In Janssen Inc. v. Sandoz Canada Inc., 2021 FC 1265, the Federal Court interpreted the scope of section 16.1 of the Patent Act, the recently enacted provision concerning patent agent privilege.
Section 16.1 provides that communications between a patent agent and their client that are intended to be confidential and are made for the purpose of seeking or giving advice relating to the protection of an invention are protected by patent agent privilege.
In interpreting section 16.1 in this decision, the Court held that patent agent privilege does not apply to all communications between a patent agent and their client, but only to communications related to seeking or giving advice in matters “relating to the protection of an invention” (at paragraph 14). The Court expressly concluded that patent agent privilege therefore does “not extend to an analysis as to whether a product infringes third party patent rights”, i.e. a non-infringement opinion (at paragraph 18). However, whether “an infringement opinion of one’s own patent” was protected by patent agent privilege was notably undecided in this decision (at paragraph 18).