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
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
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).
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
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
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
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.
For further information regarding these and other changes to
Canada's Trademarks Act and Patent
Act, please contact a member of our Trademarks or Patent Groups.
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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