One does not need to be a legal scholar to know that confidential communications between lawyers and their clients for the purpose of seeking and giving legal advice are generally privileged. The so-called “solicitor-client” privilege is a cornerstone of law and allows clients and their lawyers to freely discuss legal issues without unintended disclosures. Thus, apart from certain exceptions, Canadian courts will not compel production of privileged communications such as emails, letters and reports exchanged between clients and their lawyers for the purpose of legal advice.
For years, this special treatment did not attach to communications between clients and their patent agents. This was problematic because patent agents often provide equally strategic and sensitive advice and opinions in the specific area of patents. As a result, it was common practice to channel such communications through lawyers to shroud these under solicitor-client privilege.
The Federal Court recently released its decision in Canadian Broadcasting Corporation v. Conservative Party of Canada, 2021 FC 425 [CBC] in which it found that the Conservative Party’s use of CBC’s copyrighted materials in their political campaign fell under the fair dealing exception in the Copyright Act. The court deemed the Conservative Party’s use of substantial sections of CBC’s original works to be fair because the usage fell under the category of criticism. In making this decision, the court left the door open for future users of copyrighted materials to argue that their use falls under the fair dealing exception for criticism even when the reproduced work itself is not the target for criticism.
The Federal Court recently released its decision in Winkler v. Hendley, 2021 FC 498 [Winkler] in which it found that an author who claims to have published a non-fictional work cannot later claim that the work was in fact fictional in order to get around the principle that facts are not protected by copyright law.
Traditionally, statements made during prosecution of Canadian patent applications or corresponding foreign patent applications (the “file wrapper”) were not admissible for construing terms in the claims of Canadian patents (so-called “file wrapper estoppel”). The Supreme Court of Canada even went so far as to refer to file wrapper estoppel as a “pandora’s box”. In the immortal words of Bob Dylan, however, times they are a changing. Recent legislative changes to the Canadian Patent Act, and more recently the decision of the Federal Court of Canada in Canmar Foods Ltd. v. TA Foods Ltd. appears to have changed that.
In view of the the legislative changes and the Canmar decision, patent applicants in Canada should be more circumspect as to what material makes its way into the Canadian prosecution file. As with many things in life, sometimes the less said the better!
In Canmar, the parties were competitors in the manufacture and supply of flax seed products, particularly roasted flax seed products. The plaintiff/patentee, Canmar Foods Ltd. (“Canmar”), owned a Canadian patent directed to methods for roasting oil seeds and the products produced by these methods. Canmar became aware of the defendant’s roasted flax seed products and, when talks broke down, Canmar commenced infringement proceedings.
In a motion for summary judgment. the defendant, TA Foods Ltd. (“TA Foods”), argued that its activities fell outside the scope of the claims of the Canadian patent, when properly construed. TA Foods took the position that in addition to applying a purposive construction to the claims based on a reading of the claims and the specification as a whole, the Court must also take into account representations made during prosecution (e.g. the file wrapper) of the Canadian patent. TA Foods, relying on both the Canadian and U.S. prosecution histories, argued that limitations added to overcome prior art cited in the U.S. case, which were incorporated into the Canadian patent, argued against infringement.