Consultation on Increasing Legal Certainty in Intellectual Property Services and Administration

Introduction

The Canadian Bar Association’s Intellectual Property Section (CBA Section) submits the following comments in response to questions posed in the Consultation Paper on increasing legal certainty in intellectual property services and administration dated March 23, 2026¹ and draft agreement regarding cross-border aspects of IP agent privilege provided on March 23, 2026.

The CBA Section has consulted with its Executive members and established a working group to provide responses to the questions with respect to Topics 1, 2, and 4 of the Consultation Paper and the draft agreement regarding cross-border aspects of IP agent privilege.

A. Topic 1: IP Client-agent privilege

Recent Developments in Canada on Patent Agent Privilege Since the Prior Consultation

During the 2014 consultation, communications between patent agents and their clients were not yet privileged in Canada. The law on agent privilege in Canada changed on June 24, 2016, when section 16.1 was added to the Patent Act.

Section 16.1 reads as follows:

16.1(1) A communication that meets the following conditions is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries and no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding:

(a) it is between a patent agent and their client;

(b) it is intended to be confidential; and

(c) it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention.²

A similar provision was also added to section 51.13 of the Trademarks Act. This provision has not yet been considered by the Courts.

51.13 (1) A communication that meets the following conditions is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries and no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding:

(a) it is between a trademark agent and their client;

(b) it is intended to be confidential; and

(c) it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trademark, geographical indication or mark referred to in paragraph 9(1)(e), (i), (i.1), (i.3), (n) or (n.1).³

The statutory language does not create universal privilege. Privilege attaches when the communication is made for the purpose of seeking or giving advice "relating to the protection of an invention/trademark".

Question 1: How would potential changes in the scope of agent practice affect the availability or affordability of agent or legal IP advice?

The CBA Section acknowledges at the outset that the current scope of patent agent privilege, as clarified by the Federal Court in Janssen Inc. v. Sandoz Canada Inc.⁴ (Janssen), means that clients who require privileged advice on infringement, freedom to operate, validity, or litigation-related matters will need to engage lawyers to secure solicitor-client privilege over those communications. We recognize that this may increase costs for some clients, and that this cost increase may be felt more by Canadian small and medium-sized businesses. We also acknowledge that there is ongoing debate, both domestically and internationally, about whether this limitation on agent privilege is appropriate or whether a broader scope would better serve client needs.

However, it is our considered view that these costs are justified by the materially different skills, obligations, and training that lawyers bring to bear on such advice. Lawyers must complete a three-year law degree, pass law society licensing examinations, complete an articling period, and remain subject to ongoing regulation by provincial law societies. Their training encompasses civil procedure, evidence, constitutional law, administrative law, contracts, torts, professional responsibility, and the full breadth of legal reasoning, equipping them to provide comprehensive advice on litigation strategy, risk assessment, enforceability, and the interplay between IP rights and the broader legal landscape. By contrast, patent and trademark agents are not required to hold law degrees, and their qualifying examinations and supervised training are focused on the technical nuances of patent or trademark prosecution, not on the full spectrum of legal advisory work. In addition, agents have no rights of audience before Canadian courts and therefore cannot act for clients in court proceedings.

The additional cost of engaging a lawyer for privileged infringement, freedom to operate, or validity advice reflects the value of this deeper expertise. Clients who obtain such advice from a lawyer receive the benefit of solicitor-client privilege, a near-absolute protection rooted in centuries of common law development, together with the assurance that their advisor is trained in the ethical, procedural, and strategic dimensions of litigation. This protection is not merely procedural; it is substantively superior because it is grounded in a professional whose training and regulatory obligations are designed to support it.

Moreover, extending agent privilege to cover infringement, freedom to operate, validity and/or litigation-related advice would not necessarily reduce costs for clients. Clients who obtain opinions from agents on litigation-related matters may face actual or threatened litigation and still need to obtain a new opinion from a lawyer who can represent them in court. In such cases, clients could end up paying twice, once for the agent's opinion and again for a lawyer's opinion, resulting in higher total costs rather than lower ones. Expanding the scope of practice for non-lawyer agents could also raise the barrier to entry into the agent profession: the more activities for which agents would need to be competent, the more difficult and costly it would become to qualify as an agent. This could reduce the supply of agents and increase costs for prosecution-related services where agents currently provide their primary value to clients.

It is our position that privilege protection for activities within the ordinary scope of patent agent practice, the drafting and prosecution of patent applications, advising on patent filing strategy, conducting novelty searches, and related matters—is appropriate and well-supported by the current regulatory framework. Extending privilege beyond these activities, to approximate the breadth of solicitor-client privilege, would not be consistent with the College of Patent Agents and Trademark Agents Act ⁵ (CPATA Act) and would not serve the public interest. We acknowledge that others hold the contrary view and that this remains a contested issue. The higher cost of engaging a lawyer for infringement, freedom to operate, validity, and/or other litigation-oriented IP advice is a reflection of the higher qualifications, deeper professional obligations, and the more rigorous oversight to which lawyers are subject, and it is a cost that is justified by the quality and reliability of the advice and the strength of the privilege that attaches to it.

