We are glad to report that the Canadian Federal Government Bill C-59, “An Act to implement certain provisions of the budget tabled in Parliament on April 21, 2015 and other measures”, introduced in Parliament on May 7, 2015, has received Royal Assent on June 23rd, 2015.
Bill C-59 provides protection of confidential communications between innovators and their Intellectual Property (IP) advisors from forced disclosure to third parties during litigation, and also provides the Canadian Intellectual Property Office (CIPO) with the ability to extend deadlines in cases of force majeure events, which will help avoid unintentional loss of IP rights.
Bill C-59 amends the Patent Act and the Trade-marks Act by granting statutory privilege to confidential communications arising between non lawyer patent agents as well as lawyer patent agents and their clients, and between non lawyer trade-mark agents as well as lawyer trade-mark agents and their clients, equivalent to solicitor-client privilege, provided those communications relate to advice respecting protection over an invention or trade-mark protection, respectively.
More particularly, a communication between a client and a registered Canadian patent agent or registered Canadian trademark agent will be privileged if it meets the conditions under Sections 54 and 66 of Bill C-59:
54. The Act is amended by adding the following after section 16:
16.1 (1) A communication that meets the following conditions is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries, and no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding:
66. The trade-marks Act is amended by adding the following after section 51.12:
51.13 (1) A communication that meets the following conditions is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries, and no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding:
The privilege provisions at sections 54 and 66 of Bill C-59, will come in effect as of June 23, 2016. The privilege will extend retroactively to communications made prior to June 23, 2016, provided the communication is still confidential as of that date. However, the privilege will not apply in respect of an action or proceeding commenced before June 23, 2016.
The privilege protects against the disclosure of these communications, or their substance, being compelled in an action or proceeding. The amendments also provide that the privilege can be waived by the client (either explicitly or implicitly) and is subject to the same exceptions as solicitor-client privilege.
The statutory privilege also applies to communications between a foreign non lawyer agent and a foreign lawyer agent and their client if the three conditions set out above are met and the communication would be privileged in the jurisdiction in which the foreign agent is authorized to practice.
The new Canadian statutory privilege for patent and trademark agents is being introduced notably in view of the status of common law Intellectual Property agent privilege in the United States, and in other common law jurisdictions including the United Kingdom, Australia, and New Zealand, and in a number of civil law jurisdictions including France, Japan, Sweden and Switzerland.
This privilege of information for clients of patent and trade-mark agents will increase the value and relevance of filing for Intellectual Property in Canada. It results from years of advocacy spearheaded by our Canadian professional association for Intellectual Property professionals, the Intellectual Property Institute of Canada; and we are proud to mention that our firm participated actively in the committees and undertakings that led to this important achievement for the I.P. society and for our clients and foreign associates.
The amendments also include changes to the Industrial Design Act, the Trademarks Act and the Patent Act which provide for the extension of time limits in unforeseen circumstances, such as power outage, flood, ice storm.
This will help avoid involuntary abandonment of intellectual property files in such rare but uncontrollable circumstances.
This change to the Canadian Intellectual Property regime, albeit simple, should nevertheless reassure Canadian Intellectual Property owners.