As of June 24, 2016 clients will enjoy the same level of privilege with their Canadian patent and trademark agents as they do with their lawyers. This statutory privilege applies retroactively to any confidential communications made prior to this date, but does not apply to ongoing actions or proceedings.
Bill C-59 (An Act to implement certain provisions of the budget tabled in Parliament on April 21, 2015 and other measures) amends the Patent Act to include a new section 16.1, and the Trade-marks Act to include a new section 51.13. This provides for statutory privilege, equivalent to solicitor-client privilege, or in civil law, to professional secrecy of advocates and notaries, to apply to certain communications between clients and registered patent and trademark agents, respectively. Privileged communications are not required to be disclosed, or testified on, in any civil, criminal, or administrative action or proceeding. The exceptions to solicitor-client privilege, or in civil law, to professional secrecy of advocates and notaries apply. The conditions that must be met to benefit from the protection of the statutory privilege are:
- The communication must be between an individual whose name is included on the list of trademark agents and that individual’s client;
- it is intended to be confidential; and
- in the case of patents, it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention; or in the case of trademarks, it is made 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) of the Trade-marks Act. The new amendments also allow privilege to apply when working with foreign agents providing the conditions listed above are met, and the agent is protected by privilege in their home jurisdiction.
- Privilege does not apply if the client impliedly or expressly has waived it.
This change brings Canada in alignment with other common law jurisdictions that provide privilege for certain communications with patent and trademark agents.