Question 2: Should the government clarify the scope of agent practice or agent privilege to explicitly exclude or include validity and/or infringement opinions? What other activities should be included or excluded?

The CBA Section is of the view that Associate Judge Horne's decision in Janssen adopted a sufficiently broad interpretation of section 16.1(1)(c) of the Patent Act, and it is not necessary for the government to further clarify the scope of agent practice. This is consistent with the CBA Section’s position for the last decade or so, including in written and verbal government consultations. We acknowledge that some stakeholders disagree with this position and advocate for a broader scope of agent privilege. In the CBA Section’s view, this interpretation of section 16.1(1)(c) is reasonable and in line with current practice in parallel jurisdictions. It strikes a balance between encouraging honest, open, and thorough communication with agents and allows for efficient and fair litigation.

The Janssen decision provides helpful guidance on what constitutes communications "made for the purpose of seeking or giving advice with respect to any matter relating to the protection of an invention," and therefore within the scope of section 16.1(1)(c). The Court concluded that the phrase "relating to the protection of an invention" does not extend to an analysis of whether a client's product infringes third-party patent rights. The Court reasoned that Parliament did not intend to attach privilege to all communications between patent agents and clients involving patents. Rather, the statutory privilege is limited to advice connected to "the protection of an invention.” Because a non-infringement opinion does not relate to the disclosure of the invention or otherwise contribute to the patent bargain, it falls outside the scope of “protection of an invention” and is not privileged.

Other decisions have also subsequently clarified the scope of agent privilege. For instance, the Court held in Boehringer Ingelheim v. Pharmascience,⁶ that patent agent privilege is not limited to circumstances where a patent application has been filed or is pending.

International comparisons are instructive, though they reveal a more nuanced picture than a simple claim of alignment. In the United States, the Federal Circuit in In re Queen's University at Kingston,⁷,recognized a limited patent agent privilege that extends only to communications "reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.” This draws a distinction between communications central to prosecution and those involving infringement or litigation-oriented analyses. The current Canadian scope under Janssen is broadly consistent with this U.S. approach.

In the UK, however, the position is broader than Canada's. Section 280 of the Copyright, Designs and Patents Act 1988⁸ provides privilege to patent agents for "any matter relating to the protection of any invention, design, technical information, or trade mark." The UK Chartered Institute of Patent Attorneys (CIPA) has confirmed that this language extends privilege to communications relating to inventions belonging to third parties as well as to those of the client, meaning that infringement opinions and freedom to operate opinions are covered. CIPA has described this longstanding position as working well. We acknowledge that Canada is not currently fully aligned with the UK on this point, however, the Canadian patent prosecution system is more similar to that of the US than the UK (e.g., Canada and the US both have 12 month grace periods for disclosure, use purposive construction for interpreting claims, and have a reciprocal agreement allowing Canadian patent agents to practice before the USPTO in specific circumstances, and vice versa, whereas the UK has an absolute novelty requirement and no grace period, a stricter “problem-solution” approach, and no reciprocal agreement for its agents with Canada). We also note that UK patent attorneys must also complete additional qualification steps, including a mandatory Litigation Skills Course within three years of qualifying, before they obtain any rights of audience, distinguishing their regulatory framework from Canada's, and that UK lawyers have an entirely different educational system than Canadian lawyers.

In the European Patent Office, evidentiary privilege extends to opinions regarding the validity, scope of protection, or infringement of a European patent, a notably broader standard than Canada’s. Before the Unified Patent Court, patent attorney-client privilege covers all communications related to seeking or providing legal advice, but representation before the UPC requires the European Patent Litigation Certificate as an additional qualification.

In our view, maintaining the current scope of protection aligns Canadian law with that of the United States, which is consistent with the longstanding similarities between the two countries’ systems and laws, and assists with cross-border disputes. We acknowledge that it is narrower than the UK's approach, but in our view that is not itself sufficient to prompt significant changes, particularly given the other significant differences between the Canadian and UK systems. In addition, a material divergence from the current Canadian position and the US position could create uncertainty and unpredictability for litigants and patent holders. We note that there are other organizations recommending broader protection of agent privilege internationally, notably the Intellectual Property Owners Association (IPO) resolution supporting privilege for all confidential communications with certified patent agents regarding subject matter within the scope of the patent agent's authority to practice.⁹ However, in our view this is already consistent with the law in Canada as set out in the Patent and Trademark Acts and Associate Judge Horne's decision in Janssen. Future developments may, over time, shift the international consensus, and we recommend that the government continue to monitor them closely and seek feedback from all stakeholders on an ongoing basis.

