Federal Court Considers New Patent Agent Privilege
By Rebecca Kupfer and Paul Lomic
In November of 2021, the Federal Court was tasked with further defining the scope of patent agent privilege. While amendments to the Patent Act pertaining to patent agent privilege came into force in 2016, the interpretation of this section was only recently discussed by the court in Case Management Judge Trent Horne’s decision in Janssen Inc et al v Sandoz Canada Inc, 2021 FC 1265.
Section 16.1(1) of the Patent Act outlines the conditions that must be met in order for privilege to apply to patent agent communications. Similar to solicitor-client privilege, for a patent agent communication to be protected it must satisfy a three-part test: (a) the communication must be between a patent agent and his or her client; (b) the communication must be intended to be confidential; and (c) the communication must be made for the purpose of seeking or giving advice with respect to a matter relating to the protection of that invention.
The Janssen decision centers on the third part of the section 16.1(1) three-part test, and provides two main takeaways as it pertains to the scope of “communication made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention”. The first is that while patent agent privilege is independent of solicitor-client privilege, the legal principles surrounding solicitor-client privilege, and its exceptions, apply to patent agent privilege. The second is that the protection for patent agent privilege is narrower than the broad solicitor-client privilege. Patent agent privilege does not extend to an opinion or analysis of whether a product infringes third-party patent rights – although it may identify litigation risk, it does not advance the protection of an invention, which was the intent of section 16.1(1).