Contents
The Minister of Industry, pursuant to subsection 33(1) of the College of Patent Agents and Trademark Agents Act, makes the annexed Code of Professional Conduct for Patent Agents and Trademark Agents Regulations.noteOttawa, June 23, 2021Le ministre de l’Industrie, François-Philippe ChampagneMinister of Industry
Interpretation
General
2Code of professional conduct established#
The Code of Professional Conduct for Licensees set out in the schedule is established for the purpose of subsection 33(1) of the Act.
3Non-application#
The standards of professional conduct and competence described in the schedule do not apply to a licensee to the extent that those standards would conflict with the licensee’s obligations under
(a)any federal or provincial statute, regulation or code of professional conduct; or
(b)a code of professional conduct established by a provincial law society or the Chambre des notaires du Québec.
4For greater certainty#
For greater certainty, the standards of professional conduct and competence described in the schedule
(a)include the standards established by the fundamental canon, principles, rules and commentaries set out in the schedule; and
(b)are to be interpreted in a manner that is consistent with the advisory portions of the fundamental canon, principles, rules and commentaries set out in the schedule.
Coming into Force
*5S.C. 2018, c. 27, s. 247#
These Regulations come into force on the day on which paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act come into force, but if they are registered after that day, they come into force on the day on which they are registered.
Code of Professional Conduct for Licensees (Sections 2 to 4)
1#
The following definitions apply in this schedule.
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)
CIPO means the Canadian Intellectual Property Office, which includes the Patent Office and the Office of the Registrar of Trademarks. (OPIC)
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)
firm means a sole proprietorship, corporation, partnership, limited liability partnership or professional corporation. (cabinet)
person includes an individual and a corporation or other entity. (personne)
profession means the profession of patent agent or trademark agent as those terms are defined in section 2 of the Act. (profession)
2#
The most important attribute of an agent is integrity. That principle is implicit in this Code and in each of the rules and commentaries set out in it. Irrespective of the possibility of formal sanction under any of the rules in this Code, an agent must at all times conduct themselves with integrity and competence in accordance with the highest standards of the profession in order to retain the trust, respect and confidence of members of the profession and the public.
1#
An agent must not undertake or continue any matter unless they believe that they are competent to handle it or believe that they could become competent to do so without undue delay, risk or expense to the client and without associating with another agent who is competent to handle the matter. The agent must promptly advise the client whenever the agent reasonably believes that they may not be competent to handle a particular matter. If consulted about such a matter, the agent must
(a)decline to act;
2#
An agent fails to meet standards of professional competence if
(a)there are deficiencies in
(i)their knowledge, skill or judgment,
(ii)their attention to the interests of clients,
(iii)the records, systems or procedures of their professional business, or
(iv)any other aspects of their professional business; and
(b)the deficiencies referred to in paragraph (a) give rise to a reasonable apprehension that the quality of service they provide to clients may be adversely affected.
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.
1#
An agent must hold in strict confidence all information concerning the business and affairs of the client acquired in the course of the professional relationship and must not disclose such information unless the disclosure is expressly or impliedly authorized by the client, required by law or by order of a court or otherwise permitted or required by this Code.COMMENTARYIn order to facilitate open communication between client and agent, it is important that the client feel completely secure that such communication will be held in strict confidence by the agent.This rule must be distinguished from the statutory rule of privilege concerning oral or documentary communications between the client and the agent. The ethical rule is wider and applies without regard to the nature or source of the information or the fact that others may have knowledge of the information.
2#
An agent must exercise reasonable care to ensure the privacy and confidentiality of such information.COMMENTARYSole practitioners who practise in association with other agents in cost-sharing, space-sharing or other arrangements must be mindful of the risk of advertent or inadvertent disclosure of confidential information even if the agents institute systems and procedures that are designed to insulate their respective practices. The issue may become more significant if an agent in the association represents a client on the other side of a dispute with the client of another agent in the association. Apart from conflict of interest issues such a situation may raise, the risk of such disclosure may depend on the extent to which the agents’ practices are integrated, physically and administratively, in the association.Generally, unless the nature of the matter requires such disclosure, an agent must not disclose that they have been retained by a person about a particular matter or consulted by a person about a particular matter, whether or not an agent-client relationship has been established between them.An agent must take care to avoid disclosure to one client of confidential information concerning or received from another client and must decline employment that might require such disclosure.In some situations, the authority of the client to disclose may be inferred. For example, it is implied that an agent may, unless the client directs otherwise, disclose the client’s affairs to partners, associates, administrative staff and other individuals in the agent’s firm. But this implied authority to disclose places the agent under a duty to impress upon such individuals the importance of such non-disclosure (both during their employment and afterwards) and requires the agent to take reasonable care to prevent their disclosing or using any information that the agent is bound to keep in confidence.
