Privilege for Patent and Trademark Agents

More changes are coming to intellectual property legislation as part of the latest federal budget announcements. Changes have been announced for the Patent Act, the Trade-marks Act, the Copyright Act and the Industrial Design Act.

These changes follow an overhaul of the intellectual property legislation last year (see previous article) to make Canada’s legislation more consistent with international treaties. The implementing regulations from last year’s changes are still being developed with implementation not expected until late 2016.

The latest changes were announced in the Budget in April 2015 and the specific proposed amendments included in Bill C-59, the budget implementation act, introduced in early May. Some additional amendments to the Copyright Act relating to access to works for people with disabilities were introduced in Bill C-65 in June.

Many of the details of the changes will not be known until the implementing regulations are registered.

Privilege for Patent and Trademark Agents – Statutory privilege, similar to solicitor-client privilege is being introduced for registered patent and trademark agents. The privilege is defined in the legislation as being “privileged in the same way as a communication that is subject to solicitor-client privilege”.

Recognition is also included for foreign patent agent privilege where the other country’s legislation provides for it and it would meet the definition in Canada, addressing case law that had refused to recognize foreign privilege (see for example, Lilly Icos LLC v. Pfizer Ireland Pharmaceuticals, 2006 FC 1465).

Privilege for patent and trademark agents has been a particular standing request of the Intellectual Property Institute of Canada (IPIC).

Correcting Errors – Increase flexibility is introduced for the Canadian Intellectual Property Office to waive fees or conditions where “the circumstances justify it” and to correct “obvious errors” in documents submitted by applicants. These changes are being introduced to the Patent Act, the Trade-marks Act and the Industrial Design Act.

Currently, the Patent Act allows corrections of “clerical errors” (Section 8). Some court decisions have interpreted this narrowly, stating in one instance, “I accept that a clerical error is an error that arises in the mechanical process of writing or transcribing and that its characteristic does not depend at all on its relative obviousness or the relative gravity or triviality of its consequences.” In Pason Systems Corp. v. Canada (Commissioner of Patents), 2006 FC 753, the Court allowed a judicial review of a correction made under this section, including on the basis that changes (replacing “increases” with “decreases”, among other changes) were not ‘clerical’.

Force Majeure – The legislation also provides the Canadian Intellectual Property Office additional flexibility to declare non-business days, extending deadlines for patent, trademarks and industrial designs. Previously, the patent office had limited options in the event of natural disasters or other problems to extend deadlines.

Copyright extension – Changes are also being made to the term of some performance rights and for published sound recordings to 70 years after the date the work is fixed. The term was previously 50 years. These changes will not be retroactive for works for which the copyright has already expired.

Copyright and the visually impaired – While all of the above amendments are included in the budget bill and therefore likely to be passed by the time this article is published, further changes to the Copyright Act were introduced separately. There is speculation that these changes will not pass before parliament breaks for the summer and the fall general election.

Bill C-65 would amend the Copyright Act to include exceptions to permit individuals with visual impairments, or non-profit organizations working on their before, to make copyright protected works accessible. These changes are intended to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled which was adopted in 2013.

What’s Next?

Intellectual property lawyers will be watching for the consultations on the various regulations associated with these changes. As mentioned above, a large package of regulations relating to last year’s amendments is still in the works. The regulations for this year’s changes will not likely take as long because less back office changes at the Canadian Intellectual Property Office are likely required to implement the changes.


  1. But it is still utterly perplexing why Ottawa decided that substantive changes to Canada’s intellectual property laws should have to be jammed into a Budget Implementation Bill, subject to the restraints that attach to fiscal measures, without the sort of committee review that one would expect for measures this substantive. Does the Government believe that we need these changes so badly? Or that we will be voting in the Autumn based on these reforms. The distinctions in parliamentary law between budget measures and normal legislation have been obliterated.

  2. This is the second time in a year that significant changes to intellectual property legislation have been made by way of a budget bill – see my earlier post linked in the first paragraph of the article.

    J. Aidan O’Neill and Ariel Thomas of Faskens wrote an article for Law Times last month on the copyright amendments being in the budget bill: