Privilege for Patent & Trade-mark Agents and Extensions of Time at CIPO for Unforseen Circumstances

By Katie Wei and Alexandra Lyn

Significant changes will be introduced to Canada’s laws on intellectual property as Bill C-59 received Royal Assent on June 23, 2015.

Privileged Communications

Client communications with registered Canadian patent and trade-mark agents will be privileged and confidential under the new legislation. This means that communications will be protected from forced disclosure in legal proceedings as long as the communication is (a) intended to be confidential, and (b) made in order to give or receive advice relating to the protection of inventions or trade-marks.

Communications between clients and foreign agents will also be privileged, provided that the communication is privileged under the laws of the foreign jurisdiction and the criteria above are met. These provisions will come into force on June 23, 2016; but will apply retroactively, as long as the communication remains confidential and are not subject to litigation before June 23, 2016.

Correction of Errors and Extension of Time Limits

The new legislation also provides for corrections to obvious errors in patent or industrial design documents, as well as extensions of time limits due to unforeseen circumstances (e.g. floods or ice storms) in patent, trade-mark, or industrial design documents. These provisions will likely come into force at a later date.

For more information, please contact our office.

Our firm and partners recognized as a leading patent firm and as leading practitioners in Canada

Clancy P.C. + Brion Raffoul has been recognized as one of the leading patent firms in Canada by IAM Patent 1000: The World’s Leading Recommended Firms and Patent Practitioners 2014 – a unique guide that identifies the top patent firms and practitioners in key jurisdictions around the globe.   Along with our firm, Art Brion and Natalie Raffoul have been individually recognized as leading patent practitioners in Canada.

Please find below the firm write-up and a link to the detailed ranking:

Making its inaugural appearance in the IAM Patent 1000 this year, Clancy PC + Brion Raffoul wins ringing endorsements from peers and clients alike. “The responsibility and personal engagement of its partners are unsurpassed – they are outstanding. Their qualification, experience and know-how are second to none.” One co-counsel reports: “Its partners are very responsive, which is always the most important aspect. But they also provide good insight and analysis – they really know which arguments fly under Canadian law.” The team is comprised of Art Brion and Natalie Raffoul . Together, “they are instrumental in finding the best outcome for the business. They help in-house counsel make informed decisions which lead to the best possible outcome for the company”.