Effective June 24, 2016, amendments to the Patent Act
and Trade-marks Act came into effect providing protection
for confidential communications between clients and their patent
agents and trademark agents made for the purpose of seeking or
giving advice with respect to any matter relating to the protection
of an invention or trademark, respectively (the implementing
legislation can be found here). With the amendments, these
communications with agents (whether or not they are also lawyers)
are intended be protected from disclosure in court and
administrative proceedings by a statutory privilege akin to
solicitor-client privilege or, in civil law, to the professional
secrecy of advocates and notaries.
Specifically, the Patent Act amendments provide that a
statutory privilege may apply to a communication that is: (a)
between an individual whose name is entered on the register of
patent agents and that individual's client; (b) intended to be
confidential; and (c) made for the purpose of seeking or giving
advice with respect to any matter relating to the protection of an
invention. Similarly, the Trade-marks Act amendments
provide that a statutory privilege may apply to a communication
that is: (a) between an individual whose name is included on the
list of trademark agents and that individual's client; (b)
intended to be confidential; and (c) made for the purpose of
seeking or giving advice with respect to any matter relating to the
protection of a trade-mark, geographical indication or certain
other section 9(1) prohibited marks.
These amendments should provide certainty surrounding
communications between clients, patent agents and trademark agents
and will bring Canada in line with the approach taken to such
communications in other common law countries that recognize
privilege. Moreover, the amendments allow for communications
protected as privileged by recognized patent agents and trademark
agents in other jurisdictions to be deemed to be privileged in
Canada where: (a) the communications are privileged under the law
of the foreign jurisdiction; and (b) the communications, if they
had been made by a Canadian agent, would otherwise have satisfied
the three requirements for Canadian statutory privilege.
Finally, these amendments have retroactive effect, applying to
communications made before June 24, 2016, so long as the
communications, in fact, remained confidential as of June 24, 2016.
The amendments do not, however, apply to court or administrative
proceedings commenced before June 24, 2016.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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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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