3#
The agent must continue to hold in confidence such information despite conclusion of the matter or termination of the professional relationship with the client.COMMENTARYAn agent owes a duty of confidentiality to every client without exception and whether or not the client is a continuing or casual client. The duty survives the professional relationship and continues indefinitely after the agent has ceased to act for the client.
6#
When disclosure is required by law or by order of a court, the agent must always be careful not to disclose more information than is required.
8#
An agent may disclose confidential information in order to defend against any allegations, but must not disclose more information than is required, if it is alleged that the agent or the agent’s associates or employees
(a)have committed a criminal offence involving a client’s affairs;
(b)are civilly liable with respect to a matter involving a client’s affairs;
(c)have committed acts of professional negligence; or
(d)have committed professional misconduct or are incompetent.
9#
An agent may disclose confidential information in order to establish or collect their fees, but must not disclose more information than is required.
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.COMMENTARYAs 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.In these situations (see subsection 7(1) of Part 3), this section permits agents and firms to disclose limited information. That type of disclosure would only be made once substantive discussions regarding the new relationship have taken place.The exchange of information between the firms needs to be carried out in a manner consistent with the obligations of the transferring agent and of the new firm to protect client confidentiality and privileged information and avoid any prejudice to the client. It ordinarily would include no more than the names of the persons involved in a matter or matters. Depending on the circumstances, it may include a brief summary of the general issues involved and information about whether the representation has come to an end.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(a) will limit access to the disclosed information;(b) will not use the information for any purpose other than detecting and resolving conflicts; and(c) will return, destroy or store in a secure and confidential manner the information provided once appropriate confidentiality screens are established.The client’s consent to disclosure of such information may be specifically addressed in a retainer agreement between the agent and the client. However, in some circumstances, because of the nature of the retainer, the transferring agent and the new firm may be required to obtain the consent of clients to the disclosure or the disclosure of any other information about the clients. That is especially the case if disclosure would compromise privilege or otherwise prejudice the client (for example, disclosure of the fact that a corporate client is seeking due diligence advice relating to a corporate takeover that has not yet been publicly announced).
11#
An agent may disclose confidential information, but must not disclose more information than is required, when they believe on reasonable grounds that there is an imminent risk of death or serious bodily harm to any individual and the disclosure is necessary in order to prevent it.
12#
An agent also owes a duty of confidentiality to any person seeking advice or assistance on a matter invoking the agent’s professional knowledge, even if the agent does not render an account or agree to represent that person. An agent and client relationship is often established without formality. An agent must be cautious in accepting confidential information on an informal or preliminary basis, since possession of the information may prevent the agent from subsequently acting for another party in the same matter or a related matter (see Part 3).