It is our position that client-lawyer communications should always be afforded the protection of solicitor-client privilege, regardless of whether a lawyer is acting as a patent agent or trademark agent. To the extent the case law is inconsistent with this position, legislative changes should resolve this inconsistency to adequately protect client-lawyer communications.

We recognize that privilege belongs to the client, and that the question of scope must ultimately be assessed from the client's perspective. Some members of the working group have observed that client consultations rarely confine themselves to discrete categories of advice: a single conversation may traverse matters of prosecution, validity, freedom to operate, and infringement risk. Partial privilege can therefore create practical uncertainty for clients as to which portions of their communications may later be compelled in litigation. These are legitimate concerns that merit careful consideration. However, in our view, the appropriate response is not to expand agent privilege to approximate solicitor-client privilege, but rather to ensure that clients are aware of the distinction and can structure their affairs, accordingly, including by engaging lawyers when privileged advice on litigation-related matters is required.

For non-lawyer agents, the CBA Section supports granting privilege to agent-client communications within the statutorily defined scope of service under the CPATA Act.¹⁰ Solicitor-client privilege is appropriately broad because lawyers are trained and licensed to advise on all aspects of legal matters, including litigation strategy, risk assessment, and the full spectrum of legal rights and obligations. Provinces regulate who may provide "legal advice" as part of the "practice of law." For example, in British Columbia, the "practice of law" is defined to include "giving legal advice," and with limited exceptions, only a practising lawyer may engage in the practice of law.

As a result of recent legislative changes, including the CPATA Act¹¹, patent agents and trademark agents are now also regulated. The regulatory framework, including the creation of CPATA, aligns well with the privilege already granted to patent agents’ client communications per the Patent Act. CPATA reinforces that patent agent regulation is aimed at helping the public secure the rights provided under the Patent Act.¹² However, the duties and responsibilities of a patent agent or trademark agent are narrower than those of a lawyer. Privilege protection for activities within the statutorily permitted scope of patent and trademark agent practice is appropriate. Protection as broad as solicitor-client privilege would not be consistent with the CPATA Act.

Additionally, patent and trademark agents practicing before CIPO owe a duty of candor to the Office. They must reply in good faith to any requisition made by an examiner in connection with an examination, and this obligation extends beyond mere responsiveness to include full, frank, and fair disclosure. Privilege rights should not undermine this candor obligation. Confining patent agent and trademark agent privilege to communications relating to the protection of an invention or trademark balances the competing interests of candid professional communication and the public interest in transparent patent and trademark examination.

With the establishment of CPATA, patent and trademark agents have been given a mechanism for professional oversight. However, we wish to emphasize that CPATA's mandate must continue to include training on what agent-client communications are afforded protection, what constitutes a conflict of interest, as well as education on ethics and professional conduct.

Specifically, non-lawyer agents will continue to need training on how to properly deal with confidential information and situations such as:

1. What happens to confidential information if a non-lawyer agent moves to a different firm and the client follows. A presumption may arise that the confidential information would be shared with the new firm, which could result in a conflict of interest;
2. What restrictions exist where the non-lawyer agent is retained by competitor businesses that may result in the non-lawyer agent taking a position on behalf of one client that may be adverse to the other client's interests;
3. Understanding how and when confidential or privileged information can be used; and
4. Understanding that confidentiality survives the end of the client relationship.

These are illustrations of the type of training that must accompany the limited privilege applicable to communications between non-lawyer agents and their clients.

Question 3: Should the scope of practice and client-agent privilege for trademark agents mirror the scope for patent agents?

The statutory language in the Trademarks Act regarding privilege mirrors the corresponding provisions in the Patent Act. Section 51.13 of the Trademarks Act provides that communications between a trademark agent and their client are privileged where they are made "for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trademark, geographical indication, or other marks." There is a notable lack of case law related to trademark agent privilege, with no ruling having been made under section 51.13, and until such a ruling is made, the extent of the privilege remains uncertain.

However, there is a notable asymmetry in qualifications between patent agents and trademark agents. For example, unlike patent agents, trademark agents do not have a specialized infringement examination, and the subject of infringement appears to be only minimally included as part of a general foundational knowledge requirement by CPATA. This difference raises questions about whether the scope of practice and privilege should be identical.

Any decision to align the scope of practice and privilege for trademark agents with that of patent agents should consider whether trademark agents have the necessary qualifications and training to justify such an alignment, and whether additional examination or certification requirements would be appropriate.

Question 4: Certain jurisdictions require an agent to obtain an additional qualification to be granted an expanded scope of practice. If the scope of agent practice or agent privilege is modified to include additional activities, should there be any additional criteria to qualify for obtaining an expanded scope?

