DAVID HELLER AND JEAN LEE
Solicitor-client privilege protects communications between
clients and their lawyers that are
made for the purpose of furnishing
or obtaining professional advice or
assistance. That privilege permits a
lawyer to refuse to testify as to the
communications from the client.
In the course of drafting a patent and discussing the patentability of an invention, it is not uncommon for clients and their patent
professionals to make statements
that could be used against them in
later validity proceedings, and
often these statements are in writing, for example, by e-mail. Without privilege, professionals and
clients might have to choose
between frank discussions of the
merits of an invention, versus liti-gation-proof but superficial communications. Thus privilege is
critical to the ability to serve the
client frankly, without creating
time bombs which can later destroy
the client’s patent rights.
The standards and recognitions
of privilege differ among different
countries. Currently, patent agents
in the U.K., Australia, New Zealand and Japan all have a statutory
right of privilege, whether or not
they are also lawyers. In the U.S.,
privilege is derived from a common law work product doctrine as
opposed to a statutory source, and
the scope of this privilege may be
somewhat limited.
In Canada, jurisprudence is
clear that communications
between clients and non-lawyer
patent agents are not subject to
privilege. In Lumonics Research
Ltd. v. Gould, (1983) 2 F.C. 360,
the Federal Court of Appeal held
that the sole reason for this lack of
privilege is that patent agents, as
such, are not members of the legal
profession. Therefore, even if the
communications were made for
the purposes of obtaining or giving
legal advice or assistance, these
communications cannot be
deemed privileged.
Lumonics Research where it was
held that:
“[All] confidential communi-
cations made to or from a member
of the legal profession for the pur-
pose of obtaining legal advice or
assistance are privileged, whether
or not those communications
relate to the kind of legal advice or
assistance that are normally given
by patent agents. Legal advice
“
This lack of privilege
undermines the
competitiveness of
Canadian-based
enterprises, placing
them at a disadvantage
when litigating in other
jurisdictions.
does not cease to be legal advice
merely because it relates to pro-
ceedings in the Patent Office.
Those proceedings normally raise
legal issues; for that reason, when
the assistance of a solicitor is
sought with respect to such pro-
ceedings, what is sought is, in
effect, legal advice and assistance.”
Similarly, communications
made by a lawyer who was also a
patent agent did not negate client
privilege in F.P. Bourgault Indus-
tries Air Seeder Division Ltd. v.
Flexi-Coil Ltd., [1995] F.C.J. No.
1423. However, at least one older
case supported a distinction
depending on which “hat” the lawyer is wearing at the time the
advice is given; communications
by a lawyer-agent acting in his capacity as a patent agent was not
privileged in Montreal Fast Print
(1975) Ltd. v. Polylok Corp., [1985]
1 F.C. 650. The latest case addressing this dual capacity as counsel or
agent is Laboratoires Servier v.
Apotex Inc., [2008] F.C.J. No. 431,
where Justice Snider of the Federal
Court found a dichotomy, adding
that a trial judge would be in the
best position to determine whether
the lawyer had acted in the capacity of a counsel or a patent agent.
The absence of patent agent
privilege can have significant
impact on patent agents, as well as
businesses seeking patent protec-
tion in Canada. In particular, for-
eign clients could face unexpected
difficulty given the discrepancies
between the different jurisdictions.
In Lilly Icos LLC v. Pfizer Ireland
Pharmaceuticals, [2006] F.C.J.
No. 1853, it was held that “judicial
comity between countries does not
require Canada to recognize a priv-
ilege not established in Can-
ada [; this] is so particularly for a
privilege which has been advo-
cated for but never adopted by
legislation.”
In contrast, U.S. courts appear
to more readily recognize foreign
patent agent privilege to preserve
the principles of comity and pre-
dictability, even if communication
with domestic U.S. patent agents
was not subject to the solicitor-
client privilege.
The Intellectual Property Insti-
tute of Canada (IPIC), along with
the support of other organizations,
has been advocating for privilege
in communications between pat-
ent agents and clients. They argue
that this lack of privilege under-
mines the competitiveness of Can-
adian-based enterprises, placing
them at a disadvantage when liti-
gating in other jurisdictions. IPIC
has been directing efforts in estab-
lishing self-regulation of patent
agents, a parallel project to advo-
cating privilege, and it is IPIC’s
belief that one will contribute to
the other. However, this is a project
that IPIC expects will take many
years to develop.
David Heller is a partner at
Ridout & Maybee in Toronto,
and heads up the Pharma and
Biotech Group at the firm. Jean
Lee is currently a student-at-law
at the same firm.
‘Walled garden’ menus exempt
The cost of even a
modest levy
multiplied by
millions of Internet
subscribers would
be substantial...
— Michael Geist
Canada Research Chair in
Internet and E-commerce
Law, University of Ottawa
Levy
Continued From Page 14
does—it wouldn’t mean an ISP’s
entire operations would be found
to be a broadcasting undertaking.
He explains that for an ISP to be
considered such an undertaking,
it would have to afford preferential treatment to particular content by giving it priority over
other content sources, offending
principles of network neutrality
in the process.
For now, ISPs are not considered broadcasters under the
Broadcasting Act — though the
issue could be brought before the
Supreme Court of Canada or
legislation could be amended to
include them.
But Geist, who holds the Can-
ada Research Chair in Internet
and E-commerce Law at the Uni-
versity of Ottawa, has his prefer-
ence. “If there is to be a change, I
think it rightly should fall to Par-
liament to do so.”
Elder says that cultural groups
could also focus on the “walled
garden” menus of broadcast con-
tent made available by wireless
service providers, which fall
within CRTC broadcasting juris-
diction as broadcasting undertak-
ings but which the commission
has, for the moment, chosen to
exempt from licensing.
An oddity in Intellectual Property Law
Naked Cowboy and Cowgirl square off
The Naked Cowboy, a New York entertainer, has launched a lawsuit
against the Naked Cowgirl for trademark infringement.
Robert Burck, a.k.a. the Naked Cowboy, wanders New York’s Times
Square in his briefs, strumming a guitar, and poses for tourist photos for
cash. But Sandra Brodsky, claiming to be the Naked Cowgirl, has been
posing for photos in a red, white and blue cowboy hat and matching
bikini. Burck wants her to sign a Naked Cowboy franchise agreement for
US$500 a month, according to Bloomberg.com. Brodsky refuses to pay.
Burck, an ordained minister, says Brodsky is a threat to his “whole-
some” image.— Natalie Fraser
OLGASOUSLOVA / DREAMSTIME.COM
