What is a patent agent trainee?
A patent agent trainee is a person who is in the process of completing the requirements “How to Become a Patent Agent” to become a registered patent agent in Canada. The term is normally applied to those candidates who do not have a law degree. To be eligible to sit the patent agent qualifying examination, a candidate must have worked in Canada in the area of patent law for a period of at least twelve months. This apprenticeship is required due to the complexity of practicing in the area of patent law, where the required knowledge and skills can only be acquired through on-the-job training in patent practice, supplemented by some additional study of the law in the area.
So, I don't need a law degree?
Although it is common in some countries that both lawyer and non-lawyer patent professionals are referred to as “patent attorneys,” it is important to understand that in Canada a patent agent is not a lawyer (even though a majority of registered patent agents in Canada are also lawyers). While non-lawyer patent agents have some restrictions on what they can do, a large part of the skills needed to be a good patent agent are non-legal, such as being able to quickly understand the technology of the invention you are asked to protect.
Then what sort of background do I need?
Patent agent trainees 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. An ideal candidate will have a strong record of academic achievement and solid practical experience in their technical field. Typically, patent agents specialize in specific technical areas such as biotechnology, engineering, physics or chemistry, and the expectations regarding the levels and blend of academic qualifications and technical experience will vary depending on the particular technical area.
What do employers look for?
In addition to having a solid technical background, patent agent trainees must have good oral and written communication skills and basic legal judgment. Patent law requires one to research and write on a daily basis, and be persuasive when presenting one's opinions. Agent trainees also need good listening skills, so they can understand what an inventor has created and why that invention is important enough to patent.
Personal characteristics beyond the factual qualifications are an increasingly important feature used to distinguish candidates, but there is plenty of room for many different personality types in this field.
How competitive is it?
Getting hired as a patent agent trainee is a highly competitive process because the number of jobs available is far smaller than the number of people seeking them. In some areas, such as biotechnology, many candidates have a PhD. Highlighting accomplishments that indicate drive and creativity is important, and demonstrating significant academic interests outside your narrow specialty can also help. Having a scientific or technical specialty that is in demand can also play an important role in the evaluation process.
HOW DO I BECOME A PATENT AGENT?
What kind of background do I need?
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. A patent agent should also have good communication and writing skills in order to describe the inventions they protect. A patent agent is not a lawyer, although a majority of patent agents in Canada are also lawyers.
Are there any other requirements?
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; and
(c) Pay an annual 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 months prior to the date of sitting the examination.
What are these exams all about?
The Examination Board of the Canadian Intellectual Property Office (CIPO) administers the exams, which are held annually in April. Regulations concerning the registration of patent agents are contained in Rules 12 to 19 of the Patent Rules. [http://laws.justice.gc.ca/en/p-4/sor-96-423/160806.html] The application deadline is November 30, for the following year's exam. Candidates must have 12 months of experience by March 31 of the year they write the exam.
What is the exam format?
The examinations are practically oriented with a strong emphasis on patent practice, including the analysis of patents and patent drafting. The examination is paper-based, consisting of four, four-hour papers that sit on four consecutive days. The topics of the papers are as follows:
Paper A is related to patent drafting. It typically includes a single question directed to the preparation of a patent application from an inventor's description of an invention, complete with a disclosure, claims, and an abstract;
Paper B is related to validity. Candidates are asked to consider a patent and render a validity analysis given a surrounding fact pattern and several prior art references;
Paper C is related to practice in front of the Canadian Patent Office. It involves the preparation of a response to an official action with the view to putting a patent application into a position ready for allowance; and
Paper D is related to infringement. Candidates must render an infringement analysis by construing a patent and applying the law to a fact pattern regarding an alleged infringing device or activity.
Various other short-answer questions directed to important principles of patent law and practice, and problems encountered while in actual practice, also form part of the B, C, and D papers.
What do I need to pass?
Candidates must achieve a minimum mark of 50 (out of 100) on each paper with a minimum aggregate mark of 240 for the four exams. Candidates who achieve at least 60 marks on any individual paper, but not meeting the pass requirements for the examination, are allowed to keep credit for that paper.
How hard are they?
Practicing in the area of patent law is highly complex, and the exams are designed to test proficiency in the skills and legal knowledge required to address all of the major facets of patent practice. In Canada, you become a patent agent through on-the-job training in patent practice, including the supplemental study of patent law. Depending on where a candidate obtains their experience, it can take some time to gain exposure and master the skills required to demonstrate one's proficiency in an exam setting. The result is that the exams are notoriously difficult. It is typical that a quarter or less of the candidates sitting the exams will pass in a given year, and it is common to re-write one or more exams at subsequent sittings.
Is there anything I can do to increase my chances of passing?
It is not possible to become a patent agent by taking a university or college program, but there are a number of courses and seminars led by patent practitioners that are available to assist a candidate with their preparation for the exams:
McGill Summer Course in Intellectual Property
McGill University and the Intellectual Property Institute of Canada (IPIC) provide intensive summer courses in intellectual property, including patents, trade-marks and copyright. The introductory patent course portion of the program is geared towards the interests of an audience broader than just patent agents in training. Lectures and workshops deal with protecting inventions and how to help clients build a strong patent strategy.
Federation Internationale des Conseils en Propriete Industrielle (FICPI Canada)
In the fall of each year, FICPI Canada typically offers a claim-drafting clinic for patent agents in training. This intensive course provides presentations and workshops focused on the skills of claim drafting and capturing the essence on an invention in words.
The Intellectual Property Institute of Canada (IPIC)
In the spring, IPIC offers a tutorial program specifically tailored to assist candidates with strategies for writing and passing the patent agent exams. Candidates prepare answers to simulated exam questions in advance of the tutorial sessions. A two-day intensive tutorial is typically held in Ottawa, usually in March, shortly before qualifying examinations are taken, to review the answers. Valuable feedback is provided to candidates on their submitted papers.
