Bereskin & Parr LLP
Subscribe Twitter Linked-in RSS
  • About Us
  • Our People






  • Services
  • News & Publications
  • Events
  • Offices
  • Students
  • Careers

News & Publications

FIND AN ARTICLE

SUBSCRIBE TODAY

Keep informed about the latest news
and updates from Bereskin & Parr



 

Lindsey Robinson

MEDIA CONTACT
Lindsey Robinson
B.A. (Hons.), LLM
Manager, Business Development & Marketing
416.957.1663

 

 Bookmark this page  Print this page

Privilege for Patent and Trademark Agents now in effect for Canada

June 24, 2016

Authors: Stephen Beney and Scott MacKendrick

Effective June 24, 2016, amendments to the Patent Act and Trade-marks Act came into effect providing protection for confidential communications between clients and their patent agents and trademark agents made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention or trademark, respectively (the implementing legislation can be found here). With the amendments, these communications with agents (whether or not they are also lawyers) are intended to be protected from disclosure in court and administrative proceedings by a statutory privilege akin to solicitor-client privilege or, in civil law, to the professional secrecy of advocates and notaries.

Specifically, the Patent Act amendments provide that a statutory privilege may apply to a communication that is: (a) between an individual whose name is entered on the register of patent agents and that individual’s client; (b) intended to be confidential; and (c) made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention. Similarly, the Trade-marks Act amendments provide that a statutory privilege may apply to a communication that is: (a) between an individual whose name is included on the list of trademark agents and that individual’s client; (b) intended to be confidential; and (c) made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trade-mark, geographical indication or certain other section 9(1) prohibited marks.

These amendments should provide certainty surrounding communications between clients, patent agents and trademark agents and will bring Canada in line with the approach taken to such communications in other common law countries that recognize privilege. Moreover, the amendments allow for communications protected as privileged by recognized patent agents and trademark agents in other jurisdictions to be deemed to be privileged in Canada where: (a) the communications are privileged under the law of the foreign jurisdiction; and (b) the communications, if they had been made by a Canadian agent, would otherwise have satisfied the three requirements for Canadian statutory privilege.

Finally, these amendments have retroactive effect, applying to communications made before June 24, 2016, so long as the communications, in fact, remained confidential as of June 24, 2016. The amendments do not, however, apply to court or administrative proceedings commenced before June 24, 2016.

Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.

 

About Us

Overview
People Clients Diversity and Inclusion

Accolades
Archives

Offices

Hours of Operation

Our People

All

Refine search by
Type Office Practice School

Services

Patents
Automotive Chemical Cleantech Electrical & Computer Technology Life Sciences Mechanical & Industrial Processes Medical Devices Nanotechnology Oil & Gas Plant Breeders’ Rights in Canada

Industrial Designs

Trademarks

Litigation

Financial Technology

IP Management & Strategic Counselling

Licensing & Transactions

Regulatory, Advertising & Marketing

Copyright & Digital Media

News & Publications

Newsroom
Archive

Articles
Article Archives

Newsletters

Media & Press

Litigation Cases
Patent Trademark Copyright

Subscribe

Webinars

Students

Overview

Articling Program

Summer Program

Recruitment
Articling Recruitment Second Year Recruitment First Year Recruitment Career Fairs

B&P Your University

Current Students

University Prizes

How to Apply

Events

Events Calendar

Student Events Calendar

Offices

Careers

Support Staff

Professionals

Students

Languages

English

Français

中国语

日本語

Search