Several jurisdictions provide instructive models. In Europe, patent attorneys can represent parties before the Unified Patent Court if they possess appropriate qualifications, specifically the European Patent Litigation Certificate. In Germany, patent attorneys must pass a specialized bar exam to represent clients before the German Patent and Trade Mark Office and the Federal Patent Court. These examples illustrate that expanded scope of practice is typically accompanied by additional qualifications.

Effective oversight and training are cornerstones of privilege for lawyers and non-lawyers alike. CPATA's mandate must include training on what communications are afforded protection, what constitutes a conflict of interest, and education on ethics and professional conduct. Specifically, non-lawyer agents need training on: handling confidential information across firm changes; conflicts of interest arising from representation of competing businesses; the permissible use of confidential or privileged information; and the principle that confidentiality survives the end of the client relationship. We note that these are all subject-areas lawyers are trained and examined in across Canada.

Solicitor-client privilege is appropriately broad because lawyers are trained and licensed to advise on all aspects of legal matters, including litigation strategy, risk assessment, and the full spectrum of legal rights and obligations. The duties and responsibilities of a patent agent and trademark agent are narrower than those of a lawyer, and privilege protection as broad as solicitor-client privilege would not be appropriate nor consistent with the CPATA Act. We recognize that some stakeholders advocate for broader privilege as a means of reducing client costs and simplifying cross-border practice. However, in our view, cross-border practice between Canada and the US is already simplified and results in cost efficiencies, and no further changes to agent privilege are required.

We note that if, contrary to our submission, the scope of agent privilege is broadened, it would be prudent to impose corresponding additional educational requirements, qualifications and training requirements to ensure that agents have the competence to provide the types of advice that would then be covered by privilege.

B. Topic 2: Unauthorized practice

Question 1: What is the impact of unauthorized practice on your business? Do you believe the prevalence of unauthorized practice increased or decreased in recent years?

The prevalence of unauthorized practice in the intellectual property space has increased significantly in recent years and continues to grow. Patent and trademark agents across Canada observe non-agents prosecuting applications on behalf of other parties. Individuals and organizations that are neither registered patent or trademark agents nor licensed to practice in any Canadian jurisdiction routinely hold themselves out to the public as capable of prosecuting patent and trademark applications and providing legal advice on patent and trademark matters.

This unauthorized practice profoundly harms both legal/agent businesses and the public we serve. Fraudulent individuals and companies target Canadian business owners and IP applicants through phishing attempts, requesting payments to prevent perceived "threats" to their intellectual property rights. CPATA continues to receive and act on a growing number of complaints about emails, phone calls, and texts that clients of licensees and other members of the public receive from these unauthorized actors. The sheer volume of fraudulent entities is staggering. CPATA and CIPO have identified dozens of business names, fake individual names, phone numbers, and websites associated with these scams. Some of these entities actively carry on business, with offices in cities across Canada.

The impact on client trust is substantial. When fraudulent communications from individuals falsely claiming to be intellectual property experts, attorneys, or agents, or even claiming to represent CIPO, bombard clients, confidence in the profession as a whole erodes. Clients become understandably wary of legitimate communications from their own agents and lose trust in professional advice after exposure to scams referencing urgent patent or trademark matters requiring immediate attention and outlining dire consequences for inaction.

When clients fall victim to unauthorized practitioners, they often incur significant additional costs to remediate the damage. Applications filed by unqualified individuals frequently contain errors, deficiencies, or fraudulent information that licensed professionals must then correct. Depending on the extent of the incorrect information, the application may not be salvageable, resulting in a complete loss of rights to the applicant. This problem is not unique to Canada. The United States Patent and Trademark Office (USPTO) has similarly observed a large uptick in fraudulent or improper trademark and patent filings, including improper or forged signatures, inadequate review, submission of false information, and abuse of filing accounts. The financial losses to clients, exposure of sensitive information, and inaccurate filings that result from these scams compound the harm.

Unauthorized practitioners and scammers cause substantial direct financial harm to clients. Fake solicitations often demand fees far exceeding CIPO's official amounts, and scam operators pressure clients into paying inflated or entirely fabricated fees for services that are either unnecessary or never rendered. For example, scam emails typically create a false sense of urgency, warning business owners that their trademarks are at risk, demanding immediate payment to prevent legal action, or falsely claiming their legal counsel made a mistake. Fraudsters exploit information and dates from the trademarks database to make their demands appear legitimate, telling clients their trademarks will expire imminently when the actual deadline may be a year away, thereby tricking them into paying fees immediately.

The USPTO has catalogued an extensive and growing list of fraudulent or misleading solicitations from domestic and international entities that demand payment from trademark and patent holders under false pretenses. In one notable case, the USPTO issued a final sanctions order against Abtach Ltd. and its subsidiaries.¹³ These entities operated dozens of seemingly independent logo design and low-cost online trademark filing companies. The USPTO found that they overcharged for filing fees, misled customers about goods and services in applications, and created fake USPTO demand letters to justify false fees and services.

