Bill C-59 provides statutory privilege for confidential communications between patent and trademark agents and their clients. Bill C-59 received royal assent on June 23, 2015 and comes into effect June 23, 2016. The new statutory privilege will also apply retroactively to protect communications that are made before June 23, 2016 but will not apply in actions or proceedings commenced before June 23, 2016.

According to the Patent Rules, every applicant for a patent, who is not the inventor, must appoint a patent agent to bring a patent application before the Canadian Intellectual Property Office (the “CIPO”). Similarly, applicants for a trademark may appoint a trademark agent to bring a trademark application before the CIPO. Some patent and trademark agents are also lawyers, while others are not.

The distinction between lawyer agents and non-lawyer agents raises significant issues as to the protection of confidential information shared between an applicant and their patent and trademark agents. Patent and trademark agents often perform tasks similar to that of lawyers, which may require communications of a confidential nature. Currently, no privilege covers these confidential communications (1) and, in the event of litigation, these confidential communications may need to be produced and could be admissible as evidence. In some cases, even solicitor-client privilege has been held not to apply to communications with lawyers acting in their capacity as an agent (2).

Privilege for Patent Agents

Bill C-59 introduces section 16.1 to the Patent Act providing that communication between a patent agent and a client is privileged in the same way as a communication 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 proceeding provided that the communication meets certain conditions. The conditions require that:

1. the communication is between an individual whose name is entered on the register of patent agents and that individual’s client, or a person acting on behalf of either of these persons;
2. the communication is intended to be confidential; and
3. the communication is made for the purpose of seeking or giving advice about any matter relating to the protection of an invention.

Privilege for Trademark Agents

Bill C-59 introduces section 51.13 to the Trade-marks Act providing that communication between a trademark agent and a client is also privileged in the same way as a communication 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 proceeding provided that the communication meets certain conditions. Similar conditions apply to those of the Patent Act, namely that:

1. the communication is between an individual whose name is included on the list of trademark agents and that individual’s client, or a person acting on behalf of either of these persons;
2. the communication is intended to be confidential; and
3. the communication is made for the purpose of seeking or giving advice about any matter relating to the protection of a trademark, geographical indication or other type of mark referred to in specific sections of the Trade-marks Act.

The statutory privilege granted to patent and trademark agents will also extend to persons authorized to act as patent or trademark agents under the laws of foreign countries, provided that the communication at issue is privileged under the law of that foreign country, and would have met the requirements for privilege imposed by the Canadian legislation had the foreign agent been on the list of Canadian patent or trademark agents.

The addition of a statutory privilege to Canadian patent and trademark legislation brings welcome clarity to the intellectual property profession in Canada.

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(1) For patent agents, see Lumonics Research Ltd v Gould et al (1983), 70 C.P.R. (2d) 11 (FCA); for trademark agents, see Visa International Service Assn v Visa Travel International Ltd (1983), 74 C.P.R. (2d) 243 (FCTD).

(2) Laboratories Servier v Apotex Inc, 2008 FC 321 (FC) at para. 28.