List of Trade-mark Agents & Register of Patent Agents
Publication Date: 2011-01-21
Note: This practice notice is intended to provide guidance on current Patent and Trade-marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.
This notice replaces the Practice Notice titled "Limited Partnerships Can be Entered on the Register of Agents and on the List of Trade-mark Agents" published October 26, 2005.
Section 15 of the Patent Act provides that a register of patent agents shall be kept in the Patent Office on which shall be entered the names of all persons and firms entitled to represent applicants in the presentation and prosecution of applications for patents or in other business before the Patent Office. Section 2 of the Patent Rules stipulates that the expression "patent agent" means any person or firm whose name is entered on the register of patent agents pursuant to section 15. Paragraph 15(c) of the Patent Rules provides that the Commissioner shall enter on the register of patent agents, on payment of the fee set out in item 33 of Schedule II, the name of any firm, if the name of at least one member of the firm is entered on the register.
Subsection 28(2) of the Trade-marks Act provides that the list of trade-mark agents shall include the names of all persons and firms entitled to represent applicants in the presentation and prosecution of applications for the registration of a trade-mark or in other business before the Trade-marks Office. Paragraph 21(d) of the Trade-mark Regulations stipulates that the Registrar shall, on written request and payment of the fee set out in item 19 of the schedule, enter on a list of trade-mark agents the name of any firm having the name of at least one of its members entered on the list as a trade-mark agent.
The Patent Office and the Trade-marks Office are hereinafter jointly referred to as "the Offices". Both the patent and trade-mark legislation provide that firms may act as agents before the Offices, as long as one of their members is entered on the register or list of agents. The Offices consider that any firm may be entered on the list of trade-mark agents and registered as a patent agent and entitled to act as agents before the Offices regardless of the firm's underlying corporate or business structure.
Therefore, the Offices will enter upon request, on the register or list of agents any firm, including partnerships, limited partnerships and professional corporations that otherwise meets the requirements set out in the patent and trade-mark legislation.
- List of Trade-mark Agents
- Register of Patent Agents
- Five key questions answered:
- Does the word "firm" relate only to the traditional law firm or does it have a broader meaning to include a law practice that operates under a professional corporation?
- What is meant by "member" in the practice notice?
- Can cooperatives, business trusts, sole proprietorships, corporations, companies or professional associations be added to the list/register of Agents?
- Does the "member" need to work at the stipulated address of the firm?
- Is there an obligation from the agent firm to inform the Office if the status of the "member" changes within the year covered by the agent listing/maintenance fee?