IPIC Calls on Industry Canada to Clarify Agent-Client Privilege Legislation

FOR IMMEDIATE RELEASE

(OTTAWA) February 3, 2022 – A decision of a Prothonotary of the Federal Court in JANSSEN Inc. and MITSUBISHI TANABE PHARMA Corporation v. SANDOZ CANADA Inc. (2021 FC 1265) in November of 2021 included an interpretation of the 2016 amendments to the Patent Act which granted privilege to communications between a patent agent and their client (Section 16.1 of the Patent Act). The Act extended the notion of privilege to those communications in the same way as communications protected under solicitor-client privilege. The Act went on to describe the conditions of the communications that could be protected, including language to cover all communications between a patent agent and their client : “the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention.” (emphasis added)

The Prothonotary’s decision was that only communications between a patent agent and the client relating to the protection of that client’s invention, and within the narrow scope of prosecution matters, can be privileged.

“IPIC’s extensive work with the government, over decades, led to the 2016 amendments to the Patent Act.  We do not believe this decision is in line with either the intent of government in creating agent-client privilege, or the language of the statute" said Adam Kingsley, CEO of the Intellectual Property Institute of Canada.

While this is only a decision of a Prothonotary, the interpretation  will stand until it is either overturned by a Federal Court Judge, or until there is a clarifying amendment to the Patent Act by Parliament. Since IPIC cannot predict when a Judge might consider the issue of the scope of the privilege afforded clients of patent agents, it  has begun advocacy work in search of a solution with federal officials at ISED, the Minister of Innovation, Science and Industry (ISI), and key members of the legislature. The IPIC Professional Regulation Committee has developed a briefing document for government and IPIC’s recommendation for a legislative amendment.

The decision has negatively affected the landscape for businesses which have been operating for more than five years under a regime in which they assumed their communications with patent and trademark agents in Canada are privileged and will be maintained in confidence, unless waived by the client.  As a result, IPIC has also recommended that The Honourable François-Philippe Champagne, Minister of Innovation, Science and Industry release a Ministerial note in the short term that clarifies the government’s intent in granting Patent Agent and Trademark Agent privilege in their respective governing legislation.

“The services that Canadian patent and trademark agents provide are not just application preparation and prosecution, they  include  post-grant procedures, and opinions on validity and infringement of the patents of both an agent’s client and third parties” said Louis-Pierre Gravelle, IPIC President and Partner at Bereskin & Parr LLP. 

Mr. Gravelle went on to add that “the agent profession in Canada goes through rigorous training and examination to become registered and qualified to provide, among other things, validity and infringement opinions and those communications between a registered agent and their client are confidential and need to be protected.”

Involving a lawyer in confidential communications between an agent and the agent’s client will not protect past communications from the time the agent-client privilege legislation was put in place, however it will unnecessarily increase the costs to businesses y seeking such advice going forward. This increase in cost will disproportionately impact sole inventors and small and medium enterprises in Canada, denying them access to justice and to timely strategic advice to help them build their businesses.

IPIC is calling on Industry Canada to clarify the intent of Parliament in creating the legislation as soon as possible to minimize any harm that may come to Canadian innovative companies in the short-term.

Contact:
Christina Locmelis, IPIC Director of Communications & Member Services, clocmelis@ipic.ca