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.COMMENTARYAs 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.A client must be assured of the agent’s undivided loyalty, free from any material impairment of the agent-client relationship. The relationship may be irreparably damaged if the agent’s representation of one client is directly adverse to another client’s immediate legal interests. A client may legitimately fear that the agent will not pursue the representation out of deference to the other client and an existing client may legitimately feel betrayed by the agent’s representation of a client with adverse interests. The prohibition on acting in such circumstances except with the consent of the clients guards against such outcomes and protects the agent-client relationship.An agent has a duty of commitment to the client that prevents them from summarily and unexpectedly dropping a client to circumvent conflict of interest rules. A client may legitimately feel betrayed if an agent ceases to act for the client to avoid a conflict of interest.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.Accordingly, factors for the agent’s consideration in determining whether a conflict of interest exists include(a) the immediacy of the clients’ interests;(b) whether the clients’ interests are directly adverse;(c) the temporal relationship between the matters;(d) the significance of the issue to the immediate and long-term interests of the clients involved; and(e) the clients’ reasonable expectations in retaining the agent for the particular matter or representation.The following are examples of conflicts of interest:(a) an agent acting against a person in one matter while representing that person in some other matter;(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;NOTE:An agent who owns a small number of shares of a publicly traded corporation would not necessarily have a conflict of interest in acting for the corporation because the ownership of those shares may have no adverse influence on the agent’s judgment or loyalty to the client.(c) an agent having a sexual or close personal relationship with a client;NOTE: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.(d) an agent or their firm acting for a public or private corporation and serving as a director of the corporation; andNOTE:Those two roles may result in a conflict of interest or other problems because they may affect the agent’s independent judgment and fiduciary obligations or obligations of loyalty and good faith in either role or both roles, obscure whether advice is given in one role or the other and disqualify the agent or the firm from acting for the corporation.(e) sole practitioners practising with other agents in cost-sharing or other arrangements and representing clients on opposite sides of a dispute.NOTE:The fact or the appearance of such a conflict may depend on the extent to which the agents’ practices are integrated, physically and administratively.
2#
(1)An agent must not represent a client in a matter if there is a conflict of interest unless there is express or implied consent from all affected clients and the agent reasonably believes that they are able to represent each client without having a material adverse effect upon the representation of or loyalty to the other client.
(2)Express consent must be fully informed and voluntary and given after disclosure of the conflict of interest.
(3)If consent is not given in writing, the following elements must be present in order for consent to be implied:
(a)the client is a government entity, a financial institution, a publicly traded entity or other similar entity or an entity with in-house legal counsel;
(b)the matters are unrelated;
(d)the client has consented to agents acting for and against it in unrelated matters.
3#
Despite section 2, an agent must not provide representation to opposing parties in a dispute.COMMENTARYIn a dispute, the immediate legal interests of the opposing parties are clearly adverse. If an agent were permitted to act for opposing parties in a dispute, even with their consent, the agent’s advice, judgment and loyalty to one client would be materially and adversely affected by the same duties to the other client or clients.
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
(a)the risks of the agents acting in that manner have been disclosed to each client;
(b)they have recommended to each client that they obtain independent legal advice, including legal advice with respect to the risks of concurrent representation;
(c)the clients each determine that it is in their best interests that the agents act in that manner and consent to the concurrent representation;
(e)appropriate screening mechanisms are in place to protect confidential information; and
(f)all agents in the firm withdraw from the representation of all clients in respect of the matter if a dispute arises among the clients and cannot be resolved.
COMMENTARYThis rule provides guidance on concurrent representation, which is permitted in limited circumstances. Concurrent representation is not contrary to the rule prohibiting representation when there is a conflict of interest if the clients are fully informed of the risks and understand that, if a dispute arises among the clients that cannot be resolved, the agents may have to withdraw, which could result in potential additional costs.The basis for the advice described in the rule from both the agents involved in the concurrent representation and those giving the required independent legal advice is whether concurrent representation is in the best interests of the clients. Even if all clients consent, the agents must not accept a concurrent retainer if the matter is one in which one of the clients is less sophisticated or more vulnerable than another.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).
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
(b)no information received in connection with the matter or transaction from one client can be treated as confidential so far as any of the others are concerned unless the clients instruct otherwise; and
(c)if a conflict develops and cannot be resolved, the agent cannot continue to act for all of them and may have to withdraw completely from the matter or transaction.COMMENTARYAlthough this rule does not require that an agent advise clients to obtain independent legal advice before the agent accepts a joint retainer, in some cases, the agent must recommend seeking such advice in order to ensure that the clients’ consent to the joint retainer is informed, genuine and uncoerced, especially when one of the clients is less sophisticated or more vulnerable than another.
(2)If an agent has a continuing relationship with a client for whom the agent acts regularly, before the agent accepts a joint retainer for that client and another client in a matter or transaction, the agent must advise that other client of the continuing relationship with the first client and recommend that the other client obtain independent legal advice with respect to the joint retainer.
(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.COMMENTARYEven 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.
