Law Times

Law Times • sepTember 26, 2016 Page 9 www.lawtimesnews.com CBA says draft code of conduct not enough Stay away from legal practice, agents warned BY MICHAEL MCKIERNAN For Law Times T he Canadian Bar As- sociation has warned non-lawyer patent and trademark agents to steer clear of unauthorized legal practice after the federal govern- ment granted them a statutory privilege protecting communi- cations with clients. Bill C-59, which came into ef- fect in June, creates a privilege for intellectual property agents mir- roring that between lawyers and their clients in certain prescribed circumstances. In tandem with that change, the Canadian In- tellectual Property Office and Innovation, Science and Eco- nomic Development Canada have been working to develop a code of conduct and regulatory framework to govern the newly empowered group of agents. In its June 13 submission to ISEDC, the CBA's intellectual property section urged the min- istry to include a rule explicitly prohibiting the unauthorized practice of law by non-lawyer agents, arguing a draft code of conduct did not go far enough. In addition, the CBA sug- gested a ban on advertising of services that "amount to the practice of law" unless the agent is licensed by a Canadian law society, citing numerous ex- amples from the web profiles of non-lawyer agents boasting of experience "conducting intel- lectual property due diligence," "advising clients on licensing" and more. "These claims could be con- strued as the practice of law. This would undermine public understanding of the role of patent and trademark agents and mislead clients about the knowledge, skills and account- abilities of non-lawyer agents. If unchecked, these claims will work against our collective ef- forts to appropriately modernize agent practice," reads the CBA submission. The CBA also asked for a clear, detailed definition of "per- mitted agent activities," claim- ing this will "assist agents and encourage greater understand- ing by the public and by clients about the IP system in Canada." Mala Joshi, immediate past president of the CBA's national IP section, says the general pub- lic might not always appreciate the difference between law- yer and non-lawyer patent and trademark agents. "In this case, we're dealing with a very reputable group of individuals, so we don't want our position to be construed as dis- respectful in any way to our col- leagues," Joshi says. "However, it bears being said that if you're go- ing to start talking about a code of conduct, you need to address unauthorized practice, and you should aim to be as specific as possible about what activities are allowed." Michael Crichton, a partner with Gowling WLG in Ottawa, says the amendments in C-59 mark a major change for patent and trademark agents, since Ca- nadian courts have consistently refused to recognize privilege between non-lawyer agents and their clients over the last few decades, allowing disclosure of communications during litiga- tion in various scenarios, includ- ing one case in which a licensed lawyer was acting in their capac- ity as a patent agent. "Generally speaking, I think everyone is happy with the change. Agents will be better able to advise clients, because they will have more comfort that what they put in writing when they are communicating with them is going to have an added level of protection from being disclosed," Crichton says. "Cli- ents, too, will be very pleased, because they are the ones who really enjoy the privilege." The bill, which passed Parlia- ment last year, amends Canada's Patent Act and its Trade-marks Act to create a statutory privi- lege that will apply to communi- cations that meet the following three criteria: They must have occurred be- tween an agent registered under the relevant act and their client; They were intended to be confidential; They were made for the pur- pose of seeking or giving advice on "any matter relating" to the protection of an invention or the protection of a trademark. Crichton says the broadness of the third criteria will keep courts busy in the coming years as practitioners seek guidance on exactly what types of com- munication are covered by the new privilege. "If you're talking about com- munications for drafting a pat- ent application or making sub- missions to the patent office on the strength of a particular pat- ent, then it seems pretty clear that they will be covered," he says. "Where it gets less clear is if the agent starts to get involved in more contentious matters, and there are a whole bunch that they can get involved in. We don't know how the court is go- ing to interpret that." In the meantime, Crichton says non-lawyer agents may wish to "use some caution" by assert- ing privilege wherever possible and involving lawyers where there is some doubt over wheth- er privilege applies. The act also extends privilege to foreign trademark or patent agents from countries whose law also recognizes agent privi- lege, so long as the communica- tions fit the criteria for Canadian agents. Cristina Mihalceanu, a To- ronto IP lawyer with Dimock Stratton LLP, says the previous hard line taken by Canadian courts on agent privilege had left this country out of step with other international jurisdic- tions, including Australia, New Zealand, the U.S. and Germany, which had already embraced some form of IP agent privilege. In 2006, the Federal Court ruled in Lilly Icos LLC v. Pfizer Ireland Pharmaceuticals that it would not extend privilege to communications with foreign agents, even where it was recog- nized in their home jurisdiction. Mihalceanu says clients like to know that they can rely on privilege across borders, since litigation in various jurisdic- tions can easily overlap when companies seek protection for similar or identical intellectual property in different countries. "There have been discussions over the years about Canada adopting IP practices that are more in line with our major trading partners," she says. "Ensuring privilege attaches to the work agents do is good for Canada in that it is now more in step with what others are doing. I think it's going to make Canada a more attractive venue for IP pro- tection and enforcement." LT FOCUS Michael Crichton says amendments in Bill C-59 mark a major change for patent and trademark agents. 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