By virtue of amendments to the Canadian Patent Act and
Trademarks Act introduced in Bill C-59 (An Act to
implement certain provisions of the budget tabled in Parliament on
April 21, 2015 and other measures), which received royal
assent on June 23, 2015, statutory privilege between Canadian
patent and trademark agents and their clients comes into force as
of June 24, 2016.
Specifically, Bill C-59 has added section 16.1 to the Patent
Act and section 51.13 to the Trademarks Act, which
provide that a communication is privileged in the same way as a
communication that is subject to solicitor-client privilege, and
that no person shall be required to disclose, or give testimony on,
the communication in a civil, criminal or administrative action or
proceeding, provided that the communication meets certain
conditions. These conditions require the communication to
(a) between a person who is a registered patent agent/trademark
agent and that person’s client, (b) intended to be
(c) made for the purpose of seeking or giving advice with
respect to any matter relating to the protection of an invention,
or a trademark, official mark or geographical indication
protectable under the Trademarks Act, respectively.
The statutory privilege is subject to those exceptions that
apply to solicitor-client privilege, and privilege can be expressly
or implicitly waived by the client.
Further, the statutory privilege extends to communications with
patent/trademark agents working in other countries that provide
privilege, provided that the communications meet the above-noted
Privilege will apply retroactively to communications made prior
to the date the legislation comes into force, provided that such
communications have remained confidential; however, privilege will
not apply in respect of an action or proceeding commenced before
This new statutory privilege represents a significant
improvement to Canada's intellectual property regime, as it
provides clients who use patent and trademark agents with more
secure protection of their confidential communications, bringing
Canada in line with other jurisdictions where such privilege is
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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