Patent Agent Client Communication Privilege in Canada

CANADA: Communications between a patent agent and their client (including a ‘Foreign Patent Agent’) is privileged and protected from disclosure in a discovery during litigation. However, a patent agent’s communication to the client regarding infringement of their product with respect to a third party patent is not protected/privileged. [Source: Kavita Ramamoorthy’s Post]

After 2016, communications between patent agents and their clients are privileged in Canada, under section 16.1 of the Canadian Patent Act (Patent Act, RSC 1985, c. P-4) if and when the communication is

i) between the agent and the client;

ii) made for the purpose of seeking or giving advice with respect to any matter relating to [p]rotection of the invention; and

iii) it is intended to be confidential.

Similar privilege is also grated to the ‘Foreign Patent Agent’ [who is authorized to act as the equivalent of a patent agent under the law of a country other than Canada and that individual’s client that is privileged under the law of that other country] and an individual acting on behalf of the agent, if the communication satisfies the conditions specified in 16.1

Communications “relating to the protection of an invention” does not extend to an analysis as to whether a product infringes third party patent rights. The legislature did not express an intention to attach privilege to any and all communications between patent agents and their clients. A non-infringement opinion does not relate to the disclosure of the invention or otherwise contribute to the patent bargain.

The court thereby concluded that a non-infringement opinion (from a Patent Agent) does not qualify for ‘privilege’. Whether patent agent privilege applies to an infringement opinion of one’s own patent, is not decided in this.