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1 The following definitions apply in this schedule.
- agency services
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agency services means services, as described in section 27 or 30 of the Act, that are associated with the representation of a person. (services d’agent)
- profession
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profession means the profession of patent agent or trademark agentas those terms are defined in section 2 of the Act. (profession)
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3 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.
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COMMENTARY
An agent is held out as knowledgeable, skilled and capable in the subject matter of their agency. Accordingly, the client is entitled to assume that the agent has the ability and capacity to deal adequately with all agency matters to be undertaken on the client’s behalf. Competence of an agent is founded upon both ethical and applicable legal principles. Competence involves more than an understanding of agency legal principles. It involves an adequate knowledge of the practice and procedures by which such principles can be effectively applied. To ensure that they have that knowledge, the agent must keep abreast of developments in all areas of intellectual property law and practice in which the agent practises.
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10 An agent may disclose confidential information to the extent reasonably necessary to detect and resolve conflicts of interest arising from the agent’s change of employment or from changes in the composition or ownership of a firm, but only if the information disclosed does not compromise any privileged communication between the agent and their client or otherwise prejudice the client.
COMMENTARY
As a matter related to clients’ interests in maintaining a relationship with the agent of choice and protecting client confidences, agents in different firms may need to disclose limited information to each other to detect and resolve conflicts of interest, such as when an agent is considering an association with another firm, two or more firms are considering a merger or an agent is considering the purchase of a firm.
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The disclosure should be made to as few agents at the new firm as possible, ideally to just one agent of the new firm such as a designated conflicts agent. The information must always be disclosed only to the extent reasonably necessary in order to detect and resolve conflicts of interest that might arise from the possible new relationship.
As the disclosure is made on the basis that it is solely for the purpose of checking conflicts when agents are transferring between firms and for establishing confidentiality screens, the disclosure must be accompanied by an undertaking by the new firm to the former firm that it
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1 An agent must not act for a person if there is a substantial risk that the agent’s loyalty to or representation of that person would be materially and adversely affected by the agent’s own interest or the agent’s duties to another client, a former client or any other person (referred to in this Code as a “conflict of interest”), except as permitted under this Code.
COMMENTARY
As described in this Code, a conflict of interest exists if there is a substantial risk that an agent’s loyalty to or representation of a client would be materially and adversely affected by the agent’s own interest or the agent’s duties to another client, a former client or any other person. The risk must be more than a mere possibility. There must be a genuine, serious risk to the duty of loyalty or to client representation arising from the retainer. A client’s interests may be seriously prejudiced unless the agent’s judgment and freedom of action on the client’s behalf are as free as possible from conflicts of interest.
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The following are examples of conflicts of interest:
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(b)
an agent, an associate, a firm partner or a family member having a personal financial interest in a client’s affairs or in a matter in which the agent is requested to act for a client such as a partnership interest in a joint business venture with a client;
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(d)
an agent or their firm acting for a public or private corporation and serving as a director of the corporation; and
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COMMENTARY
Disclosure and Consent
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Following the required disclosure, the client can decide whether to give their consent. As important as it is to the client that the agent’s judgment and freedom of action on the client’s behalf not be subject to other interests, duties or obligations, in practice that factor may not always be decisive. Instead, it may be only one of several factors that the client will weigh when deciding whether to give the consent referred to in the rule. Other factors may include, for example, the availability of another agent of comparable expertise and experience, the stage that the matter or proceeding has reached, the extra cost, delay and inconvenience involved in engaging another agent and that agent’s lack of familiarity with the client and the client’s affairs.
Consent in Advance
An agent may be able to request that a client consent in advance to conflicts of interest that might arise in the future. As the effectiveness of such consent is generally determined by the extent to which the client reasonably understands the material risk that the consent entails, the more comprehensive the explanation of the types of future representations that might arise and the actual and reasonably foreseeable adverse consequences of those representations, the greater the likelihood that the client will have the requisite understanding. A general, open-ended consent will ordinarily be ineffective because it is not reasonably likely that the client will have understood the material risks involved. If the client is an experienced user of the agency services involved and is reasonably informed regarding the risk that a conflict of interest may arise, such consent is more likely to be effective, particularly if, for example, the client is independently represented by legal counsel in giving consent and the consent is limited to future conflicts unrelated to the subject of the representation.
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Implied Consent
In some cases consent may be implied rather than expressly granted. The concept of implied consent is applicable in exceptional cases only. Governments, chartered banks and entities that might be considered sophisticated consumers of agency services may accept that agents may act against them in unrelated matters if there is no danger of misuse of confidential information. The more sophisticated the client as a consumer of agency services, the more likely that an inference of consent can be drawn. The mere nature of the client is not, however, a sufficient basis upon which to assume implied consent. The matters must be unrelated, the agent must not possess confidential information from one client that could affect the agent’s representation of the other client and there must be a reasonable basis to conclude that the client has accepted that agents may act against it in such circumstances.
