In anticipation of government amendments to the Patent Act, likely after completion of a trade agreement with the European Union, the Intellectual Property Institute of Canada (IPIC) has begun an internal consultation with IPIC patent committees for input from members on the types of amendments to the Patent Act that might be required in view of current Canadian caselaw and practices.

Two items that have attracted IPIC’s attention regarding potential amendments to the Patent Act include: (i) providing for protection of confidential communications made between a patent client and their patent agent; and (ii) prevention of the inadvertent loss of patent rights. Unlike several other jurisdictions, communications between a patent client and a patent agent in Canada are not subject to solicitor-client privilege, even though these communications often contain “legal advice” that would be privileged if it was provided by a lawyer rather than a patent agent.

With respect to inadvertent loss of rights, several jurisdictions, including the United States, Japan and the European Union have provisions to deal with force majeure situations that would result in a loss of rights and they have mechanisms to prevent inadvertent loss of rights through simple errors, such as clerical errors. Canada’s Patent Act does not currently have provisions to prevent the inadvertent loss of patent rights through such simple errors.

The consultation with IPIC committees is to further determine the other issues of concern to members that would require amending the Act. As a first step in this process, IPIC Council has asked each committee to prepare a preliminary list of issues by June 4, 2013. IPIC Council will review the preliminary lists from all committees at its June 12, 2013 meeting, set overall priorities and then assign committees specific items to develop into a submission to government.