(4)Except as provided in subsection (5), if a contentious issue arises between clients who have consented to a joint retainer
(a)the agent must not advise them on the contentious issue and must
(i)refer the clients to other agents or to legal counsel, or
(ii)advise the clients of their option to settle the contentious issue by direct negotiation in which the agent does not participate and recommend that the clients each obtain independent legal advice, and
(b)the agent must withdraw from the joint representation if the contentious issue is not resolved.
COMMENTARYIf, after the clients have consented to a joint retainer, a contentious issue arises between them or between some of them, the agent is not necessarily precluded from advising them on non-contentious matters.
(5)If clients consent to a joint retainer and agree that if a contentious issue arises the agent may continue to advise one of them, the agent may advise that client about the contentious matter and must refer the other clients to another agent.COMMENTARYThis rule does not relieve the agent of the obligation to obtain the consent of the clients when the contentious issue arises if there is or is likely to be a conflict of interest or if the representation on the contentious issue requires the agent to act against one of the clients.When entering into a joint retainer, the agent must stipulate that if a contentious issue arises the agent will be compelled to cease acting altogether unless, at the time the contentious issue arises, all parties consent to the agent’s continuing to represent one of them. However, consent given before the fact may be ineffective since the party granting the consent will not at the time of their consent be in possession of all the relevant information.
6#
In Schedule 3 (permitted additives and provisions relating to their use) —
(1)Unless the former client consents, an agent who has acted in a matter for that client must not act against them in
(a)the same matter;
(b)any related matter; or
COMMENTARYThis 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.
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
COMMENTARYThe purpose of this rule is to deal with actual knowledge. Imputed knowledge does not give rise to disqualification.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.
(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
(b)the new firm has
COMMENTARYIt is not possible to offer a set of reasonable measures that will be appropriate or adequate in every case. Instead, the new firm that seeks to implement reasonable measures must exercise professional judgment in determining what steps must be taken in order to ensure that no disclosure will occur to any member of the new firm of the former client’s confidential information. Such measures may include timely and properly constructed confidentiality screens.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 TakenThe screened agent must have no involvement in the new firm’s representation of its client in the matter.The screened agent must not discuss the current matter or any information relating to the representation of the former client — the two may be identical — with anyone else in the new firm.No member of the new firm should discuss the current matter or the representation of the former client with the screened agent.The firm must take steps to preclude the screened agent from having access to any part of the file.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.How to Determine if a Conflict Exists Before Hiring a Potential TransfereeWhen 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.After completing the interview process and before hiring the transferring agent, the new firm must determine whether any conflicts exist. In determining whether the transferring agent actually possesses relevant confidential information, both the transferring agent and the new firm must be very careful during any interview of a potential transferring agent or during any other recruitment process to ensure that they do not disclose client confidences. See section 10 of Part 2 which provides that an agent may disclose confidential information to the extent the agent reasonably believes necessary to detect and resolve conflicts of interest when agents transfer between firms.An agent’s duty to their firm may also govern the agent’s conduct when exploring an association with another firm and is beyond the scope of this Code.
(3)Subject to section 10 of Part 2 and unless the former client consents,
8#
(1)Subject to subsections (2) and (3), an agent must not enter into a business transaction with a client or knowingly give to a client or acquire from a client, directly or indirectly, ownership of, or a security or other monetary interest in, an intellectual property right that is the subject of the agent’s professional advice unless
(c)the client consents in writing to the transaction.
COMMENTARYThe agent cannot act where the business transaction is one in which there is a substantial risk that the agent’s loyalty to or representation of the client would be materially and adversely affected by the agent’s own interest, unless the client consents and the agent reasonably believes that they are able to act for the client without having a material adverse effect on loyalty or the representation. If the agent chooses not to disclose the conflicting interest (that is, the agent’s own interest) or cannot do so without breaching confidence, the agent must decline the retainer. An agent must not uncritically accept a client’s decision to have the agent act. It should be borne in mind that, if the agent accepts the retainer, the agent’s first duty will be to the client. If the agent has any misgivings about being able to place the client’s interests first, the retainer must be declined.
(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
(a)whether or not naming the agent as a co-inventor is appropriate and justified; and
(b)whether a new agent should be retained to prosecute the application.
