As of June 24, 2016 clients will enjoy the same level of
privilege with their Canadian patent and trademark agents as they
do with their lawyers. This statutory privilege applies
retroactively to any confidential communications made prior to this
date, but does not apply to ongoing actions or proceedings.
Bill C-59 (An Act to implement certain provisions of the budget
tabled in Parliament on April 21, 2015 and other measures) amends
the Patent Act to include a new section 16.1, and the Trade-marks
Act to include a new section 51.13. This provides for statutory
privilege, equivalent to solicitor-client privilege, or in civil
law, to professional secrecy of advocates and notaries, to apply to
certain communications between clients and registered patent and
trademark agents, respectively. Privileged communications are not
required to be disclosed, or testified on, in any civil, criminal,
or administrative action or proceeding. The exceptions to
solicitor-client privilege, or in civil law, to professional
secrecy of advocates and notaries apply. The conditions that must
be met to benefit from the protection of the statutory privilege
The communication must be between an individual whose name is
included on the list of trademark agents and that individual's
it is intended to be confidential; and
in the case of patents, it is made for the purpose of seeking
or giving advice with respect to any matter relating to the
protection of an invention; or in the case of trademarks, it is
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 mark referred to in paragraph 9(1)(e), (i), (i.1),
(i.3), (n) or (n.1) of the Trade-marks Act. The new amendments also
allow privilege to apply when working with foreign agents providing
the conditions listed above are met, and the agent is protected by
privilege in their home jurisdiction.
Privilege does not apply if the client impliedly or expressly
has waived it.
This change brings Canada in alignment with other common law
jurisdictions that provide privilege for certain communications
with patent and trademark agents.
About Norton Rose Fulbright Canada LLP
Norton Rose Fulbright is a global law firm. We provide the
world's preeminent corporations and financial institutions with
a full business law service. We have 3800 lawyers and other legal
staff based in more than 50 cities across Europe, the United
States, Canada, Latin America, Asia, Australia, Africa, the Middle
East and Central Asia.
Recognized for our industry focus, we are strong across all the
key industry sectors: financial institutions; energy;
infrastructure, mining and commodities; transport; technology and
innovation; and life sciences and healthcare.
Wherever we are, we operate in accordance with our global
business principles of quality, unity and integrity. We aim to
provide the highest possible standard of legal service in each of
our offices and to maintain that level of quality at every point of
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).