First Decision on Patent Agent Privilege

Janssen Inc v Sandoz Canada Inc 2021 FC 1265 Horne CMJ

This is the first decision I’m aware of dealing with the newly introduced s 16.1 which provides for patent agent privilege. Prior to the introduction of this provision, communications between patent agents and their clients were not privileged in Canada [7]. Consequently, the scope of the patent agent privilege is limited by the language of the Patent Act, and in particular the three part test set out in s 16.1 [16], which requires that the communication must be (a) between a patent agent and their client; (b) intended to be confidential; and (c) relating to the protection of an invention.

A few points emerge from the decision. First, patent agent privilege does not extend to all communications between the agent and the client. Section 16.1(1)(c) provides that privilege arises in respect of advice relating to “the protection of an invention.” This means that the privilege does not extend to a non-infringement opinion ie an analysis as to whether a product infringes third party patent rights [18]. However, “whether patent agent privilege applies to an infringement opinion of one’s own patent, that is not before the Court on this motion, and is therefore not a point to be decided here” [18].

Second, when that privilege does arise under the statutory provisions, the legal principles governing the privilege and the exceptions are likely the same as those governing legal privilege [12].

Third, the privilege belongs to the client, not the individual with whom the patent agent initially communicated: see s 16.1(1)(a), 16.1(2), [22]. When the client is a company, as in this case, the privilege is not lost when it is communicated within the firm, without the involvement of third parties [22].

The party asserting privilege had the burden of establishing the privilege, which is to say the burden of establishing the three requirements of s 16.1(1) [4]. Section 16.1(2) provides that the privilege does not apply if it is expressly or implicitly waived by the client. The party asserting privilege does not bear the onus of establishing the absence of waiver: “Once the party asserting the privilege has met the test set out in section 16.1 on a balance of probabilities, the privilege attaches and is assumed to endure. The onus then shifts to the opposite party to establish waiver” [33].

Thanks to Alan Macek's IPPractice for making this decision available.