Privilege for Patent and Trademark Agents

by Bennett Jones LLP
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As a result of Bill C-59, when passed, clients will enjoy a statutory privilege in their confidential communications with Canadian patent and trademark agents.

This will provide Canadian clients who use patent and trademark agents, whether or not such agents are also lawyers, more secure protection of their confidential communications. In Canada the law had been that non-lawyer patent agents or trademark agents do not benefit from professional legal privilege. As to patent agents, see Lumonics Research Ltd v Gould et al (1983), 70 C.P.R. (2d) 11 (FCA). As to trademark agents, see Visa International Service Assn v Visa Travel International Ltd (1983), 74 C.P.R. (2d) 243 (FCTD).

Privilege for Patent Agents

A new Section 16.1 is proposed to be introduced into the Patent Act, RSC 1985, c P-4, and would provide that a communication would be privileged in the same way as a communication that is subject to solicitor-client privilege and no person shall be required to disclose or give testimony on the communication in civil, criminal or administrative proceedings provided that the communication meets certain conditions. Firstly, the communication would need to be between an individual who is a registered patent agent and that individual’s client. Secondly, the communication would need to be intended to be confidential. Thirdly, the communication must be for the purpose of “seeking or giving advice with respect to any matter relating to the protection of an invention”. Of course, the client can expressly or implicitly waive the privilege claim.

The statutory privilege would be subject to those (few) exceptions also applicable to solicitor-client privilege.

The scope of the statutory privilege would apply in cases where the patent agent is seeking to advise on “any matter” in respect of “the protection of an invention”. The wording does not limit the invention to that of the client and so the scope of the statutory privilege would appear, at first instance, to also include giving advice as to the validity or infringement of a patent of a third party.

Importantly, where a patent agent is working in another country that also provides a privilege in that country, communications that meet the above criteria would also be privileged in Canada. This addresses a problem seen, for example, in the decision in Lilly Icos LLC v Pfizer Ireland Pharmaceuticals, 2006 FC 1465, where Lilly sought to impeach Pfizer’s patent on the Cialis drug and sought to get access to communications between the inventors and the U.K. Patent Attorneys (who are non-lawyer patent agents). Pfizer refused to answer questions seeking disclosure and production of those communications during examination for discovery on the basis that those communications were privileged in the U.K. and that that privilege should be recognized in Canada. Upon review, the Prothonotary ordered that these questions be answered. The Federal Court appeal of that decision found that the U.K. legislation did not apply in Canada and ought not to be applied as a matter of comity to exclude this evidence.

Privilege for Trademark Agents

Similar to the statutory privilege for registered patent agents, a new Section 51.13 is proposed to amend the Trademarks Act, RSC 1985, c T-13. That amendment provides that a communication would be privileged in the same way as a communication that is subject to solicitor-client privilege and no person shall be required to disclose or give testimony on the communication in civil, criminal or administrative proceedings provided that the communication meets certain conditions. Firstly, the communication would need to be between an individual who is on the list of registered trademark agents and that individual’s client. Secondly, the communication would need to be intended to be confidential. Thirdly, the communication must be 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)”.

As in the case of the statutory privilege under the Patent Act, the client can expressly or implicitly waive the privilege claim.

The scope of the statutory privilege would apply in cases where the trademark agent is seeking to advise on “any matter” in respect of “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)”. The wording does not limit the mark to that of the client and so the scope of the statutory privilege would appear at first instance to also include giving advice as to the validity or infringement of the limited list of marks.

Noteworthy that the provision for a statutory privilege under the Trademarks Act does not appear to include non-trademark trade names which may be protected under Section 7 nor all of the prohibited marks under Section 9. The prohibited marks that can be subject of statutory privilege would be limited to, with conditions: (a) arms, crests or flags adopted by any province or municipal corporation (S. 9(1)(e); (b) territorial or civil flags or any national, territorial or civic arms, crest or emblem, of a country of the Union (S. 9(1)(i)); (c) official signs or hallmarks indicating control or warranty adopted by a country of the Union (S. 9(1)(i.1); armorial bearings, flags or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization (S. 9(1)(i.3); (d) badges, crests, emblems or marks of the armed forces, of a university or of a public authority (S. 9(1)(n)); and (e) armorial bearings granted, recorded or approved for use by a recipient pursuant to the prerogative powers of Her Majesty (S. 9(1)(n.1).

Similarly to the patent reform, where a trademark agent is working in another country that also provides a privilege in that country, communications that meet the above criteria would be privileged in Canada.

Statutory Privilege Also Protects Lawyer Agents

The statutory reform aids the preservation of the confidential client relationship between both non-lawyers as well as lawyers who are registered patent and trademark agents. Canadian Courts have found that where a lawyer who is also a patent agent serves in that latter function then the normal solicitor client privilege may not be applicable. See Laboratories Servier v Apotex Inc, 2008 FC 321 (FC), where, at para. 28, Madam Justice Snider noted:

… the courts have held, depending on the facts before them, that privilege might not arise where the lawyer who is also a patent agent acted in his or her capacity as a patent agent. (Lumonics Research Ltd v. Gould (1983), 70 C.P.R. (2d) 11 at 15 (F.C.A.); Montreal Fast Print (1975) Ltd. v. Polylok Corp. (1983), 74 C.P.R. (2d) 34 (F.C.T.D.); Whirlpool Corp. v. Camco Inc. (1997), 72 C.P.R. (3d) 444 (F.C.T.D.)). In such situations, the trial judge will be in the best position to decide whether the lawyer was acting as a patent agent or as a solicitor.

The same issue arises for lawyers who are also registered trademark agents. See Rentokil Group Ltd v Barrigar & Oyen (1983), 75 C.P.R. (2d) 10 (FCTD). The change in the law therefore also adds further certainty to the protection of confidential communications made by patent or trademark agents who are also lawyers.

Retroactive Effect

The statutory privilege will apply retroactively to protect communications that were made before the provision comes into effect provided that such communications are still confidential but it will not act retroactively in respect of an action or proceeding commenced before the law comes into effect.

Bill C-59 provides that the statutory privilege provisions would come into force 12 months after the day that the Bill receives royal assent.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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