FCA Refuses to Recognize European Patent Attorney Privilege in Canadian Litigation

FCA Refuses to Recognize European Patent Attorney Privilege in Canadian Litigation

SNF Inc v CIBA Speciality Chemicals Water Treatments Limited, 2014 FC 616

In the context of a patent infringement action, SNF alleged that CIBA made “materially misleading statements in its patent for the purpose of misleading the Canadian Patent Office and the public.” [4] At issue was the disclosure of documents, over which CIBA claimed European patent attorney, Wigmore, litigation, and solicitor-client privileges.

Claims of European patent attorney, Wigmore, and litigation privileges were rejected. Traditional solicitor-client privilege was upheld in connection with a limited number of documents.

Addressing European patent attorney privilege, the Court confirmed that “the privilege accorded elsewhere to European patent attorneys does not extend to Canadian litigation.” [9]

Turning to the Wigmore test for privilege, the Court noted that “a mistaken understanding of the applicable law”, caused in part by a different law in a different jurisdiction, “is not a solid ground for recognizing the legitimacy of the expectation” for privilege. [15]

The Court went on to state that “[w]hile there may be some merit to the essentiality of confidence [in communications between client and patent agent] as a patent is developed, once the patent application is filed, the interests of the litigation process must be given precedence when it comes to relevant documents.” [16] Ultimately the Court did not allow the claim of privilege under the Wigmore test.

CIBA’s argument based on comity between Canadian and foreign courts was also rejected because, the Court noted, privilege is not available to Canadian patent agents and granting foreign patent agents dealing with Canadian patents privilege would create an unjustified, “asymmetrical relationship”. [20]

Next, the Court addressed litigation privilege. The Court pointed out that many of CIBA’s communications did not involve a solicitor, and thus could not claim the benefit of litigation privilege. [23] On the issue of a realistic anticipation of litigation required to found litigation privilege, the Court remained unconvinced that a protest filed with the patent office “per se gives rise to a realistic anticipation of litigation.” [27] The Court rejected CIBA’s claim for this type of privilege.

On the issue of waiver of privilege, SNF argued that since some of the documents over which CIBA claimed privilege had been disclosed, “fairness and consistency requires” others should be disclosed also. [30] The Court stated that any waiver would be “restricted to the particular class of privilege claimed.” [31] Since the disclosed documents were claimed to be protected under Wigmore and European patent agent privileges, any waiver would not affect documents claimed to be protected under solicitor-client privilege. [31]


The Court’s reasons for rejecting CIBA’s argument based on comity is interesting. Although recognizing foreign patent agent privilege in Canada, where privilege is not available to Canadian patent agents, would create an “asymmetrical relationship”, the authors wonder if such asymmetry is unjustified in all circumstances. Privilege is recognized in communications between Canadian patent agents and clients in a number of jurisdictions, such as Australia and New Zealand. The authors suggest that comity would dictate that Canadian courts ought to recognize privilege of Australian and New Zealand patent attorneys in such a circumstance.