Important milestone in the Canadian IP law - we finally have privilege!

By Randy Marusyk, July 12th, 2016

On June 24, 2016, an important milestone was achieved in the Canadian IP law due to the enforcement of section 16.1 of the Patent Act and section 51.13 of the Trademarks Act. Going forward, confidential communications between Canadian patent/trademark agents and their clients are protected under the statutory privilege in the same way as the communication between lawyers and clients is privileged. An agent cannot be required to disclose or give testimony on the communication in a civil, criminal or administrative action or proceeding.

The communication between patent/trademark agents and their clients will be privileged if the following requirements are met:

  • The communication is between clients (or the client’s behalf) and their registered patent agents, trademark agents, or the registered agents’ behalf.
  • The purpose of the communication is seeking or giving advice with respect to any matter relating to the protection of an invention or a trademark (including geographical indication or mark referred to as part of paragraph 9 of the Trademark Act).
  • The communication is intended to be confidential.

The client can expressly or implicitly waive the privilege between the agent and himself or herself, and the provisions protects the communications whether agents are lawyers or not. It is also worth noting that the privilege provisions also apply to the communications between clients and their agents who are registered as patent or trademark agents that are privileged under the law of another country and the three requirements above are met.

For more information about privilege provisions in Canada please contact:

Randy Marusyk, Co-managing Partner
T: 613.801.1088
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

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