Fraudsters in Canada are also growing bolder. They bypass legal counsel and agents to contact clients directly, pressure them to pay fees to maintain registrations they already hold and even threaten litigation if clients do not comply. When victims pay and subsequently try to reverse the charges, scammers send threatening follow-up correspondence, falsely accusing the victims of fraud and citing the Criminal Code of Canada to intimidate them into abandoning their chargebacks.

Unauthorized practice also makes resolving disputes exceedingly difficult. Some fraudulent actors fraudulently use the names of registered agents or impersonate licensed professionals, making it nearly impossible for clients to distinguish legitimate from illegitimate actors. The scams continue to evolve in sophistication, with many variants now including not just emails but also phone calls and text messages. Tracking down and holding accountable these unauthorized practitioners remain an enormously challenging task.

Question 2: Do you think current public-facing materials are sufficient to help individuals and businesses identify unauthorized practitioners, and if not, what improvements could be made (e.g., additional educational initiatives such as webinars with SMEs or incubators)?

No, the current public-facing materials are not sufficient. Despite CPATA and CIPO publishing scam alerts, lists of known fraudulent entities, and guidance on warning signs, unauthorized practitioners continue to catch clients. The scams continue to evolve in sophistication, and existing materials fail to reach the public in a timely or effective manner.

One particularly alarming dimension of the problem is identity theft affecting licensed professionals. Scam emails have fraudulently used the names of registered agents and attorneys in correspondence with victims to lend credibility to the fraud, without the professional’s knowledge or consent. This harms not only the public but also puts licensed professionals at risk of reputational damage and professional liability exposure.

Tracking down the unauthorized practitioners behind these operations proves extremely difficult. The fraudulent entities operate under constantly changing business names, phone numbers, and websites. By the time authorities identify and publicize a particular scam entity, new ones have already emerged under different names.

CIPO deserves recognition for taking commendable steps to combat IP scams. CIPO established a dedicated IP Scam Awareness Zone¹⁴ on its website, which provides guidance on recognizing IP scams, tools to verify emails, text messages, and letters, and a searchable collection of real IP scam messages reported to CIPO, including scam emails from as recently as April 2026. CIPO also created clear verification guidance, advising the public that official CIPO emails end with "@ised-isde.gc.ca," that CIPO text messages are sent only for login codes and never request a reply, and that official CIPO letters come from a specific address in Gatineau, Quebec. CIPO has also identified key partners in IP scam prevention, including CPATA, the Intellectual Property Institute of Canada (IPIC), the Competition Bureau Canada, the Canadian Anti-Fraud Centre, and the Canadian Centre for Cyber Security. These efforts represent meaningful progress.

However, despite these efforts, unauthorized practitioners continue to catch clients. The CBA Section recommends several improvements. First, CPATA and CIPO should develop additional educational initiatives designed to reach small business owners and entrepreneurs, the primary targets of these scams, such as webinars or targeted email and social media campaigns. Scam communications often target businesses without legal departments or immediate access to counsel, making it easier to frighten them into acting without seeking a second opinion.

Second, CPATA should work more closely with CIPO to ensure that applications filed by non-agents are flagged and rejected, and that both bodies share evidence of unauthorized practice. While CIPO does not enforce criminal law related to IP scams or fraud, it remains committed to helping Canadians recognize, avoid, and report scams. The gap between awareness and enforcement remains a critical vulnerability that must be addressed. The USPTO has implemented measures to address similar issues, including requiring identity verification for filing accounts, requiring U.S. counsel of record for foreign-domiciled applicants, and actively flagging applications submitted by non-agents for referral to professional governing bodies.

Third, with the rise of artificial intelligence, fraudsters possess even more powerful tools. Easy access to AI tools will likely result in more sophisticated scams through voice cloning, deepfake content, and automated fraudulent correspondence. Public-facing materials must be updated rapidly to keep pace with these evolving threats.

Question 3: Are the current Criminal fines and penalties sufficient to deter unauthorized practice? Should they be increased?

No, the current criminal fines and penalties do not sufficiently deter unauthorized practice, not because the penalties themselves are necessarily inadequate on paper, but because authorities rarely enforce them. The fundamental problem is one of enforcement, not quantum. Without meaningful enforcement activity, even the most severe penalties on the books will fail to deter unauthorized practitioners who calculate, correctly, that the risk of facing consequences is negligible.

