For the first time, the Federal Court interpreted the privilege granted to a non-lawyer patent agent by section 16.1(1) of the Patent Act in Janssen Inc and Mitsubishi Tanabe Pharma Corporation v Sandoz Canada Inc, 2021 FC 1265.
In its decision, the court determined that the privilege is restricted compared to the client-attorney privilege between a lawyer and the client because the language of the section provides that the communication must be between an agent and the client must relate to “the protection of an invention” to qualify for the privilege. As such, not all communications between a non-lawyer patent agent and a client may qualify for the privilege.
In particular, the court determined that the privilege granted by section 16.1 of the Patent Act applies only to agent-client communications with respect to the client’s own patent rights. If the communications relate to whether a product infringes the patent rights of a third party, for example, a freedom to operate opinion or a non-infringement opinion, the privilege does not apply. The court reasoned that such communications do not “relate to the disclosure of the invention”, “contribute to the patent bargain,” or “advance the protection of an invention, including obtaining patent protection.”
The decision clarifies that the privilege granted by section 16.1 of the Patent Act to the patent agents is much narrower than the protection that is traditionally available for client-lawyer communications. Thus, it is prudent to involve a lawyer, or better yet, a lawyer who is also a patent agent, so that the client-lawyer privilege applies, especially when the communications relate to matters outside of the scope of “the protection of an invention.”
Similar limitation may apply to the privilege between a trademark agent and a client as granted by section 51.13 (1) of the Trademarks Act. This section requires the communications to relate to “the protection of a trademark, geographical indication or mark” to qualify for the privilege. Thus, the same caution as discussed above with respect to patent agents may also apply regarding trademark agents.
What remains to be seen is whether the privilege extends to communications related to an opinion with respect to whether a product infringes a client’s patent rights. At this moment, it is up to the client to decide whether to take the risk regarding such communications.
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