Starting tomorrow, patent and trademark agents can claim privilege analogous to solicitor-client privilege for communications between the agent and their client, that is intended to be confidential and is made for the purpose of seeking or giving advice relating to the protection of inventions or trademarks.

The privilege was implemented in Bill C-59, which received royal assent last year on June 23, 2015. As a result, the Patent Act is amended to add Section 16.1 and the Trade-marks Act amended to add Section 51.13. The effect is retroactive and applies to past communications, but not in the context of litigation started before June 23, 2016.

Other amendments made in Bill C-59 will not come into force until there are implementing regulations and a specific order in council.

Section 16.1 will read as follows. Section 51.13 of the Trade-marks Act will be similar.

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:

(a) it is between an individual whose name is entered on the register of patent agents and that individual’s client;

(b) it is intended to be confidential; and

(c) it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention.

(2) Subsection (1) does not apply if the client expressly or implicitly waives the privilege.

(3) Exceptions to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries apply to a communication that meets the conditions set out in paragraphs (1)(a) to (c).

(4) A communication between an individual who is authorized to act as 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 that would be privileged under subsection (1) had it been made between an individual whose name is entered on the register of patent agents and that individual’s client is deemed to be a communication that meets the conditions set out in paragraphs (1)(a) to (c).

(5) For the purposes of this section, an individual whose name is entered on the register of patent agents or an individual who is authorized to act as a patent agent under the law of a country other than Canada includes an individual acting on their behalf and a client includes an individual acting on the client’s behalf.

(6) This section applies to communications that are made before the day on which this section comes into force if they are still confidential on that day and to communications that are made after that day. However, this section does not apply in respect of an action or proceeding commenced before that day.