Privilege for Patent and Trademark Agents
As a result of Bill C-59, when passed, clients will enjoy a statutory privilege in their client communications with Canadian patent and trademark agents.
This will provide Canadian clients who use patent and trademark agents, whether or not 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-lawyer 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.
Martin:
I think that this statutory extension of solicitor-client privilege should be viewed with great concern.
Solicitor-client privilege in Canada is an extraordinary privilege. It is different from legal professional privilege in England and attorney client privilege in the United States. It is a substantive privilege with a quasi-constitutional basis. As the Supreme Court of Canada has repeatedly said, solicitor-client privilege is to be “all but absolute in recognition of the high public interest in maintaining the confidentiality of the solicitor-client relationship”. The exceptions to solicitor-client privilege are very limited: “The only exceptions recognized to the privilege are the narrowly guarded public safety and right to make full answer and defence exceptions”. Ontario (Public Safety and Security) v. Criminal Lawyers’ Association, [2010] 1 SCR 815
The reason for this vigour is discussed by Justice Cromwell in Canada (Attorney General) v. Federation of Law Societies of Canada, 2015 SCC 7 at para. 82:
“The centrality to the administration of justice of preventing misuse of the client’s confidential information, reflected in solicitor-client privilege, led the Court to conclude that the privilege required constitutional protection in the context of law office searches and seizures: see Lavallee. Solicitor-client privilege is “essential to the effective operation of the legal system”: (citation omitted). As Major J. put it in R. v. McClure, 2001 SCC 14 (CanLII), [2001] 1 S.C.R. 445, at para. 31: “The important relationship between a client and his or her lawyer stretches beyond the parties and is integral to the workings of the legal system itself” (emphasis added).”
Of course, there is a cost to achieving this benefit. Solicitor-client privilege is a bar against the ordinary truth-finding goal of the administration of justice. Given the rationale for solicitor-client privilege, this cost is worth bearing.
Solicitor-client privilege is different than other class privileges such as informer privilege, journalist privilege, litigation privilege, settlement privilege and the like. While protection is granted in these contexts, the vigour of the privilege is less because the rationale is different. For example, as said in the Sable Offshore Energy Inc. v. Ameron International Corp., [2013] 2 SCR 623, 2013 SCC 37 at para. 12
“Settlement privilege promotes settlements. As the weight of the jurisprudence confirms, it is a class privilege. As with other class privileges, while there is a prima facie presumption of inadmissibility, exceptions will be found “when the justice of the case requires it”: …”
While there may well be a justification for a class privilege in respect of client-agent communications, it is difficult to see how the justification for such a privilege could result in a substantive quasi-constitutional privilege privilege rather than a class privilege such as informer privilege, journalist privilege, litigation privilege and settlement privilege.
We should be scrupulous about accepting new privileges that do not yield “when the justice of the case requires it”.
As a final but important matter, lawyers are regulated by Law Societies who are entitled to
examine solicitor-client privileged information and who are regulate with a “duty to maintain and advance the cause of justice and the rule of law”. Lawyers are bound by Law Society ethical rules and the common law to protect the administration of justice and the rule of law.
While I of course do not suggest that lawyers are better people than anyone else, the training and supervision of lawyers is quite different than other professionals. This is, I think, of great importance to society in granting solicitor-client privilege to clients. Safeguards against abuse of privilege matter. The situation for trade mark and patent agents is quite different. Their training and ethical development is different, appropriately so given their role. They have no regulator authorized to examine solicitor-client privileged information. There are not bound by Codes of Conduct with ethical rules that protect the administration of justice and rule of law. They are not officers of the court.
I think that we should all be very concerned that solicitor-client privilege has been granted for agent-client communications without any apparent basis for not applying an ordinary class privilege and without apparent reflection on the nature and rationale in Canada for solicitor-client privilege.
Malcom,
I don’t see how the law societies being able to investigate privileged material should impact whether privilege applies or not.
The privilege is not the lawyer’s, its the clients. Its designed to protect their ability to freely communicate with their legal adviser. The law society may have limited ability to go through the files to protect the integrity of the profession, but not to publish the client’s privileged materials.
If the legal advice the client is seeking is patent advice, or trademark advice, then why should that advice be privileged if the agent happens to also be a lawyer, and not privileged when they aren’t? (There are some cases which actually took the view that patent drafts by a patent agent/lawyer was not privileged, but the legal advice of what to draft was).
Agents may not have a regulator but they are regulated. The patent and trademark acts both allow for setting registration requirements and renewal requirements. There have been pushes to put more formalized ethics and CPD requirements, but the reality is there isn’t the perceived need, as generally the profession seems to behave well professionally. (I should probably point out that many agents are also members of IPIC which has its own ethical code as well).
James
You address the subsidiary but and important point. There is a risk that clients and their lawyers will abuse solicitor and client privilege. However, the Law Society has the ability to examine solicitor client privileged information and discipline the lawyer if appropriate for abusing the administration of justice. This protects against abuse of the privilege. There is no professional regulator who can do the same in respect of agents. I don’t doubt that agents are good people who seem to behave well professionally. The same is true of lawyers. But, I think it a mistake to provide a near absolute zone of secrecy like solicitor-client unnecessarily which an ordinary class privilege would do especially without effective scrutiny. Like lawyers, some agents will not act properly.