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

Act current to 2022-06-20 and last amended on 2021-06-28. Previous Versions

Disciplinary Proceedings (continued)

Marginal note:Rules of procedure

 The Discipline Committee may make rules respecting the practice and procedure before it and rules for carrying out its work and for the management of its internal affairs.

Confidentiality

Marginal note:No waiver

 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

  •  (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

  •  (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

 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

 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

  •  (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

  •  (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

  •  (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

 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

  •  (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

 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

  •  (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 caused by the temporary absence or incapacity of 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;

    • (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;

    • (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; and

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

  • Marginal note:Different treatment

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

  • Marginal note:For greater certainty

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

Marginal note:Regulations — Governor in Council

  •  (1) The Governor in Council may make regulations for carrying out the purposes and provisions of this Act, including regulations

    • (a) respecting the Investigations Committee, the Discipline Committee and other committees of the College, including the composition of those committees, the eligibility for membership in them, the terms of the members and their removal;

    • (b) respecting the reports and information that must be provided or submitted to the Minister;

    • (c) respecting conditions to be imposed on licences or classes of licences;

    • (d) respecting the requirements that individuals or classes of individuals must meet under section 26 or 29, including requirements in relation to qualifying examinations and in relation to fees with respect to qualifying examinations;

    • (e) respecting what constitutes representation for the purposes of sections 27 and 70 or for the purposes of sections 30 and 71;

    • (f) respecting restrictions on the entitlement of licensees or classes of licensees to provide representation under section 27 or 30;

    • (g) respecting the information to be included in the Register of Patent Agents or the Register of Trademark Agents;

    • (h) respecting the sealing of documents and other things and objections under section 46, including in relation to notifications, the identification of sealed packages, applications to the Federal Court and the retention, opening and return of sealed packages; and

    • (i) respecting the determination of the applicable periods referred to in subsection 47(1).

  • Marginal note:Authorization

    (2) Regulations made under paragraphs (1)(c), (d), (f) and (g) may authorize the College to make by-laws with respect to all or part of the subject matter of the regulations and, for greater certainty, those by-laws are regulations for the purposes of the Statutory Instruments Act.

  • Marginal note:Regulations — sealed packages

    (3) Regulations made under paragraph (1)(h) may authorize the Federal Court to make orders respecting the retention, opening or return of sealed packages.

Marginal note:Regulations prevail

 The regulations prevail over the by-laws to the extent of an inconsistency or conflict between them.

Transitional Provisions

Marginal note:Definition of coming-into-force day

 In sections 79 to 86, coming-into-force day means the day on which section 13 comes into force.

Marginal note:Initial organization of board

  •  (1) Before the coming-into-force day, the College’s board of directors is to be composed of five directors appointed by the Minister of Industry.

  • Marginal note:Appointment on recommendation

    (2) Two of the directors are to be appointed on the recommendation of the Intellectual Property Institute of Canada, with one to be an individual whose name is on the register kept under section 15 of the Patent Act and the other to be an individual whose name is on the list of trademark agents kept under section 28 of the Trademarks Act.

  • Marginal note:Chairperson

    (3) The Minister of Industry must designate a Chairperson from among the directors.

  • Marginal note:Deemed election or appointment

    (4) The directors appointed on the recommendation of the Intellectual Property Institute of Canada who hold office on the coming-into-force day are deemed to have been elected under subsection 13(5) on that day, for a term that ends on the earlier of the day on which the first election is held under that subsection and the first anniversary of the coming-into-force day. The other directors who hold office on the coming-into-force day are deemed to have been appointed under subsection 13(3) on that day for a term that ends on the first anniversary of that day.

  • Marginal note:For greater certainty

    (5) For greater certainty, section 17 applies as of the coming-into-force day with respect to directors who are deemed to be elected or appointed under subsection (4).

  • Marginal note:Removal for cause

    (6) Before the coming-into-force day, a director appointed under subsection (1) may be removed for cause by the Minister of Industry.

  • Marginal note:Remuneration

    (7) Before the coming-into-force day, the College may pay the remuneration and expenses that it fixes to the directors.

  • Marginal note:Reference to the Board

    (8) Any reference in this Act to the Board is, until the coming-into-force day, a reference to the board of directors as constituted under this section.

 
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