In Canada, there are practising patent agents and trademarks agents who are not lawyers. They are not admitted to any bar of any province or territory in Canada and are not members of any law society. The College of Patent Agents & Trademark Agents (CPATA) is the recently created regulator of patent and trademark agents in Canada in respect of their agency practises. CPATA regulates agents who are and who are not lawyers. The relevant issue is the privilege which applies to agents who are not also lawyers and in this instance specifically to patent agents who are not also lawyers.
Much of the intellectual property litigation in Canada takes place before the Federal Court. Prothonotaries, appointed under the Federal Courts Act (s. 12), are judicial officers and exercise many of the powers and functions of Federal Court judges. The recent JANSSEN decision of one of the Prothonotaries of the Federal Court deals with patent agent privilege see JANSSEN Inc. and MITSUBISHI TANABE PHARMA Corporation v. SANDOZ CANADA Inc. (2021 FC 1265). (the "Decision").
There was an attempt to address patent agent privilege in the 2016 amendments to the Canadian Patent Act. Section 16.1 of the Patent Act was intended to provide privilege in certain communications with patent agents. It sets out the conditions for a patent agent's communication to be privileged, such that disclosure or testimony on the agent's communication is not required in litigation. As is known, a communication that is subject to solicitor-client privilege does not have to be disclosed. If the patent agent is not a lawyer, solicitor-client privilege does not apply.
Section 16.1 of the Patent Act states that patent agent privilege applies if each of three conditions set out therein are met. The Decision confirmed that the communication must be:
- Between the patent agent and their client;
- Intended to be confidential; and
- Made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention.
If the communication meets the above conditions, it is privileged. The Decision went on to hold that the above amendment does not show an intention to attach privilege to any and all communications between patent agents and their clients.
In focusing on the third condition, the Decision noted that patent agents and lawyers are not placed on equal footing with respect to the privilege that attaches to their client communications. The Decision held that if all communications between patent agents and clients were intended to be privileged, broader language would have been used in Section 16.1 and that use of the word "protection" limited the privilege provided.
The privilege provided in Section 16.1 for communications "relating to the protection of an invention" does not extend to an analysis by a patent agent as to whether a product infringes third-party patent rights. Such a non-infringement opinion for a product may identify business and litigation risk, but does not advance the protection of an invention, such as by obtaining patent protection. Therefore, not all such communications with a patent agent will be subject to privilege under the Patent Act.
While this is a decision of the Prothonotary of the Federal Court, until overturned by a judge, it governs patent agents and the work they do for their clients. Clients must be careful in retaining patent agents who are not also lawyers for certain work. A client should insist that non-infringement and validity opinions are prepared by a patent agent who is also a lawyer and, if not, then by a nonlawyer patent agent with a lawyer so that solicitor-client privilege applies.
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