Journal

Legal advice privilege in Canada

On 5 September 2024, CIPA wrote to the Honourable François-Philippe Champagne, Canada’s Minister of Innovation, Science, and Industry, in response to the decision in Janssen Inc and Mitsubishi Tanabe Pharma v Sandoz Canada Inc (2021).

Who we are

The Chartered Institute of Patent Attorneys is the UK’s largest intellectual property organisation. We are the professional and examining body for patent attorneys in the UK, representing 2,800 registered patent attorneys, employed in industry and private practice. Total membership is over 4,700 and includes trainee patent attorneys, IP paralegals, judges, barristers and other professionals with an interest in intellectual property. We represent members’ interests to government and a wide range of stakeholders at home and abroad.

Why we are writing to you

CIPA is writing to you to express its surprise and concern with the Janssen decision (2021) of the Prothonotary of the Canadian Federal Court, which found that the term “protection of an invention” in the context of section 16.1(1) of the Canadian Patents Act should be construed narrowly to exclude infringement advice regarding a third-party patent.

CIPA’s members have a strong interest in the quality and cost of legal services relating to intellectual property, in the UK and internationally, including in Canada, a key market for our members.

The Janssen decision has introduced and continues to generate a serious, undesirable level of uncertainty for our members. Specifically, the decision has thrown into doubt the existence of legal-advice privilege in Canada for important classes of communications. Prior to the decision, legal-advice privilege in Canada was generally understood to protect communications between a client and their patent agent relating to infringement and validity matters. As you will appreciate, the potential loss of that privilege has serious ramifications for our clients, whether as IP defendant or claimant before the courts (including courts in other key jurisdictions such as the USA).

As a practical direct consequence of the Janssen decision, when a private practice or in-house patent agent receives a request for infringement advice, the advisor will now need to involve a solicitor purely to ensure that the advice given is privileged, i.e. without any improvement in the quality of the advice. This slows down the process of providing the legal advice, and increases cost for the client (or employer, in the in-house case) because the solicitor involved will feel professionally obliged to check the work that has been done by the patent agent. Thus, the Janssen decision runs contrary to the principle of access to justice, disadvantaging sole inventors and small and medium enterprises in Canada.

The Janssen decision creates an imbalance between alleged infringers and patentees. Before the 2016 amendments to the Canadian Patent Act, alleged infringers (for example, those making or selling pharma generics in Canada) had the advantage that there was poor protection against discovery for the communications between patentees and their advisers. Following Janssen, the advantage is now the other way, with patentees having better protection for their communications with Canadian patent agents than third parties, especially sole inventors and small and medium enterprises.

We note that the Janssen decision is also at odds with the long-standing satisfactory position in the UK. UK patent attorneys are similar to Canadian patent agents insofar as UK patent attorneys are not general lawyers but rather are specifically trained and examined in intellectual property law and in ancillary areas of general law. Here, section 280 of the UK Copyright, Designs, and Patents Act 1988, and the Legal Services Act 2007, extends legal advice privilege to communications with our client relating to inventions belonging to third parties as well as to those of our client (or employer, for in-house attorneys). This is important because it provides privilege for communications relating to, for example, infringement opinions and freedom-to-operate opinions. This long-standing position in the UK works well, meeting the needs of clients and business.

This interpretation is consistent with and supported by the fact that infringement and validity advice have been specified by the regulators as Key Competences of Canadian patent agents, and are skills that patent agents are trained and tested on, and are expected by their clients to advise on.

Conclusion

It is in the interests of consumers of legal services in Canada and internationally for the clients of patent agents to enjoy privilege for a wide and relevant scope of IP matters, including specifically the provision of legal advice on infringement and third-party validity matters. This reduces uncertainty and improves access to justice, compared with a situation in which costs are increased by both patent agent and a solicitor advising the client. In the UK, a similar statutory provision is routinely interpreted to provide privilege to communication relating to infringement and third-party validity matters, and that approach has worked well for many years.

CIPA therefore supports the Intellectual Property Institute of Canada’s request for new legislation to clarify the position on legal advice privilege in Canada accordingly.

Lee Davies, Chief Executive