Imagine helping to nurture innovation in revolutionary technology and working with Nobel prize laureates, leading scientists and industry leaders such as E.J. Corey who developed a new lexicon in synthetic chemistry, and Cohen and Boyer who made genetic engineering possible. This is the career of a patent agent.

Patent agents are at the cutting edge of science and technology by virtue of the inventions they protect. Working with scientists, researchers and developers of new technologies in biotechnology, information technology and others, patent agents get a first view of the latest in their fields of interest and play a significant role at the preliminary stages of development of new inventions.

What is a patent agent?

In Canada, only a registered patent agent is permitted under the Patent Act to represent applicants before the Patent Office in obtaining patent protection. A patent agent is not a lawyer although many agents are also lawyers. The role of a patent agent begins when an invention is first conceived. The patent agent assesses the invention, with insights to the field of invention from the inventor, by searching prior patents and other publications to determine if the invention is patentable. If the invention appears to be patentable, the patent agent works with the inventor to prepare a document which is sufficient to teach anyone else who is skilled in the field of the invention to be able to reproduce and work the invention. The document, called a patent specification, contains a description and drawings showing how the invention is made and operates. The specification is also drafted to contain claims which define, in words, the exclusive rights sought by the inventor for the invention.

Patent agents must have a technical background and good writing skills in order to describe the inventions they protect. Patent agents should have at least an undergraduate university degree (many have advanced degrees as well) in science or engineering. This background greatly facilitates communication with inventors and enhances the agent's ability to understand and describe even the most technically challenging inventions.

Typically, patent agents specialize in specific technical fields such as electronics or information technology. For instance, a patent agent with a background in biotechnology will prepare patent applications arising from the genetic engineering field, while patent applications relating to a telephone exchange will be prepared by a patent agent who is an electronic engineer.

After a patent application is filed, the Patent Office examines the application assessing the patentability of the invention in light of prior art on the basis of the claims. In a process known as "prosecution" the patent agent represents their client advocating the patentable features of the invention with a view to having the application allowed and to issue as a patent.

Patent agents may also be called upon to give an opinion as to whether the claims of an issued patent are infringed or, alternatively, are valid.

Becoming a patent agent

It is not possible to become a patent agent by taking a University or College program. In Canada, you become a patent agent through on-the-job training in patent practice. This is preferably supplemented by study of patent law. The Intellectual Property Institute of Canada (IPIC) offers a weeklong course on patent practice in conjunction with McGill University.

In order to become a registered patent agent entitled to represent clients in Canada, you must:

(a) reside in Canada; (b) pass a qualifying examination relating to patent law and practice, including the preparation, prosecution of patent applications and considering patent infringement and validity; and (c) pay an annual government statutory fee to be recognized as a patent agent. In order to be eligible to sit the patent agent examinations, a candidate must provide evidence to the satisfaction of the Commissioner of Patents that he or she has worked in Canada in the area of patent law and practice for a period of twelve (12) months prior to the date of sitting the examination.

Trade-mark agents offer professional services relating to the registration, maintenance and protection of trade-marks, i.e. a word, design, number, two dimensional or three-dimensional form, sound or colour, or a combination of two or more of these elements which a trader uses to distinguish his/her products or services from those of his/her competitors and serves to establish goodwill with the consumer.

What is a trade-mark agent?

In Canada, registered trade-mark agents are the only professionals permitted under the Trade-marks Act (RSC 1985 c.T-13) to represent and act on behalf of trade-mark owners to obtain trade-mark registrations before the Trade-marks Office. While some trade-mark agents may also be lawyers, this is not a pre-requisite for becoming a trade-mark agent.

The role of a trade-mark agent includes the functions of preparing, filing and prosecuting applications for registration of trade-marks; giving opinions on the registrability of trade-marks in accordance with criteria imposed by the law and procedure and practice and conducting searches to see whether likelihood of confusion might exist between the trade-mark searched and trade-marks or trade names of others.

The registration of a trade-mark is not automatic. The Registrar must approve the application for registration for its publication in the Trade-marks Journal. If an objection is raised by the Registrar or if anyone files an opposition to such application after its publication, the trade-mark agent drafts an appropriate response or prosecutes the opposition proceedings to defend the client's interests and presents appropriate evidence and argument to convince the Registrar that the subject trade-mark is registrable.

A trade-mark agent must have thorough knowledge of the Trade-marks Act as well as the related rules, jurisprudence and Trade-marks Office practice.

A trade-mark agent advises and serves trade-mark owners in the maintenance and protection of their trade-marks which must remain distinctive and properly used at all times. Should trade-mark owners allow others to use their trade-marks or grant franchises, a trade-mark agent can advise them in order that use of the trade-marks be properly licensed to protect the distinctiveness and enforceability of the trade-marks, failing which they might be subject to expungement from the register.

A trade-mark agent also assists trade-mark owners in managing their trade-mark portfolios, including ancillary services such as recording at the Trade-marks Office any change of ownership of registered trade-marks, security agreements affecting trade-marks and the like, as well as attending to renewal of trade-mark registrations which are granted for an initial period of fifteen (15) years from the date of registration. Registration confirms the exclusive right of the owner to the use of the trade-mark throughout Canada in association with the products and/or services designated in the registration. Thus, most trade-mark owners choose representation by a registered trade-mark agent for their knowledge of the Trade-marks Act as well as the related rules, jurisprudence, and Trade-marks Office practice.

How to become a trade-mark agent

To become a trade-mark agent in Canada, one must:

(a) reside in Canada, have worked in Canada in the area of Canadian trade-mark law and practice for a period of at least 24 months and pass the qualifying examination relating to Canadian trade-mark law and practice; OR

(b) reside in Canada and be a lawyer entitled to practise in any province in Canada, or a notary in the province of Quebec who has:

· passed the qualifying examination relating to Canadian trade-mark law and practice; OR

· worked in the area of trade-mark law, including the preparation and prosecution of applications for registration of trade-marks, for a period of 24 months or more and who has submitted an affidavit or statutory declaration to that effect to the Registrar of Trade-marks;

AND in each case pay the Government prescribed fee and apply in writing to the Registrar.

Residents of any other country may also be entered on the list of trade-mark agents provided they are entitled to practise before the trade-marks office of their country. The Canadian Trade-marks Registrar will, however, correspond directly only with the applicant or with an associate agent residing in Canada who has been appointed by the non-resident agent.

In Canada, a trade-mark agent trainee undergoes on-the-job training under the supervision of a registered trade-mark agent. An optional tutorials program is organized by the Intellectual Property Institute of Canada (IPIC) in Ottawa. This program includes mandatory papers to be prepared by candidates in response to questions set by the tutors and culminates in an intensive tutorial, in the fall of each year, about one month before the qualifying exams.

There are also optional intensive summer courses which are co-organized by IPIC and the McGill University Centre of Continuing Education.

2012 Intellectual Property Institute of Canada, Ottawa, ON 613.234.0516