An April 21, 2023 decision of the Federal Court in Boehringer Ingelheim (Canada) Ltd. v Pharmascience Inc. explored the meaning and applicability of patent agent privilege.
Licensees have an ethical obligation 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 following analysis outlines some of the takeaways from this court decision.
In Boehringer Ingelheim (Canada) Ltd. v Pharmascience Inc. the Plaintiffs, Boehringer Ingelheim (Canada) Ltd. et al, redacted information before disclosing documents to the Defendant, Pharmascience Inc. Some of the redactions were made on the basis of patent agent privilege. In this decision, the Court made determinations with respect to the applicability of patent agent privilege.
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”.
Boehringer Ingelheim (Canada) Ltd. v Pharmascience Inc. was decided by Associate Judge Trent Horne – the same judge who made the decision with respect to patent agent privilege in Janssen Inc v Sandoz Canada Inc, 2021 FC 1265. For a previous look at Janssen, please see CPATA’s short summary here and previous ethical analysis here.
The interpretation of both decisions may vary among those who read it, but the court in Boehringer Ingelheim (Canada) Ltd. v Pharmascience Inc. stated:
- “The text of subsection 16.1(1)(c) of the Patent Act attaches privilege to any matter relating to the protection of an invention. It is not limited to circumstances where an application has been filed, or is pending” (paragraph 50).
- “I cannot accept Pharmascience’s submission that the filing of a patent application, or clear instructions to a patent professional to draft one, is a necessary precondition [to patent agent privilege applying]” (paragraph 52).
- “I have particular difficulty with Pharmascience’s submission that where a patent application is rejected by CIPO, or is voluntarily withdrawn by the applicant, patent agent privilege would not apply. I do not agree with Pharmascience that there cannot be an “invention” unless and until CIPO issues a patent. The text of section 16.1 does not support an interpretation that privilege can be gained or lost depending on the existence or status of a patent application, or that an “invention” only exists for the purposes of that section if a patent application has been clearly instructed, is pending, or a patent has issued. I reach the same conclusion when considering section 16.1 in the context of the Patent Act. “Invention” is defined in section 2 to mean “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”. Patent means “letters patent for an invention”. Had the legislature intended to restrict patent agent privilege to only live applications or issued patents, it would have expressly said so” (paragraphs 54-55).
- “Limiting patent agent privilege to only apply in circumstances where a client instructs a patent agent to file and maintain an application could be a disincentive to retain an agent. There would be uncertainty as to if and for how long any privilege would apply. A cautious client may be inclined to avoid the uncertainty, and maintain an invention as a trade secret. This would be contrary to the central objectives of the Patent Act described above” (paragraph 57). Note that the two central objectives identified in the above paragraph were: “to “advance research and development and to encourage broader economic activity” (paragraph 56).
The court in Boehringer Ingelheim (Canada) Ltd. v Pharmascience Inc. clarified that agent-client privilege is not dependent on the filing of an application, nor is it dependent on whether an application is ultimately successful with CIPO.
Licensees should be aware that in order to meet the standards of competence expected under the Code, they 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, 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 that will protect client interests and adhere to their professional obligations. Every circumstance is unique and it is up to the licensee to exercise their own professional judgement.
We invite you to contact us with your ethics questions online. Through the Ethics Inquiry process, CPATA’s professional conduct experts are available to help interpret the Code as part of the process of risk-assessment and ethical analysis.