The Federal Court of Canada (“FCC”) was called upon to address the scope of patent agent privilege as it applies under section 16.1 of the Patent Act, RSC 1985, c P-4 (“Patent Act”), which contains amendments made in 2016 that provide privilege to certain communications made between clients and patent agents. According to section 16.1(1)(c) of the Patent Act, communications between an individual entered on the register of patent agents and the individual’s client will be eligible for privileged treatment if the communication was intended to be confidential and was made for the purpose of “… seeking or giving advice with respect to any matter relating to the protection of an invention”.
The case at hand was brought to the Case Management Judge by way of motion in a proceeding under Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (“PM(NOC)”). The Plaintiffs had produced several documents that had been partially redacted on the basis of privilege, and the propriety of some of these redactions were challenged by the defendant.
The Court confirmed that patent agent privilege only applies if each of the three conditions of section 16.1 of the Patent Act are met. The communications must be between the patent agent and their client, they must be intended to be confidential, and they must have been made for the purpose of seeking or giving advice with respect to any matter relating to the protection of the invention. Emphasis was put on the final requirement, in which the communication must be related to the protection of the invention to secure any privilege .
The opinion of the court was that a narrow reading of section 16.1 is supported by the context of the statutory scheme of the Patent Act. In quoting the Supreme Court in Apotex v Sanofi, 2008 SCC 61 at para 12, the opinion of the Court was that “There is no inherent common law right to a patent. An inventor gets his patent according to the terms of the Patent Act, no more and no less.”. The Court asserted that similarly, there is no common law right to patent agent privilege, and that it is limited by the language of the Patent Act .
It was further emphasised by the Court that communications relating to the protection of an invention do not extend to an analysis as to whether a product infringes third party patent rights, as a non-infringement analysis does not strictly relate to the disclosure of the invention, and it does not advance the protection of an invention . Additionally, research reports that have not been expressly established as communications to or from a patent agent would not qualify for patent agent privilege .
However, the Court held that privilege attaches itself to communication between a client and patent agent even if the communication is relayed within a company, and moreover, privilege is not waived if the communication is incorporated into another document that was not authored by a patent agent or directly related to the protection of an invention. The protective bubble of privilege would surround the communication, even if it was moved from one document to another or from one employee to another within the company .
Section 16.1 of the Patent Act leaves room for much debate when analysing whether a communication is privileged, mainly due to the vastness of the phrase “…any matter…” being paired in contrast to the restricted phrase “… relating to the protection of an invention…”. It can be argued that this provision could have been interpreted as being broad enough to include matters pertaining to whether a protection is justifiable at law, for example, patent validity, or whether activities of an alleged infringer come under the “protection” of the invention offered by the patent, for example an infringement opinion. Patent agents must be competent in drafting both validity and infringement opinions, and as such, this broad interpretation could be reinforced by this fact.
Nonetheless, this decision now puts patent agents in a position in which they must warn their clients that certain communications them that do not directly relate to the protection of the client’s patent rights may not always be protected. While non-infringement and patent strategy opinions are of utmost importance to the manner in which a client will conduct their business, they are not directly related to the protection of their patent rights under the Patent Act. As such, it is important for clients and patent agents to consider involving a lawyer when communicating on issues that are outside of the protected scope, so that solicitor-client privilege may attach itself to such communications.
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