) a current or former investigator;

  • (e) a current or former officer, employee, agent or mandatary of the College;

  • (f) a person who is or has been engaged by the College.

• Marginal note:Exceptions

  (2) A person referred to in subsection (1) may disclose a complaint or information referred to in that subsection if

  • (a) the disclosure is for the purpose of permitting the exercise of powers or the performance of duties or functions under this Act, including in connection with a proceeding under this Act;

  • (b) the information is available to the public;

  • (c) the disclosure is to the person’s legal counsel;

  • (d) the person has obtained the written consent of all persons whose rights or interests might reasonably be affected by the disclosure; or

  • (e) there are reasonable grounds to believe that

    • (i) there is a significant risk of harm to any person if the disclosure is not made, and

    • (ii) making the disclosure is likely to reduce the risk.

• Marginal note:Testimony and production

  (3) A person referred to in subsection (1) is not required, in any proceeding other than a proceeding under this Act,

  • (a) to give testimony on a complaint received by the College or on any privileged or confidential information that the person is prohibited from disclosing under that subsection; or

  • (b) to produce such a complaint or any document or other thing that contains any such privileged or confidential information.

Marginal note:Application for order authorizing disclosure

• 66 (1) The College may apply to the Federal Court for an order authorizing the disclosure of confidential information that would be prohibited by section 65 to a law enforcement agency or other public authority.

• Marginal note:Limitation

  (2) The Court must not make an order if the information is privileged or if it was obtained by the College as a result of a person making, in the course of an investigation or proceeding under this Act, an oral or written statement that may tend to incriminate the person.

• Marginal note:Documents and other things

  (3) An order that authorizes the disclosure of information may also authorize the delivery of documents or other things that are in the possession of the College and that relate to the information.

Prohibitions and Offences

Marginal note:Claiming to be patent agent

67 A person, other than a patent agent whose licence is not suspended, must not

• (a) use the title “patent agent” or a variation or abbreviation of that title, or any words, name or designation, in a manner that leads to a reasonable belief that the person is a patent agent; or

• (b) represent themselves, in any way or by any means, to be a patent agent.

Marginal note:Claiming to be trademark agent

68 A person, other than a trademark agent whose licence is not suspended, must not

• (a) use the title “trademark agent” or a variation or abbreviation of that title, or any words, name or designation, in a manner that leads to a reasonable belief that the person is a trademark agent; or

• (b) represent themselves, in any way or by any means, to be a trademark agent.

Marginal note:Offence and punishment — section 67 or 68

• 69 (1) Every person who contravenes section 67 or 68 is guilty of an offence and liable on summary conviction to a fine of not more than

  • (a) $25,000 for a first offence; and

  • (b) $50,000 for a second or subsequent offence.

• Marginal note:Imprisonment precluded

  (2) If a person is convicted of an offence under subsection (1), no imprisonment is to be imposed as punishment for the offence or in default of payment of any fine imposed as punishment in relation to the offence.

• Marginal note:Due diligence

  (3) A person is not to be found guilty of an offence under subsection (1) if they establish that they exercised due diligence to prevent the commission of the offence.

Marginal note: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.

• Marginal note: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.

Marginal note: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.

• Marginal note: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.

Marginal note:Regulations

72 The Governor in Council may make regulations exempting an activity, a class of persons or an activity that is performed by a class of persons from the application of subsection 70(1) or 71(1).

Marginal note:Offence and punishment — section 70 or 71

• 73 (1) Every person who contravenes section 70 or 71 is guilty of an offence and liable on summary conviction

  • (a) for a first offence, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months, or to both; and

  • (b) for a second or subsequent offence, to a fine of not more than $50,000 or to imprisonment for a term of not more than six months, or to both.

• Marginal note:Due diligence

  (2) A person is not to be found guilty of an offence under subsection (1) if they establish that they exercised due diligence to prevent the commission of the offence.

Marginal note:Injunction

74 On application by the College, if the Federal Court is satisfied that a contravention of section 67, 68, 70 or 71 is being or is likely to be committed, the Court may grant an injunction, subject to any conditions that it considers appropriate, ordering any person to cease or refrain from any activity related to that contravention or ordering the person to take any measure that the Court considers appropriate.

By-laws and Regulations

Marginal note:By-laws

• 75 (1) The Board may make by-laws respecting any matter necessary to carry on the activities of the College, including by-laws

  • (a) respecting the election of directors, the terms of elected directors and their removal;

  • (b) establishing ineligibility criteria for the purposes of subparagraphs 14(f)(ii) and 17(h)(iii);

  • (c) respecting the filling of vacancies among elected directors;

  • (d) respecting the remuneration and expenses of directors;

  • (e) respecting the election and removal of the Chairperson of the Board and the Chairperson’s duties;

  • (f) respecting the duties and functions of the Board and the meetings of the Board, including quorum;

  • (f.1) respecting the creation of committees;

  • (g) respecting the conflicts of interest of directors, members of the Investigations Committee and members of the Discipline Committee;

  • (h) respecting the duties and functions of the Registrar;

  • (i) respecting the maintenance of the Register of Patent Agents and the Register of Trademark Agents and information that is required to be included in those Registers;

  • (i.1) defining the terms “professional misconduct” and “incompetence” for the purposes of this Act;

  • (j) respecting the classes of firm in connection with which a licensee may work as a licensee;

  • (k) fixing the annual fee — or the manner of determining the annual fee — that is to be paid by licensees;

  • (l) fixing any other fee — or the manner of determining any other fee — that is to be paid by licensees, including any fee for the late payment of another fee;

  • (m) establishing the time within which and the manner in which any fees or other amounts are to be paid;

  • (n) respecting the information and documents that licensees must provide to the College;

  • (o) respecting continuing professional development requirements for licensees;

  • (p) respecting requirements for licensees to do pro bono work;

  • (q) respecting the professional liability insurance that licensees are required to maintain;

  • (r) exempting licensees from the requirement to be insured against professional liability;

  • (s) respecting the suspension and revocation of licences under section 35;

  • (t) respecting the surrender of licences and applications for a surrender;

  • (t.1) prescribing the circumstances in which the Registrar must not dismiss a complaint or the reasons for which the Registrar must not dismiss a complaint;

  • (t.2) respecting the form and manner in which the Registrar may dismiss a complaint; and

  • (u) respecting the notification of licensees under section 38.

• Marginal note:Different treatment

  (2) The by-laws made under paragraphs (1)(j) to (t) and (u) may distinguish among classes of licensees or licences.

• Marginal note:For greater certainty

  (3) For greater certainty, by-laws made under paragraphs (1)(i.1) to (u) are regulations for the purposes of the Statutory Instruments Act.