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Privilege granted

Critics worry the government has gone too far in extending solicitor-client privilege to professionals who are not lawyers

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Patent and trademark agents have become the first group of non-lawyers given the quasi-constitutional protection of solicitor-client privilege.

With the adoption of the 2015 omnibus budget bill, which received royal assent in June, amendments to the Patent Act and the Trademarks Act give non-lawyer intellectual property (IP) agents protection “in the same way that a communication is subject to solicitor-client privilege, or, in civil law, to professional secrecy of advocates and notaries.”

The bill says “no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding” if they are “between a person who is a registered patent agent/trademark agent and that person’s client (and) intended to be confidential.”

That means non-lawyer agents can invoke privilege if the communication is related to advice in connection with “the protection of an invention, or a trademark, official mark or geographical indication protectable under the Trademarks Act.”

What’s more, privilege is also extended to foreign IP agents, if their home country’s laws already grant it. Canadian courts had refused to recognize claims by foreign agents that the privilege granted by their countries’ laws was enforceable in Canada. The Federation of Canadian Law Societies has fought for years to prevent the extension of solicitor-client privilege to non-lawyers.

But the matter had to be addressed when the Harper government brought in new rules to bring Canadian IP laws into line with the country’s international treaty obligations. In many European countries, non-lawyer agents already have this protection, and proposed regulations for the European Union’s Unified Patent Court include extending solicitor-client privilege to IP agents.

Innovation groups like the Intellectual Property Institute of Canada (IPIC) had been lobbying for the change. IPIC has about 1,700 trademark and patent agents among its members. Some 60 per cent of these agents are also lawyers. And many non-lawyer agents work for law firms.

The current government is still drafting the regulations that map out the rules regarding the application of the new privilege right. The CBA has submitted suggestions to ensure the regulations maintain the professional boundaries between law and non-lawyer agents.

Adam Dodek, author of the 2014 book Solicitor-Client Privilege and a law professor at the University of Ottawa, believes the government has gone too far.

“The reference to solicitor-client privilege is unfortunate, confusing and almost sure to generate litigation,” Dodek said in July. “Solicitor-client privilege is both an evidentiary privilege as well as a fundamental civil and legal right which has constitutional implications at times.

“This cannot possibly be what the government intended in drafting this legislation. The government has played fast and loose with solicitor-client privilege over the past decade and this legislation continues this ill-fated trend,” he added.

Critics of the legislation worry that other professionals who do quasi-legal work – people like immigration consultants and paralegals – will successfully pressure the government to extend solicitor-client privilege to them as well.

“This poor choice of language overshadows the legitimate policy concerns about protecting the confidentiality of communications between patent agents and their clients,” Dodek said. “Solicitor-client privilege has a unique meaning in Canada and cannot simply be transferred willy-nilly to other areas.”

Practitioners hope to have some say in how the new rules are rolled out. Mala Joshi, chair of the CBA’s Intellectual Property Section, says she personally believes the government chose “unfortunate language” when it extended solicitor-client privilege beyond the legal profession for the first time.

In a brief written for the regulation consultations, the CBA warned that non-lawyer agents “must take particular care to avoid providing advice and services that would amount to the practice of law, unless the agent is also authorized to practice law in a province or territory in Canada.

“To protect clients and the broader public, the CBA Section has consistently advocated the importance of clearly defining what activities qualify as permitted practice in front of the Patent Office or Trademarks Office. Many statutes regulating the practice of law in provinces and territories define in detail what constitutes the practice of law. A definition of permitted agent activities would likewise assist agents and encourage greater understanding by the public and by clients about the IP system in Canada.”

In an interview, Joshi said the term “evidentiary-based privilege” should have been in the Act, rather than “Solicitor-Client Privilege.”

“When I give advice to clients, the paramount thing on my mind is that I’m an IP lawyer. From the point of view of non-lawyer agents, there are restrictions in the Patent Act and Trade-marks Act about what agents can and can’t do. For example, non-lawyer patent and trademark agents can’t represent clients in court or provide legal advice.”

Further, Joshi concludes, “It’s incumbent on the CBA to help ensure that no one is stepping over the boundary.