Federal Court Considers New Patent Agent Privilege

  • 27 février 2022
  • Rebecca Kupfer and Paul Lomic, Lomic Law

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.