(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
(a)whether or not the agent is entitled to any intellectual property right related to the trademark; and
(b)whether a new agent should be retained to prosecute the application.
(4)When a client intends to pay for agency services by transferring to the agent a share, participation or interest or right in property or in an enterprise other than a non-material interest or right in a publicly traded enterprise, the agent must recommend that the client obtain independent legal advice before accepting a retainer.
2#
The agent’s advice must be open and transparent and must clearly disclose what the agent honestly thinks about the merits of the matter at issue and the likely results.COMMENTARYOccasionally, an agent must be firm with a client. Firmness, without rudeness, is not a violation of the rule. In communicating with the client, the agent may disagree with the client’s perspective or may have concerns about the client’s position on a matter and may give advice that will not please the client, which may legitimately require firm and animated discussion with the client. The agent must not keep the client in the dark about matters they know to be relevant to the retainer.
3#
If it becomes apparent to the agent that the client has misunderstood or misconceived the agent’s position or what is really involved, the agent must use reasonable efforts to explain their advice and recommendations to the client.COMMENTARYAn agent has a duty to communicate effectively with the client. What is effective will vary depending on the nature of the retainer, the needs and sophistication of the client and the need for the client to make fully informed decisions and provide instructions.
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.COMMENTARYAn 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.COMMENTARYThe 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.
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.
8#
An agent must inform the client in a reasonably prompt manner of any material error or omission that has been made with respect to the client’s matter.COMMENTARYIf, in connection with a matter for which an agent is responsible, the agent discovers an error or omission that is or may be damaging to the client and that cannot be readily rectified, the agent must(a) promptly inform the client of the error or omission without admitting legal liability;(b) recommend that the client obtain independent professional or legal advice concerning the matter; and(c) advise the client of the possibility that, in the circumstances, the agent may no longer be able to continue to act for the client.
2#
An agent may enter into a written agreement that provides that their fee is contingent, in whole or in part, on the outcome of the matter for which their services are to be provided.
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.
7#
If an agent refers a matter to another agent or professional because of their expertise and ability to handle the matter, and the referral is not made because of a conflict of interest, the referring agent may accept, and the other agent may pay, a referral fee if
(a)the fee is reasonable and does not increase the total amount of the fee charged to the client; and
(b)the client is informed of and consents to the payment of that referral fee.
2#
An agent may withdraw when withdrawal is justified by the circumstances. Circumstances that may justify, but not require, withdrawal include the following:
(b)the client’s conduct in the matter is dishonourable or motivated primarily by malice;
(f)the agent is unable to continue with their practice or retires from practice.
5#
If an agent withdraws or is discharged from a matter and is in receipt of an official communication on the matter to which a response must be filed in order to avoid abandonment of the matter, the agent must endeavour to report the official communication in a timely manner to the former client in order to avoid prejudice to that client and to permit them to take appropriate steps to safeguard their rights in the matter.
2#
An agent must refrain from conduct that brings discredit to the profession.
3#
An agent must respond promptly and in a complete and appropriate manner to any communication from the College relating to their conduct.
7#
An agent has complete professional responsibility for all business entrusted to them and must directly supervise staff and assistants to whom they delegate particular tasks and functions.
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.
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.
(2)An agent who is an employee must not solicit business from their employer’s clients or prospective clients on their own account without their employer’s knowledge.
1#
(5)An agent must agree to reasonable requests concerning hearing dates, adjournments, the waiver of procedural formalities and other similar matters that do not prejudice the rights of their client unless to do so would be contrary to the client’s instructions.COMMENTARYThe public interest demands that matters entrusted to an agent be dealt with effectively and expeditiously and fair and courteous dealing on the part of each agent engaged in a matter will contribute substantially to this end. The agent who behaves otherwise does a disservice to the client and neglect of the rule will impair the ability of agents to perform their functions properly.Any ill feeling that may exist or be engendered between clients, particularly during opposition proceedings, must never be allowed to influence agents in their conduct and demeanour toward each other or the other parties. The presence of personal animosity between agents involved in a matter may cause their judgment to be clouded by emotional factors and hinder the proper resolution of the matter.