The CPATA Act already provides significant penalties. Under sections 67 and 68, persons who falsely claim to be a patent or trademark agent are guilty of an offence and liable on summary conviction to a fine of up to $25,000 for a first offence and $50,000 for a second or subsequent offence.¹⁵ Under sections 70, 71, and 73, persons who engage in unauthorized representation before the Patent Office or the Office of the Registrar of Trademarks face fines of up to $25,000 for a first offence and $50,000 for a second or subsequent offence, as well as imprisonment for up to six months.¹⁶ Section 74 of the CPATA Act also grants the Federal Court the power to issue injunctions to cease or refrain from unauthorized practice on application by the College.¹⁷ These penalties are substantial. The problem is that no one has ever used them.

A review of CPATA's published Professional Responsibility Proceedings and Decisions reveals that, to date, all publicly reported discipline proceedings have involved licensed agents, addressing issues such as professional misconduct and incompetence by persons already within CPATA's regulatory framework. We are not aware of any summary conviction obtained under sections 69 or 73 of the CPATA Act for unauthorized practice by a non-agent, nor of any injunction sought under section 74. The criminal penalties that exist on paper have never been tested in practice to our knowledge. Without enforcement measures, increasing fines and penalties will have no impact.

By contrast, the USPTO has demonstrated that active enforcement makes a meaningful difference. The USPTO's Office of Enrollment and Discipline actively investigates and disciplines practitioners who engage in improper conduct, issues warning letters, publishes formal disciplinary matters, and pursues reciprocal discipline. The USPTO has also taken direct action against fraudulent filing companies. For example, it issued a final sanctions order against Abtach Ltd. and its subsidiaries for operating dozens of seemingly independent logo design and low-cost online trademark filing companies that overcharged for filing fees and misled customers. Canada needs a similarly active and visible enforcement regime.

Question 4: Should CPATA have the authority to issue monetary penalties for unauthorized practice?

Yes, CPATA should have the authority to issue monetary penalties for unauthorized practice. Parliament created CPATA, at least in part, to protect the public and to allow patent and trademark agents to self-regulate in exchange for demonstrating competence and maintaining appropriate insurance coverage to protect the public from losses caused by unskilled agents. Without the authority to impose monetary penalties on unauthorized practitioners, CPATA lacks a critical enforcement tool.

The ability to issue monetary penalties for unauthorized practice would complement CPATA's existing complaint mechanisms and serve as a meaningful deterrent against the growing number of unauthorized entities actively operating across Canada. It would also send a clear signal to the public that the regulatory body charged with overseeing IP professionals possesses both the tools and the resolve to act against those who undermine the profession’s integrity.

C. Topic 4: Patent demand letters

The comments that follow have been prepared keeping in mind Patent Act s. 76.2, which provides that: “[a]ny written demand received by a person in Canada, that relates to an invention that is patented in Canada or elsewhere or that is protected by a certificate of supplementary protection in Canada or by analogous rights granted elsewhere, must comply with the prescribed requirements.”¹⁸ In particular, the comments that follow are prepared with a view to what the ‘prescribed requirements’ might be.

At the outset, the CBA Section is concerned with the idea of the Patent Act regulating [see above] the conduct of lawyers. The common law has a number of examples of judges finding parties liable for improper conduct, and enjoining them and their counsel from engaging in certain patent assertion-related conduct.¹⁹ In this regard, section 7(a) of the Trademarks Act provides a civil remedy covering instances where an alleged infringer’s customers and/or the public are sent or made aware of false or misleading patent infringement allegations in a demand letter that tend to discredit the business, goods or services of a competitor.²⁰ Moreover, section 52(1) of the Competition Act prohibits, for the purpose of promoting, directly or indirectly, the supply or use of a product or any business interest, by any means whatever, knowingly or recklessly making a representation to the public that is false or misleading in a material respect.²¹ Furthermore, common law trade libel (or "injurious falsehood") is a tort protecting businesses from false statements that disparage their goods, services, or business reputation.

The CBA Section is aware of instances where demand letters, typically originating from a company and not a private firm, are sent in vast quantities to alleged infringers, and contain threats designed to intimidate the recipient into compliance and/or monetary settlement. It is not uncommon for the enforcing party to offer to settle any dispute in exchange for a monetary payment in an amount that is less than the cost to assess the merits of the demand, or that is much less than the cost to defend litigation. This monetary dynamic distorts the purpose of the patent system: it incentivizes payments to avoid litigation as opposed to payments to compensate a patent owner for the value of their invention.

Often these recipients are not in a financial position to seek legal advice, regardless of whether they do or do not actually infringe the alleged patent. This strategy of sending a high volume of demand letters is a revenue generating stream for the patentee, as opposed to the legitimate enforcement of patent rights. In such circumstances, there should be a remedy available to recipients where the demand letter fails to meet certain requirements.

These types of letters do often originate from patent assertion entities (PAEs). However, the CBA Section disagrees with the statement in the consultation that implies that PAEs (termed “patent trolls” in the consultation) are bad actors per se. They could become bad actors by engaging in bad practices. But the mere assertion of a patent by a non-practicing entity does not make them a bad actor.

