Canadian patent agents take ten minutes to update your registration

Most of our blogging is for founders of companies and inventors. This post is for the benefit of Canadian patent agents with privileges before the United States Patent and Trademark Office (USPTO). Please spend as little as ten minutes now to preserve your right to represent Canadians before the patent office of the United States. Also consider if our regulation system needs tweaking.

An important and urgent letter for patent agents

Many of us got an email or letter from the USPTO asking we confirm a few things. Failure to respond by 2023 Jan 6 could lead to you being delisted.  The USPTO’s Office of Enrollement and Discipline (OED) asks you to confirm or provide:

• Official address,
• Agent licence type,
• CPATA number, and
• Statement of intent to practice before the USPTO. 

The letter is clear and reads in part

[T]he Office of Enrollment and Discipline … request[s] that you confirm your (1) official address, (2) current registration status with the College of Patent Agents and Trademark Agents (“CPATA”), and (3) intent to remain registered to practice in patent matters before the U.S. Patent and Trademark Office (“USPTO”). …

If this address is still current, simply include it in your reply to the letter or this email. … if your address has changed, please update it using OED’s Registered Practitioner Portal … Please also include your new address in your reply and confirm that you have updated it online. …

[P]lease state your current CPATA registration status and provide your CPATA registration number….

[P]lease state your intention to remain registered to practice before the USPTO. No later than January 6, 2023, please send your complete reply by email … or by letter.

Note to be fully responsive you must include four (4) things: address, license type, license number, and statement.

Act now

Canadian agents registered before the USPTO now is a good time to check the mail and your email for a message from the USPTO. Now might be a good time to check your data with the USPTO and, if you have moved offices, update your address. If you want to remain a U.S. patent agent then promptly send the OED an email.  Do this even if you don’t have a note from the office.  

Process

The following is the process I used to update my records with the USPTO. Note step one relates to making sure you have the required “scientific, and technical qualifications”. For more information on the issue see Perry and Currier, Canadian Patent Law, 4th ed, ISBN: 9780433504856, at Chapter 23. Your process may be different especially if you intend to remain as a class 2 agent or withdraw privileges from USPTO.

1. Read the requirements to practice before the USPTO including:
   • 37 CFR §11.6(c) – Registration of attorneys and agents.
   • 37 CFR §11.7 – Requirements for registration.
   • General requirement bulletin, e.g., at §s III and V(E).
2. Log in to the USPTO-OED’s Registered Practitioner Portal (https://oedci.uspto.gov/OEDCI/). (You can recover your OED User ID and with your ID reset your password in minutes.)
   • Select [My Account] and check or update your information.
   • For most agents your “Status” should be “Active”.
   • Check your contact information, such as, “official” address (e.g., firm address), “alternative” address (e.g., home address), and alternative email address (e.g., firm email address).
3. Send Mr. H. Reitz a letter or email including the required information, e.g.,
   • I am registered with CPATA as a class XXXX patent agent with registration number: XXXX.
   • I wish to remain registered to practice before the USPTO.
   • I have updated my address with the USPTO – OED. My address is included in this note. / I confirm that my address on file with USPTO – OED is correct

Howard Reitz’s contact information is howard “DOT” reitz “AT” uspto “DOT” gov, or Mail Stop OED, Attn: Staff Attorney Howie Reitz, United States Patent and Trademark Office, Post Office Box 1450, Alexandria, Virginia 22313-1450, USA. 

Do you have better advice?

If you have other advice for Canadian patent agents add them in the comments below.

Issues with the current system

Canadian patent agents were regulated by the Canadian Intellectual Property Office (CIPO) but in 2021 this changed with CPATA taking on regulation. The College of Patent Agents and Trademark Agents is responsible for licensing patent agents. They also provide a Public Register of patent agents so the public can find an agent. 

There are several issues with the current systems of CPATA and their interface with the USPTO.  

1. Why doesn’t CPATA have a public registry that lists “class 1 patent agents”? All the public register says is “patent agent” without explaining the lack of qualification means class 1.
2. The search interface of the Public Register from CPATA includes bugs.
   • Why do “Patent agent” and “Trademark agent” appear at the end of the list of agent types on the search interface?
   • Why doesn’t Public Register allow the public to filter agents by attributes to help find agents? For example, filter by province. Access to patent agents has been a concern of governments for decades. See, for example, Standing Committee on Industry, Science and Technology (INDU), 2013 “Intellectual Property Regime in Canada” House of Commons, Ottawa, 41st Parliament, 1st Session, (Adopted by the Committee on February 26, 2013; Presented to the House on March 18, 2013).
3. Issues with class 2 patent agents.
   • What happens to class 2 patent agents? USPTO-OED says that cannot practice before the USPTO. CPATA has a process for class 2 agents to reapply for class 1 status, but how does the agent apply to the USPTO? What form and fee are required?
   • How is it that the Public Register lists a licence type as “Class 2 Inactive Patent Agent” and licence status “Active”? I’m actively inactive in November but I won’t call this a best practice. 
   • Other issues that are being considered by CPATA and indeed they have just announced a Class 4 to address the issue.
4. Why doesn’t CPATA issue a statement that various classes of patent agents are in “good standing before the patent office of” Canada? This would make it clear these patent agents are compliant with 37 CFR §11.6(c). Or have a feature on the agent portal to request such a certificate?
5. Why does CPATA use different registration numbers than CIPO used? The old numbers had the benefit of recording seniority. (Edit. Mr. Pink explained CIPO’s numbers didn’t always show seniority. We have found a way to estimate seniority.)
6. How does a Canadian agent apply to become a patent agent before the USPTO? The webpage for the OED, general bulletin, and form PTO-158 does not explain how. Correcting these omissions is a task that falls between CPATA and USPTO-OED. (Edit. I have found the relevant forms and am willing to help any agent apply.)
7. CIPO used to provide a report on the patent agent exam. The public could learn about the number of papers written, the average makes, and the low passing rate. See an example, here. CPATA sadly has not continued these reports. Given they are changing the exam format for 2024 such a report would be helpful to assess the impact of the change. (Edit. Darrel Pink, CEO of CPATA, took the time to read these comments and consider them. He pointed out there is an 2021 exam report.)

Do you have other concerns about CPATA or the interface with the USPTO? If so add them in the comments below or write the CPATA board.

It seems like CPATA has some work ahead of them. Other tasks will fall to the profession collectively through ad hoc efforts or through the Intellectual Property Institute of Canada (IPIC), a professional association.

(Edits. H/T and thanks to:

• Alan Macek, a true leader in our profession, for pointing out an image wasn’t rendered properly. Image now removed.
• Andrew Currier, CPATA board member promptly forwarded my blog post to CEO of CPATA.
• Darrel Pink, CEO of CPATA, took note of the comments above plus took the time to share information I was unaware. So I have walked back some critiques. )