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4 When there is no dispute among the clients about the matter that is the subject of the proposed representation, two or more agents in a firm may act for current clients with competing interests and may treat information received from each client as confidential and not disclose it to other clients, if
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COMMENTARY
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In cases of concurrent representation agents must employ, as applicable, the reasonable screening measures to ensure non-disclosure of confidential information within the firm set out in the rule on conflicts arising from transfer between firms (see section 7).
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5 (1) Before an agent acts in a matter or transaction for more than one client, the agent must advise each of the clients that
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(3) When an agent has advised the clients as required by subsections (1) and (2) and the parties are content to have the agent act for them, the agent must obtain their consent and confirm that consent in a separate written communication to each client.
COMMENTARY
Even when all parties concerned consent, an agent must avoid acting for more than one client when it is likely that a contentious issue will arise between them or that their interests, rights or obligations will diverge as the matter progresses.
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(4) Except as provided in subsection (5), if a contentious issue arises between clients who have consented to a joint retainer
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7 (1) Subsections (2) to (4) apply when an agent transfers from one firm (“former firm”) to another (“new firm”) and the transferring agent or the new firm is aware at the time of the transfer or later discovers that
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COMMENTARY
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This rule treats as one firm such entities as a corporation with separate regional intellectual property departments and an interprovincial or international firm. The more autonomous each unit or office is, the easier it should be, in the event of a conflict, for the new firm to obtain the former client’s consent or to establish that it is in the public interest that the new firm continue to represent the client in the matter.
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(2) If the transferring agent actually possesses confidential information relevant to a matter respecting the former client that may prejudice the former client if disclosed to a member of the new firm, the new firm must cease representing its client in that same matter unless
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COMMENTARY
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For example, the intellectual property services units of a government, a corporation with separate regional legal departments or an interprovincial or international law firm or agency firm may be able to demonstrate that, because of its institutional structure, reporting relationships and function and the nature of its work and geography, relatively fewer measures are necessary to ensure the non-disclosure of client confidences. If it can be shown that, because of factors such as the foregoing ones, agents in separate units, offices or departments do not work together with other agents in other units, offices or departments, that will be taken into account in the determination of what screening measures are considered to be reasonable.
The guidelines that follow are intended as a checklist of relevant factors to be considered. Adoption of only some of the guidelines may be adequate in some cases, while adoption of them all may not be sufficient in others.
Guidelines on How to Screen for Conflicts of Interest and Measures to be Taken
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The new firm must document the measures for screening the transferring agent and the time when they were put in place — which should be done as soon as possible — and must advise all affected agents and support staff of the measures taken.
These Guidelines apply, with the necessary modifications, to situations in which a non-agent staff member leaves one firm to work for another and a determination is made by the new firm, before hiring that individual, as to whether any conflicts of interest will be created and whether they actually possesses relevant confidential information.
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COMMENTARY
Agents and Support Staff
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Certain non-agent staff members in a firm routinely have full access to and work extensively on client files. As such, they may possess confidential information about the client. If these staff members move from one firm to another and the new firm acts for a client opposed in interest to the client on whose files the staff members worked, unless measures are taken to screen the staff members, it is reasonable to conclude that confidential information may be shared. It is the responsibility of the agent and the firm to ensure that staff members — who may have confidential information that, if disclosed, could prejudice the interests of the client of the former firm — have no involvement with and no access to information relating to the relevant client of the new firm.
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(2) If an agent has been retained to prepare or to provide services relating to a patent application and the agent conceives an improvement or modification to an invention or a portion of an invention to be claimed in the application, such that the agent reasonably believes that they are a co-inventor and proposes to list themselves as a co-inventor, the agent must advise the client to obtain independent professional advice as to
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(3) When an agent has been retained to provide services relating to a trademark application and the agent is responsible for or contributes substantially to the creation of the trademark, the agent must advise the client to obtain independent professional advice as to
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5 An agent must take reasonable steps to advise the client of the cost of seeking or obtaining intellectual property protection, on the recommendation of the agent, in Canada or elsewhere.
COMMENTARY
An agent must provide to the client in writing, before or within a reasonable time after commencing a representation, as much information regarding fees and disbursements as is reasonable and practical in the circumstances, including the basis on which fees will be determined. An agent must confirm with the client in writing the substance of all fee discussions that occur as a matter progresses and an agent may subsequently revise an initial estimate of fees and disbursements.
6 An agent must communicate in a timely and effective manner at all stages of the client’s matter or transaction.
COMMENTARY
The requirement to provide conscientious, diligent and efficient service means that an agent must make every effort to provide timely service to the client. An agent must meet all deadlines, unless the agent is able to offer a reasonable explanation for not doing so, and ensure that there will be no prejudice to the client as a result. Whether or not a specific deadline applies, an agent must be prompt in prosecuting a matter, responding to communications and reporting developments to the client. In the absence of developments, contact with the client must be maintained to the extent the client reasonably expects.