Patents are expensive to assert and have monetary value. The sale and licensing of patents is permitted by the Patent Act and needs to remain so. To facilitate the fair and transparent conduct of patent selling and licensing, patent demand letters should be required to meet certain minimum requirements.

In terms of ‘prescribed requirements’, as discussed below at a minimum, identifying the patent and claims being asserted, the owner and licensee (if applicable), and the product(s) or other activity(ies) being alleged to infringe would make demand letters clear and consistent. In addition, providing an explanation of how or why the product(s) or other activity(ies) infringes would demonstrate that the allegation is more likely to not be a fishing expedition and would curb the abusive practice of some patent owners of baldly alleging infringement without having performed any due diligence.

Question 1: Do you have experience receiving demand letters and if so, have you had any challenges responding to them?

The CBA Section members have extensive experience both drafting/sending and responding to patent demand letters. It is common practice to send demand letters prior to commencing litigation in the hope that it can lead to a negotiated resolution, and this practice should be encouraged. Whether a settlement is reached or an action is filed, either situation is normal in the context of patent owners and alleged infringers interacting. Challenges do, however, arise where demand letters lack sufficient detail to allow the recipient to informatively assess the merits of any infringement allegations. Such demand letters do not meaningfully encourage early settlement, as it can be challenging to meaningfully respond to such letters.

Question 2: What would you suggest to make demand letters clearer or more consistent?

At a minimum, identifying the patent and claims being asserted, the owner and licensee (if applicable), and the product(s) or other activity(ies) being alleged to infringe would make demand letters clear and consistent. In addition, providing an explanation of how or why the product(s) or other activity(ies) infringes would demonstrate that the allegation is more likely to not be a fishing expedition and would curb the abusive practice of some patent owners of baldly alleging infringement without having performed any due diligence.

To be clear, the CBA Section is not suggesting an element-by-element claim chart-style analysis (with respect to either claim construction or infringement) is required at the demand letter stage, but something more than merely a general assertion of infringement with respect to an accused’s product or process should be required. This acknowledges that in some cases not all information on an accused product or process is available to a patentee outside of formal discovery and strives to strike a balance between this reality and the preference that demand letters provide sufficient detail to enable meaningful assessment and response.

Similarly, a sender of a demand letter should not be held to the specific asserted claims or accused products/processes identified in a demand letter for purposes of what claims or products/processes may be alleged in subsequent litigation. It should be sufficient for a demand letter to provide details of the alleged infringement that are exemplary in nature for purposes of enabling meaningful assessment and response to the allegations by the demand letter recipient.

Question 3: What should be the minimum information required to be included in a demand letter? (e.g., the patent number, claim numbers, the patent owner, which products or activities infringe the patent, etc.)?

As stated above, identifying the patent and claims being asserted, the owner and licensee (if applicable), and the product(s) or other activity(ies) being alleged to infringe are the minimum information necessary in a demand letter. In addition, and as stated in more detail above, demand letter senders should be required to explain at least some details as to how or why there is infringement.

Question 4: Who should be able to sue the sender of a demand letter as an aggrieved party under the regime? Which letters should qualify as "demand letters" subject to the demand letter requirements?

Any recipient of a demand letter should be able to sue the sender, as well as any party affected by the demand. For example, where a manufacturer’s customer receives a demand letter, the manufacturer should qualify as an aggrieved party where the manufacturer’s product is at least in part implicated in any infringement allegation.

If a process is put in place to effect such a remedy, it should be administrative in nature and not require the demand letter recipient to hire a lawyer – which was likely part of the reason they would settle in the first place. Alternatively, if the process must be judicial, careful attention should be given to establishing a process that maximizes efficiency and cost effectiveness for the applicant/plaintiff for the reasons noted above.

D. Responses to Questions on the Draft International Agreement on Cross-Border Aspects of Client-Patent Attorney Privilege

Question 1: What are your views on the draft agreement?

The draft agreement proposes to establish a minimum standard of protection for IP agent advice globally, by ensuring common standards for advice to qualify as privileged and by requiring that privileged advice from one member state be protected in other member states. The agreement focuses on patent advisors, with an optional ability for participating jurisdictions to extend the scope to other areas of IP law through an opt-in clause. The agreement does not explicitly include trademark agents.

The agreement defines "patent advisor" as an advisor authorized to act before a competent administrative or judicial authority and officially certified to provide professional advice concerning patents. As set out in this submission, this definition creates concerns because the qualifications, training, and scope of practice for patent agents vary significantly across jurisdictions.

We also note several drafting concerns with the agreement text. First, the title of the agreement should refer to "agents" rather than "attorneys" to accurately reflect the status of non-lawyer practitioners in most jurisdictions. Second, the 6th recital should avoid the term "legal advice" and instead use simply "advice," as characterizing agent communications as "legal advice" could create confusion about the scope of agent practice. Third, the definition of "professional advice" in Article 1(d) should not extend to "patent law" but rather to "patent advisor’s area of expertise” to avoid implying that agents are authorized to provide legal opinions on patent law.

