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1 The following definitions apply in this schedule.
- CIPO
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CIPO means the Canadian Intellectual Property Office, which includes the Patent Office and the Office of the Registrar of Trademarks. (OPIC)
- client
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client means a person who consults an agent and on whose behalf the agent provides or agrees to provide representation under section 27 or 30 of the Act or who, having consulted an agent, reasonably concludes that the agent has agreed to provide representation on their behalf. It includes a client of a firm of which the agent is a partner or associate, whether or not the agent handles the client’s work. (client)
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COMMENTARY
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In deciding whether the agent has employed the requisite degree of knowledge and skill in a particular matter, relevant factors that are to be taken into account are
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(b)
the agent’s general experience;
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(c)
the agent’s training and experience in the technical field and applicable patent and trademark law;
An agent who practises alone or operates a branch office or a part-time office must ensure that all matters requiring an agent’s professional skill and judgment are dealt with directly by an agent qualified to do the work.
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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
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The following are examples of conflicts of interest:
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Such a relationship may conflict with the agent’s duty to provide objective, disinterested professional advice to the client. The relationship may obscure whether certain information was acquired in the course of the agent-client relationship and may jeopardize the client’s right to have all information concerning their affairs held in strict confidence. The relationship may in some circumstances permit exploitation of the client by their agent. If the agent is a member of a firm and concludes that a conflict exists, the conflict is not imputed to the agent’s firm and would be cured if another agent in the firm who is not involved in such a relationship with the client were to handle the client’s work.
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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.
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6 (1) Unless the former client consents, an agent who has acted in a matter for that client must not act against them in
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COMMENTARY
This rule prohibits an agent from attacking the work done during the retainer or from undermining the client’s position on a matter that was central to the retainer. It is not improper for an agent to act against a former client in a fresh and independent matter wholly unrelated to any work the agent has previously done for that client if previously obtained confidential information is not relevant for that 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.
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Guidelines on How to Screen for Conflicts of Interest and Measures to be Taken
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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.
How to Determine if a Conflict Exists Before Hiring a Potential Transferee
When a firm of agents, or a firm of agents and legal counsel (“new firm”), considers hiring an agent or agent in training (“transferring agent”) from another firm of agents, or another firm of agents and legal counsel, (“former firm”), the transferring agent and the new firm need to determine, before the transfer, whether any conflicts of interest will be created. Conflicts can arise with respect to clients of the firm that the transferring agent is leaving and with respect to clients of a firm in which the transferring agent worked at some earlier time.
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(4) An agent must exercise due diligence in ensuring that every member and employee of their firm and every other person whose services the agent has retained
COMMENTARY
Agents and Support Staff
Subsection (4) is intended to regulate agents and agents in training who transfer between firms. It also imposes a general duty on agents to exercise due diligence in the supervision of staff in order to ensure that they comply with the rule and with the duty not to disclose confidences of clients of the agents’ firm and confidences of clients of other firms in which the staff member has worked.
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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COMMENTARY
The remuneration paid to an agent by a client for agency work undertaken by the agent for the client does not give rise to a conflicting interest.
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1 The agent must give the client competent advice and service based on a sufficient knowledge of the relevant facts, an adequate consideration of the applicable law and the agent’s own experience and expertise.
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7 An agent must not undertake to act for a client if they are not comfortable, for justifiable reasons, with undertaking the requested task or work for that particular client or disagree with the instructions from the client to such an extent that the instructions would impair the agent’s ability to perform their services in accordance with this Code.
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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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8 If an agent requires payment prior to commencing the client’s work, the agent must confirm with the client in writing the amount and purpose of the payment and the consequences of any delay in making the payment and in the commencement of the work, including any possible loss of rights.
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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(f)
the likelihood, if made known to the client by the agent, that the agent’s acceptance of the retainer will result in their inability to accept other work;
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(h)
the experience and ability of the agent;
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8 An agent who supervises an agent in training must provide them with meaningful training and exposure to, and involvement in, work that will provide them with knowledge and experience of the practical aspects of the work of a patent agent or a trademark agent, together with an appreciation of the traditions and ethics of the profession.
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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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(4) An agent must avoid ill-considered or uninformed criticism of the competence, conduct, advice or work of other agents, but must be prepared when requested to advise and represent a client with respect to a complaint involving another agent.
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An agent may advertise services and fees or otherwise solicit work if the advertisement is
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