The most significant IP aspect of Bill C-59 is the proposed
amendments to the Patent Act and the Trademarks
Act to provide clients with a statutory privilege for
confidential communications with their patent agents and trademark
Pursuant to the proposed amendments, a communication between a
client and a registered Canadian patent agent or trademark agent
will be privileged if it meets the following three conditions:
it is between an agent (or individual acting on the agent's
behalf) and their client (or individual acting on the client's
it is intended to be confidential; and
it is made for the purpose of seeking or giving advice with
respect to any matter relating to the protection of an invention or
trademark (including geographical indications and official
The privilege protects against the disclosure of these
communications, or their substance, being compelled in an action or
The statutory privilege will also extend to communications
between a foreign agent and their client if (i) the three
conditions set out above are met and (ii) the communication
would be privileged in the jurisdiction in which the agent is
authorized to practice.
The proposed amendments also provide that the privilege can be
waived by the client (either explicitly or implicitly) and is
subject to the same exceptions as solicitor-client
Finally, the privilege will extend retroactively to
communications made prior to the date the legislation comes into
force, provided the communication is still confidential as of that
date. However, there is an express exclusion that the privilege
will not apply in respect of an action or proceeding commenced
before the date the legislation comes into force.
Extension of time limits and correction of errors
The proposed amendments also include changes to the
Industrial Design Act, the Trademarks Act and
the Patent Act which provide for:
the extension of time limits in unforeseen circumstances (for
example power outage, flood, ice storm, or the like); and
the authority to make regulations respecting the correction of
Extension of copyright term
Amendments are also proposed to the Copyright Act to
extend the term of copyright protection for sound recordings. In
particular, if a second recording is published before the expiry of
the initial copyright term of 50 years from the year of the first
fixation, the copyright term will be extended to the earlier of (i)
70 years after the year of the first publication and; (ii) 100
years after the year of the first fixation.
Timeline for implementation
Budget bills can be passed very quickly—within a matter of
two or three months. However, there are provisions in Bill C-59
regarding when each of the amendments will come into force. For
example, the amendments relating to patent agent and trademark
agent privilege only come into force 12 months after the Bill
receives Royal Assent.
For further information regarding the proposed changes to
Canada's IP laws, please contact us.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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