Practice Notice

Limited Partnerships Can Be Entered on the Register of Agents and on the List of Trade-mark Agents

Publication Date: October 26, 2005

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.

The Patent Office and the Trade-marks Office (hereinafter jointly referred to as "the Offices") have been receiving inquiries as to whether limited partnerships are entitled to act as patent and trade-mark agents before the Offices.

With respect to the register of patent agents, 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.

With respect to the list of trade-mark agents, 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 (1996) 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.

Both the patent and trade-mark legislation therefore 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. It is generally recognised that the term "firm" includes partnerships, and the Offices have already allowed general partnerships and limited liability partnerships to be entered on the register or list of agents. The Offices consider that limited partnerships are also firms, and that they are entitled to act as agents before the Offices.

Therefore, commencing immediately, the Offices will enter upon request, on the register or list of agents, limited partnerships that otherwise meet the requirements set out in the patent and trade-mark legislation.

The Offices, however, continue to consider that the current patent and trade-mark legislation do not allow corporations to be entered on the register or list of agents, since corporations do not have members and therefore cannot meet the requirements set out in paragraph 15(c) of the Patent Rules and paragraph 21(d) of the Trade-mark Regulations (1996).