Upcoming amendments to the Patent Act (introduced by way of Bill C-59, Economic Action Plan, 2015) will recognize patent agent privilege for the first time in Canada. The recognition of this statutory privilege is not limited to Canadian patent agents; it can extend to foreign patent agents that enjoy such privilege in their home countries as well. These substantive amendments will come into effect on June 23, 2016.
Historically, the law in Canada did not recognize patent agent privilege, including with respect to communications between clients and their foreign patent agents who enjoyed certain protections in their home countries. One of the earlier cases to deal with this issue was Lilly Icos LLC v Pfizer Ireland Pharmaceuticals, 2006 FC 1465 (“Lilly Icos”). In that case, the defendant argued that communications between the inventors and their UK patent agents ought not to be ordered to be disclosed on the basis that those communications were privileged in the UK and that this privilege should be recognized in Canada. The Court observed that judicial comity did not require Canada to recognize a privilege not established in Canada. Similarly, in SNF Inc v CIBA Specialty Chemicals Water Treatments Limited, 2014 FC 616 (“SNF”), the plaintiff sought disclosure of communications between employees of the defendant companies and a European patent attorney (the equivalent of a patent agent in Canada) relating to opinions on the preparation and prosecution of the patent in issue. The Court refused to recognize European patent attorney privilege even though the employees might have expected the communications to be privileged upon the state of the law in England, where the patent attorney practised. In rejecting an argument based on judicial comity, the Court noted that recognizing foreign patent attorney would result in “recognition of a foreign patent agent privileged relationship (on terms which may vary by jurisdiction) not available to Canadian patent agents” (paragraph 20).
The upcoming amendments will recognize a foreign patent agent privileged relationship in Canada to the extent that the pre-conditions for the Canadian statutory privilege are also met. In particular, pursuant to new subsection 16.1(4), the statutory privilege extends to a communication with a foreign patent agent where such communication is privileged in the foreign patent agent’s home country and satisfies the pre-conditions set out in new subsection 16.1(1). This new subsection requires that: first, there must be communication between a registered patent agent and his or her client; second, the communication must be intended to be confidential; and, third, the communication must be made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention.
Practically speaking, patentees often seek patent protection for the same invention in multiple countries where they have business interests, and do so on a country by country basis. Legal proceedings instituted on those patents are often multi-jurisdictional, as the same or related parties litigate their disputes on those corresponding patents on the basis of the patent laws of the respective countries. Situations may therefore arise, similar to the Lilly Icos and SNF type cases, where communications between a client and a patent agent in one country may become relevant to issues being fought in another country. Whether foreign patent agent privilege is recognized in the country where disclosure is sought will be important in such situations.
The approach to foreign patent agent privilege varies by jurisdiction such that there may be asymmetry in the scope of patent agent privilege recognized in two given countries. For example, Australia broadened its statutory privilege to foreign patent attorneys in 2013 which protects all communications, records and documents made for the purpose of a registered patent attorney providing intellectual property advice to a client. A similar provision has been in effect in New Zealand since 2007. In the United Kingdom, on the other hand, communications with a foreign patent attorney or agent is not expressly protected by statutory provisions, although the UK has extended privilege protection to communications with its domestic patent attorneys in respect of advice concerning protection of inventions. As for the United States, there is currently no categorical statutory privilege for communications with patent agents.
The lack of a consistent approach to foreign patent agent privilege in various countries raises concerns for patentees, since otherwise privileged information exchanged in one jurisdiction may be subject to disclosure in another. For example, a communication considered privileged by statute in Canada may not be offered the same protections in the United States or the UK. This can create some uncertainty for patentees who communicate information in confidence, with peace of mind that it would be protected, only to find it come into the public eye years later by the order of a foreign court.
The extension of Canadian statutory privilege to foreign patent agents that enjoy such privilege in their home countries recognizes the practical reality of the multi-jurisdictional nature of patent protection and litigation. The requirement that a communication be qualified for privilege in a foreign agent’s home country in addition to satisfying the relevant Canadian requirements is a consistent and fair balance between a client’s expectations of privilege, Canada’s respect for other jurisdictions’ practices, and ensuring that foreign agents will not be treated more favourably than Canadian agents in Canada.
A version of this article was published by LexisNexis in The Lawyers Weekly, 22 January 2016