The Importance of Ensuring Your Patent and Trademark Advisors are Registered

This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.

The Government of Canada’s Bill C-59 introduced in Parliament on May 7, 2015 aims to implement amendments to Canada’s Patent Act and Trademarks Act to grant statutory privilege over confidential communications between registered patent and trademark agents and their clients. Communications with unregistered patent and trademark “advisors” will not be covered by this privilege.

Once Bill C-59 is in force, communications between a registered patent and/or trademark agent and that agent’s client will be subject to privilege that is akin to the already-existing solicitor-client privilege.  The privilege will basically be an automatic right granted to the agent’s client to refuse to disclose communications made with their patent and/or trademark agent if the communications were intended to be confidential and were made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention and/or a trademark. It will also require the agent to keep any information or words spoken to him or her during any such communications strictly confidential.

The above amendments are not yet in force and are set to come into force 12 months after they receive Royal Assent. It is, however, noteworthy that this privilege will extend retroactively to communications made before the day on which the above amendments come into force, so long as the they are still confidential on that day. However, the privilege will not be extended in respect of any litigation commenced before the day on which the above amendments come into force.

The practical effect of these amendments is that a client can speak fully, freely, and frankly with their registered agent, while being assured that the content of their confidential communications relating to the protection of an invention and/or a trademark will be protected indefinitely from forced disclosure in litigation. While the majority of patent and trademark agents at MLT are also lawyers whose confidential legal advice is already subject to solicitor-client privilege, the amendments are a welcome change for registered non-lawyer patent and trademark agent professionals.  Those taking patent and/or trademark advice from unregistered patent or trademark advisors should be warned that their communications are not covered by any such privilege and could be revealed to competitors, or unfavourable information relating to any potential patent or trademark protection could be required to be revealed during litigation processes.