Barristers and Solicitors
Patent and Trademark Agents

Legislative Amendments: Extending Time & Privilege

Confidentiality & Privilege

Contrary to the expectations of most, communications with patent or trademark agents were not protected from disclosure to the same extent as communications with legal counsel. In other words, such communications did not automatically enjoy "solicitor and client privilege" and a client could be compelled to produce opinions or advice provided by their patent or trademark agent in future litigation. Even if the agent was also a lawyer, solicitor and client privilege may not apply if they were wearing their "agent hat" and acting as a patent agent or trademark agent in providing the advice.

Like other countries who have sought to address this curious omission in the law, Canada has finally passed legislation recognizing that communications with patent and trademark agents, both domestic and foreign, are confidential and protected in the same way as communications with a lawyer. Clients can now speak freely with their patent and trademarks agents and be confident that those communications will remain confidential. This amendment officially comes into force as of June 23, 2016.

Extensions of Time for Force Majeure Events

Unlike the courts, the Canadian Intellectual Property Office (CIPO) had no inherent authority to extend missed deadlines. Consequently, IP rights could be unintentionally lost if, for example, floods, ice storms or blackouts prevented the timely filing of documents in Ottawa.

The power to grant extensions of time in such circumstances has now been extended to CIPO. This amendment came into force immediately on June 23, 2015.

Changes Prompted by the Advocacy of IP Professionals

These are both intiatives for which the IP profession has advocated for many years. In fact, both Valerie and I attended meetings with our local MP's about two years ago to lobby for these very changes as members of the Intellectual Property Institute of Canada.