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3 An agent must not appropriate any funds under their control for or on account of fees without the authority of the client except as permitted by this Part. Money held by an agent to the credit of a client may not be applied to fees payable by the client unless the agent has rendered an account to the client.
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5 In any statement of account that is provided to a client, an agent must separately and clearly detail all fees and disbursements and must not show as a disbursement to a third party any amount that has not been paid to the third party.
6 If the client consents, fees for any matter may be shared by the agent with another agent or a legal counsel who is not a partner or associate in the same firm as the agent if the fees are divided in proportion to the work done and the responsibilities assumed.
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COMMENTARY
The factors that may be taken into account in determining that the amount of an account represents a fair and reasonable fee in a given case include the following:
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(b)
the nature of the matter, including its difficulty and urgency, its importance to the client, its monetary value and any other special circumstances such as postponement of payment and the uncertainty of reward;
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An agent must provide to the client in writing, before or within a reasonable time after commencing a representation, as much information regarding fees, disbursements and interest as is reasonable and practical in the circumstances, including the basis on which fees will be determined.
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COMMENTARY
An essential element of reasonable notice is notification to the client unless the client cannot be located after reasonable efforts are made. No hard and fast rules can be laid down as to what constitutes reasonable notice before withdrawal and how quickly an agent may cease acting after notification will depend on all relevant circumstances. The governing principle is that the agent must protect the client’s interests to the best of the agent’s ability and must not desert the client at a critical stage of a matter or at a time when withdrawal would put the client in a position of disadvantage. As a general rule, the client must be given sufficient time to retain and instruct a replacement agent, including filing an appointment of agent in the relevant CIPO office. Every effort must be made to ensure that withdrawal occurs at an appropriate time in the prosecution of an application, in keeping with the agent’s obligations. The relevant CIPO office, opposing parties, foreign agents and any others directly affected by the withdrawal must also be notified of the withdrawal.
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When an agency firm is dissolved or an agent leaves an agency firm to practise elsewhere, it usually results in the termination of the agent-client relationship between a particular client and one or more of the agents involved. In such cases, most clients prefer to retain the services of the agent who they regarded as being in charge of their business before the change. However, the final decision rests with the client and the agents who are no longer retained by that client must act in accordance with the principles set out in this rule and, in particular, must try to minimize expense and avoid prejudice to the client. The client’s interests are paramount and, accordingly, the decision as to whether the agent will continue to represent a given client must be made by the client in the absence of undue influence or harassment by either the agent or the agency firm. That may require either the departing agent or the agency firm, or both, to notify the client in writing that the agent is leaving and advise them of the options available to have the departing agent continue to act for them, to have the agency firm continue to act for them or to retain a new agent or new agency firm to act for them.
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6 An agent must encourage a client who has a claim or complaint against an apparently dishonest agent to report the facts to the College as soon as reasonably practicable.
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11 (1) When an agent (the “transferring agent”) transfers from one firm (the “former firm”) to another firm, neither the transferring agent nor the former firm may harass or exercise or attempt to exercise undue influence on clients of the former firm — whose work was done by the transferring agent — for the purpose of influencing the decision of the client as to who will represent them.
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3 When an agent deals on a client’s behalf with an unrepresented person, the agent must
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1 An agent must not use any description that suggests that they or another individual in their firm has academic or professional qualifications that they do not possess.
COMMENTARY
Clients often seek an agent with a certain background or certain skills. Those clients must not be misled by an agent holding out themselves or other members of their firm as having skills that they do not possess.
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4 An agent may advertise the fees to be charged for their services if
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(a) the advertising is reasonably precise as to the services offered for each fee quoted;
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(b) the advertisement states whether other amounts, such as disbursements and taxes, will be added to the fees; and
COMMENTARY
The use of phrases such as “John Doe and Associates”, “John Doe and Company” or “John Doe and Partners” is improper unless there are, in fact, two or more other agents associated with John Doe in practice or John Doe has two or more partners.
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1 An agent must not, without the express approval of the College, retain, occupy office space with, use the services of, partner or associate with, or employ in any capacity having to do with the practice of a patent agent or a trademark agent, any agent whose licence has been suspended as a result of disciplinary proceedings or an individual whose licence has been revoked as a result of disciplinary proceedings or who has been permitted to surrender their licence while facing disciplinary proceedings and has not been reinstated.
2 An agent must not aid or assist a person who is practicing as a patent agent or a trademark agent in an unauthorized manner.
3 An agent who is under suspension as a result of disciplinary proceedings must not
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(a) practise as a patent agent or a trademark agent, as applicable; or
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(b) represent or hold themselves out as a individual who is entitled to practise as a patent agent or trademark agent, as applicable.
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