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Ethics byte: an update to the Janssen debate

The courts have begun to interpret the Federal Court’s holding in Janssen, as it relates patent agent privilege. In Questor Technology Inc v Stagg, the Court of Queen’s Bench of Alberta (the “Court”) observed at paragraph 76 that  


there is no common law right to patent agent privilege. As a result, the scope of the privilege is limited by the language section 16.1 of the Patent Act.  


Citing Janssen, the Court held that  


The scope of the privilege inherent in section 16.1 of the Patent Act must be considered in any dispute between parties. The presence of some privileged communications in a document cannot be used to shield otherwise relevant information from discovery. Where a document includes both privileged and non-privileged information, only those communications that meet the requirements of section 16.1 of the Patent Act can be redacted: Janssen at para 23. Not all communications with a patent agent will be privileged; only those that are made for the purpose of “protecting an invention”. As a result, not all patent strategies will attract patent agent privilege. Simply stating that a communication relates to patent strategy is insufficient to meet the test for patent agent privilege: Janssen at para 23 (paragraph 77 of Questor).  


In Questor, the Court noted that “four principles flow from section 16.1 of the Patent Act”: 


First the legislative privilege for patent agent privilege is no broader than the categories available for solicitor-client privilege or litigation privilege, and it is likely narrower.  


Second, the party asserting patent agent privilege has the burden of establishing it, and it must be based on evidence.  

Third, patent agent privilege is not a blanket privilege that applies to patent agent file as a whole. In particular, there is no shielding of non-privilege records in the patent agent file.   


Fourth, if there is a claim for patent agent privilege, the court should review the disputed documents to determine whether privilege has been properly asserted.  


This latter point is particularly relevant at this juncture because patent agent privilege is a new concept in Canada, and a cautious approach is appropriate in this context (paragraph 78).