On June 24, 2016, the much anticipated amendments to the Patent Act and Trademarks Act recognizing patent agent privilege and trademark agent privilege will come into force.
Canadian patent and trademark agent privilege
Under Canadian common law, solicitor-client privilege can protect communications between lawyers and their clients from being compelled as evidence in legal proceedings. In the civil law of Québec, professional secrecy of advocates and notaries provides similar protection. Historically, Canadian courts have explicitly declined to recognize any similar privilege for communications with patent agents, even for communications with foreign patent agents who enjoyed such privilege in their foreign home jurisdictions (see Lilly Icos LLC v Pfizer Ireland Pharmaceuticals, 2006 FC 1465). In certain circumstances Canadian courts have also found that communications between a lawyer who is also a patent agent and that lawyer’s client may not be privileged if the lawyer is acting in their capacity as the patent agent (see Laboratoires Servier v Apotex Inc, 2008 FC 321).
Under the amendments to the Patent Act, a statutory privilege may apply to a communication which, (a) is between an individual whose name is entered on the register of patent agents and that individual’s client; (b) is intended to be confidential; and (c) is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention. Similarly, under the amendments to the Trademarks Act, a statutory privilege may apply to a communication which (a) is between an individual whose name is included on the list of trademark agents and that individual’s client; (b) is intended to be confidential; and (c) is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trademark or some other marks and similar rights available under the Trademarks Act.
Such communications will be privileged in the same way as communications that are subject to solicitor-client privilege (or to professional secrecy of advocates and notaries under the civil law of Québec) and, subject to exceptions to solicitor-client privilege (or exceptions to professional secrecy of advocates and notaries under the civil law of Québec), will not be compellable in civil, criminal or administrative proceedings unless the client expressly or implicitly waives the privilege.
Further, the statutory privileges will apply retroactively to communications made before the June 24, 2016 date on which these provisions come into force, provided that such communications are still confidential on June 24, 2016. However, the statutory privileges will not apply in respect of an action or proceeding commenced before June 24, 2016.
Extension of Canadian patent agent privilege to foreign patent agents
The statutory privileges set to come into force on June 24, 2016 will also extend to communications between an individual who is authorized to act as a patent agent or trademark agent in a foreign country other than Canada and that individual’s client if a) that foreign country’s law also recognizes privilege in the communications and b) the communications would meet the requirements for privilege in Canada had they been made between an individual whose name is entered on the Canadian register of patent agents or trademark agents and that individual’s client.
In the recent United States Court of Appeals for the Federal Circuit (“CAFC”) decision of In re Queen’s University at Kingston, No. 15-145, a majority of the CAFC recognized a limited patent agent privilege in the United States. Further, at least Australia, the United Kingdom, and Germany also extend some form of patent agent privilege in their respective jurisdictions. A communication with a patent agent of these or other countries that both a) is privileged under the law of that country and b) would satisfy the requirements for statutory Canadian patent agent privilege had the foreign patent agent been a Canadian patent agent may be privileged in Canada.