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Rule 1-5 – Competence and staying abreast of developments in the law relating to privilege – the Janssen debate

The following analysis applies to a licensee in their daily practice and focuses on the obligation of licensees to stay abreast of developments in the law that relate to their practice outlined in Rule 1-5 of the Code of Professional Conduct (the “Code”). Rule 1-5 also expressly provides that licensees must keep abreast of developments in the law that relate to patent agent privilege and trademark agent privilege.

The Janssen Inc. and Misubishi Tanabe Pharma Corporation v. Sandoz Canada Inc., 2021 FC 1265 (“Janssen”) case is one that licensees should be aware of in keeping with their obligation to stay abreast of developments in the law related to patent agent privilege and trademark agent privilege. In Janssen, the Federal Court provided an interpretation of privilege as defined by the Patent Act, s. 16.1. The College provided a short summary and alerted licensees of the decision. IPIC also prepared a brief on the impact of the Janssen decision on Patent and Trademark Agent privilege.

Note that the interpretation of this decision may vary among those who read it.

The scenario

A licensee in their day-to-day practice must be aware of decisions that affect their practice. The Code does not prescribe how a licensee must stay abreast of the law, just that they have an obligation to do so.

The Rule

At Part 1 of the Code of Professional Conduct (The “Code”), the rules with respect to competence are set out. Rule 1-5 states

An agent must keep abreast of developments in the branches of law relating to the agent’s practice by engaging in study and education. In addition, an agent must keep abreast of developments in the law relating to patent agent privilege and trademark agent privilege.

In addition to that express provision, Rule 1-2 provides that “an agent fails to meet standards of professional competence if (a) there are deficiencies in (i) their knowledge, skill or judgment”.

Our Advice

Effectively, in order to meet the standards of competence expected under the Code, licensees are expected to keep their knowledge current by engaging in study and education.

Licensees should have a plan for how they intend to stay abreast of developments in the law, which may include various forms of continuing professional development, conference attendance, lunch and learns, online courses, seminars or webinars, participating in practice groups, writing or reading blogs, reading materials put out by CPATA and IPIC. Licensees may also wish to access public resources like CanLII (link) which provides a searchable database of decisions made by the Federal Court, CIPO and other decision makers in Canada.

Licensees should be mindful of the expectation that they will stay current on both developments in case law relating to their practice, and the law as it relates to patent agent privilege and trademark agent privilege specifically.

Ultimately each Licensee has to decide what the correct course of action is in order to adhere to their professional obligations. It is up to the licensee to exercise their own professional judgement in any given circumstance. Through the Ethics Inquiry process, we are happy to help interpret the Code as part of the process of risk-assessment and ethical analysis.

We look forward to receiving more inquiries and providing more guidance to licensees. It helps us identify areas where further information or analysis might be instructive and it will help to inform our consultation on the Code, which will be rolling out in early 2023.