Canada Now Recognizes Patent and Trademark Agent Privilege

On June 24, 2016, statutory provisions concerning patent and trademark agent privilege came into force in Canada (see section 16.1 of the Patent Act and section 51.13 of the Trade-marks Act).  As we previously reported in the E-TIPS® Newsletter, these provisions protect confidential communications between clients and their patent or trademark agents where a communication meets the following conditions:

1. it is between a registered agent (or individual acting on the agent’s behalf) and his or her client (or individual acting on the client’s behalf);
2. it is intended to be confidential; and
3. it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention or trademark (including geographical indications and official marks).

The statutory privilege also extends to communications between a foreign agent and his or her client provided that (1) they would be privileged in the jurisdiction in which the agent is authorized to practice, and (2) the above three conditions are met.

While the privilege provisions became effective on June 24, 2016, they will apply retroactively as long as the communication remains confidential and is not subject to litigation commenced before that date.