May 4, 2016
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Nelligan O'Brien Payne gratefully acknowledges the contribution of Erin Walkinshaw, Student-at-Law in writing this article. Read more information on our Articling Program.

While solicitor-client privilege is one of the hallmarks of the Canadian legal system, this privilege has historically not extended to non-lawyer patent and trademark agents.

Since the early 2000s, interested parties have lobbied for and against extending it to patent and trademark agents. While some argue that extending this privilege will align Canada with international trends and allow us to compete in the global market, others caution that we need to be careful when departing from the principles of openness and full disclosure in the courts.

The debate is now over.

Amendments to the Patent Act and Trade-marks Act will come into force on June 23, 2016, granting a statutory privilege to patent and trademark agents in Canada. 

These amendments are the result of Bill C-59, which received royal assent in June 2015. You can read about the details of the particular amendments and conditions that must be met to fall within this new privilege in our blog post here.

Almost foreshadowing this incoming legislation was a decision released by the majority of the United States Court of Appeals for the Federal Circuit (“CAFC”) on March 7, 2016. The case recognized a limited privilege for communications between patent agents and their clients, in a case involving Queen’s University (“Queen’s”).

The dispute in In Re Queen’s University at Kingston came about as a result of the university’s refusal to produce documents in relation to their patent infringement suit against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively “Samsung”). Queen’s claimed privilege on these documents, including ones that involved “communications between Queen’s University employees and registered non-lawyer patent agents discussing the prosecution of the patents-in-suit.”

Samsung successfully obtained an order to compel the university to produce the documents. The magistrate judge found that the communications were not subject to “attorney-client” privilege and that no patent agent privilege exists. However, the court agreed to stay the production of the documents pending Queen’s petition to the CAFC to overturn the production order.

In a 2-1 decision, the majority of the CAFC ordered the district court to withdraw its order compelling production, and ultimately created a new independent patent agent privilege for the following reasons:

  • The unique roles of patent agents
  • The U.S. Supreme Court’s characterization of their activities – being the preparation and prosecution of patent applications for others – as falling within the practice of law
  • Their statutory authority from Congress to practice this area of law before the Patent Office
  • The current realities of patent litigation.

The majority noted that “[a] client has a reasonable expectation that all communications relating to ‘obtaining legal advice on patentability and legal services in preparing a patent application’ will be kept privileged,” and that such privilege should apply to both attorneys and patent agents equally.

The majority further held that the scope of the privilege will be limited to communications that fall within the activities authorized by statute, including preparing and prosecuting patent applications, consulting with or giving advice to a client in contemplation of filing a patent application or other document, as well as drafting various documents and communications to the Patent Office and appellant boards.

The privilege will also apply to communications that “are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office”.

Interestingly, the majority specifically held that “communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not ‘reasonably necessary and incident,’” as described above.

Judge Reyna, in dissent, notes the uncertainty of the scope of this new privilege. Specifically, he states that federal regulations allow patent agents to prepare an opinion on the validity of another party’s patent when a client is contemplating litigation in some circumstances. He therefore found that under the majority’s new agent-client privilege, some validity opinions will be privileged while others will not, depending on the client’s intent in seeking the opinion.

In Canada, the new amendments define the scope of the privilege as seeking or giving advice with respect to “any matter relating to the protection of an invention” or “any matter relating to the protection of a trade-mark, geographical indication or mark referred to” in specified subsections.

In contrast to the U.S. decision, some legal commentators have suggested Canada’s new amendments may be interpreted to extend privilege to advice on the validity or infringement of a third party’s patent. Whether this U.S. decision will influence Canadian courts away from such an interpretation remains to be seen. 

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2017 Nelligan O’Brien Payne LLP.