Question 2: Should the draft agreement be a binding agreement (i.e., a treaty), or would you support a non-binding approach (e.g., international guidelines, non-binding memorandum of understanding, etc.)?

The CBA Section supports a non-binding approach to assess participation among states with different legal traditions and privilege frameworks, while still promoting harmonization.

Question 3: Would you support Canada upholding foreign agent privilege, regardless of if that advice would not have been covered by domestic privilege provisions?

This question goes to the heart of cross-border IP practice, and the CBA Section approaches it with caution. Canada currently provides privilege for advice from foreign IP agents but applies Canadian standards rather than the foreign jurisdiction's standards. The draft agreement would change this approach by requiring Canada to uphold foreign agent privilege based on the scope of protection in the foreign agent's jurisdiction, even if that advice would not have been privileged under Canadian domestic provisions.

While the CBA Section recognizes there are other stakeholders who argue in favour of this approach based on reducing uncertainty for clients operating in multiple jurisdictions; preventing the loss of confidentiality that occurs when privileged advice in one jurisdiction is disclosed in another; and encouraging cross-border trade and enforcement of IP rights, such uncertainty is alleviated in significant part by the recommendations set out elsewhere in this submission, including enhanced training on the scope of privilege and confidentiality obligations and ensuring that clients are aware of the distinction between agent privilege and solicitor-client privilege so they can structure their affairs accordingly. It is the CBA Section's view that the risks of deferring to foreign privilege standard outweigh the benefits at this stage. Our comparative analysis demonstrates that the qualifications, training, and scope of practice for patent agents and trademark agents vary significantly across jurisdictions. In some jurisdictions, patent agents receive extensive litigation-oriented training (e.g., Germany’s training at the Federal Patent Court), while in others (e.g., the United States), the registration exam is a single multiple-choice test with no litigation or supervised practice component. Requiring Canada to uphold privilege based on the foreign jurisdiction's standards, regardless of how those standards compare to Canadian requirements, would create several serious concerns:

• Privilege shopping: Parties could route communications through foreign agents in jurisdictions with broader privilege protections to shield materials from Canadian litigation, undermining the truth-seeking function of Canadian courts.
• Inequity between litigants: Multinational parties with access to foreign agents in broader-privilege jurisdictions would enjoy greater protection than domestic parties limited to Canadian agents, creating an uneven playing field.
• Erosion of Canadian standards: Deferring to foreign privilege standards that exceed Canadian thresholds would effectively allow foreign regulatory frameworks to dictate the scope of privilege in Canadian proceedings, without any corresponding Canadian oversight or qualification requirements.

If the government pursues cross-border privilege recognition, we recommend robust safeguards: (1) requiring that the communication have a genuine and substantial connection to the foreign jurisdiction’s practice; (2) ensuring that the foreign agent meets minimum qualification standards comparable to Canadian requirements; and (3) preserving the discretion of Canadian courts to assess privilege claims on a case-by-case basis. Canada’s current approach—applying Canadian standards to determine whether foreign agent communications attract privilege—provides a sound baseline that the government should not abandon without careful study of the consequences.

Conclusion

The CBA Section appreciates the opportunity to provide comments to Innovation, Science and Economic Development Canada (ISED) in response to the Consultation Paper on increasing legal certainty in intellectual property services and administration. Consultations of this nature are invaluable to the development of sound IP policy in Canada, as they ensure that the perspectives of legal professionals, IP agents, businesses, and the broader public are meaningfully considered in the policy-making process.

In summary, the CBA Section is of the view that the current scope of agent privilege, as clarified by the Federal Court in Janssen, is appropriate and well-supported by the existing regulatory framework, and that privilege for agent-client communications should remain aligned with the statutorily defined scope of service. On unauthorized practice, we urge stronger enforcement of existing penalties and recommend granting CPATA the authority to issue monetary penalties, alongside enhanced public education efforts by CPATA and CIPO. With respect to patent demand letters, we support prescribed minimum content requirements to promote fairness and curb abusive enforcement practices. Finally, regarding the draft international agreement on cross-border privilege, we favor a non-binding approach and recommend robust safeguards to ensure that any recognition of foreign agent privilege does not compromise Canadian standards or the discretion of Canadian courts.

The CBA Section thanks ISED for the opportunity to contribute to this important consultation and commends the government’s commitment to engaging stakeholders across the IP ecosystem. These consultations play a vital role in shaping a robust and balanced IP framework that serves the interests of all Canadians. We look forward to continued engagement as these policy discussions advance and we remain committed to providing constructive input in support of a strong, fair, and effective Canadian IP system.

End Notes