2#
(1)An agent must not in the course of their professional practice send correspondence to or otherwise communicate with a client, another agent, CIPO or any other person in a manner that is abusive, offensive or otherwise inconsistent with the appropriate tone of a professional communication from an agent.
(3)Subject to subsection (4), if a person is represented by an agent or a legal counsel in respect of a matter, another agent must not, except through or with the consent of that person’s agent or legal counsel
(a)approach, communicate or deal with the person in relation to the matter; or
(b)attempt to negotiate or reach a compromise in the matter directly with the person.
COMMENTARYSubsection (3) applies to communications with any person , whether or not they are a party to a formal adjudicative proceeding, contract or negotiation, who is represented by an agent concerning the matter to which the communication relates. An agent may communicate with a represented person in relation to other matters. Subsection (3) does not prevent parties to a matter from communicating directly with each other.The prohibition on communications with a represented person applies only if the agent knows or should know, based on the circumstances, that the person is represented in the matter to be discussed.
(4)An agent who does not have an interest in a matter may give a second opinion to a person who is represented by another agent with respect to that matter.COMMENTARYSubsection (4) deals with circumstances in which a client may wish to obtain a second opinion from another agent. In providing a second opinion, and in order to provide competent services, that other agent may require facts that can be obtained only through consultation with the first agent involved. The other agent must advise the client accordingly and, if necessary, consult the first agent unless the client instructs otherwise.
(5)An agent retained to act in a matter involving a corporation or other organization represented by an agent or a legal counsel must not, in respect of that matter, unless the agent representing the organization consents or the contact is otherwise authorized or required by law, approach an officer or employee of the organization
(a)who has the authority to bind the organization;
(b)who supervises, directs or regularly consults with the organization’s agent; or
(c)whose own interests are directly at stake in the representation.
COMMENTARYSubsection (5) prohibits an agent who represents another person from communicating about the matter in question with persons who are likely involved in the decision-making process for a corporation or other organization. If the corporation or organization is represented by an agent, the consent of that agent to the communication will be sufficient for the purposes of this rule. An agent may communicate with employees of the corporation or organization concerning other matters.
(6)In this section, other organization includes a partnership, an association, a union, an unincorporated group, a government department or agency, a tribunal, a regulatory body and a sole proprietorship.
3#
(a)advise the unrepresented person to seek independent representation;
(d)extend the same courtesy and good faith to the unrepresented person as they extend to other agents or agents in training.
4#
(2)In this section, document includes email or other electronic modes of transmission capable of being read or put into readable form.COMMENTARYAgents sometimes receive documents that were mistakenly sent by opposing parties or their agents. If an agent knows or reasonably should know that such a document was sent to them inadvertently, this rule requires the agent to notify the sender promptly in order to permit them to take protective measures.Some agents may choose to return a document unread, for example, when the agent learns before receiving the document that it was inadvertently sent to the wrong address. Unless the agent is required by applicable law to do so, the decision to voluntarily return such a document is a matter of professional judgment ordinarily reserved to the agent.
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.COMMENTARYClients 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.
2#
The agent’s advertisements may be designed to provide information to assist a potential client to choose an agent who has the appropriate skills and knowledge for the client’s particular matter. The agent may indicate that their practice is restricted to a particular area or may indicate that they practice in a certain area if that is the case. In all cases, the representations made must be accurate (that is, demonstrably true) and must not be misleading.
3#
The agent must not indicate by way of advertisement, letterhead or otherwise that they have a professional office at a specified location if that is not, in fact, the case.
4#
An agent may advertise the fees to be charged for their services if
(a)the advertising is reasonably precise as to the services offered for each fee quoted;
(b)the advertisement states whether other amounts, such as disbursements and taxes, will be added to the fees; and
(c)the agent strictly adheres to the advertised fees in all applicable respects.
COMMENTARYThe 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.
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.
3#
An agent who is under suspension as a result of disciplinary proceedings must not
COMMENTARYIt is in the interest of the public and the profession that persons who are not properly qualified or who are immune from control, management or discipline not be permitted to offer agency services to members of the public.
Federal laws of Canada reproduced under the Reproduction of Federal Law Order (SI/97-5); not the official version. Source: Justice Laws Website.