oyen wiggs green & mutala by housework

VIEWS: 9 PAGES: 3

More Info
									OYEN WIGGS GREEN & MUTALA
INT E L L E C T U A L P RO P E R T Y L AW Y E R S
Gerald O.S. Oyen* Blake R. Wiggs* Bruce M. Green* Catherine D. Mutala* David J. McGruder* Thomas W. Bailey* Gavin N. Manning* George F. Kondor Hilton W. C. Sue Craig A. Ash Richard A. Johnson Todd A. Rattray Grace S. Law Mark A. Hopkinson * Law Corporation

REG I S T E R E D PAT E N T

AND

TRA D E M A R K A G E N T S

PHONE:

(604) 669-3432 (604) 681-4081

4 8 0 - T HE S T AT I O N 601 WEST CORDOVA STREET

FAX:

VANCOUVER, B.C., CANADA
V 6 B 1G 1

cash@patentable.com www .patentable.com

February 27, 2004 Canadian Intellectual Property Office 50 Victoria Street 5th Floor, Room 512B Gatineau, Quebec K1A 0C9 Attention: L. Arseneault Dear Sir/Madam: Re: Discussion Paper on Proposals for Privilege Protection and Self-Regulation of Patent and Trade-mark Agents

By fax no: 819-997-5052

We are writing to provide our firm’s comments concerning the CIPO’s November 2003 “Discussion Paper on Proposals for Privilege Protection and Self-Regulation of Patent and Trade-mark Agents”. We are opposed to IPIC’s proposal for the creation of a College of Patent and Trademark Agents to be responsible for the governance of patent and trademark agents, including the admission, maintenance on the register, review of complaints and discipline of members. We have reviewed the concerns put forward in CIPO’s Discussion Paper which are used by some to support the argument for the creation of such a College, but we do not find those points sufficiently persuasive to justify the creation of the proposed College. For example, one of the concerns put forward is the lack of guidelines for the Commissioner of Patents and the Registrar of Trademarks to deal with improper conduct of agents, and if necessary, to impose disciplinary sanctions. We understand however that there have been very few complaints which have been made in the past in respect of agents’ conduct so this argument is unpersuasive. Similarly, another concern put forward is that unregistered persons are able to perform most functions ordinarily performed by patent and trademark agents. We have not heard this concern expressed by clients or potential clients and therefore also find it unpersuasive. We are however concerned that the creation of the proposed College, and the imposition of the proposed disciplinary process and code of ethics to its members could potentially conflict with existing obligations that we have as members of the Law Society of British Columbia. For example, we have reviewed the proposed disciplinary process for the proposed College and have noted that several of the penalties imposed for complaints would include file reviews by the College, reviews of members’ proposed correspondence, and the like. We have not however received any explanation as to how this would fit with our existing obligation to maintain our clients’ communications and information in confidence pursuant to the Professional Conduct Handbook for BC lawyers. Conceivably we could be put in a situation where disciplinary penalties imposed by the proposed College would require us to breach our professional obligations as lawyers in BC (i.e. by disclosing the information/materials to the College). This would be unacceptable. Further, we have reviewed IPIC’s suggestion that for lawyer-agents each professional body (i.e. provincial law societies or the proposed College) would be responsible for disciplining its members depending on the capacity in which the professional is operating. This

OYEN WIGGS GREEN & MUTALA
-2February 27, 2004

is unsatisfactory since the distinction between providing agency services and providing legal advice is often unclear, leading to the possibility of lawyer-agents facing potential overlapping disciplinary action by two governing bodies. Similarly, we cannot support the proposal for the creation of the College until we have seen a detailed study providing assurance that there will be no inconsistencies or conflicts as between the professional obligations that we have as members of the Law Society of BC and any obligations which may be imposed upon us as members of the proposed College. Similar studies would presumably be required for obligations under the law societies of other provinces. We believe that it is imperative for the CIPO to solicit and obtain particular views on this matter from each of the provincial law societies so that assurances can be received prior to imposing any obligations which may be inconsistent with existing obligations for lawyer-agents. Further still, we understand that IPIC advocates that the proposed College could be funded solely through the existing fees payable by agents to the CIPO for maintenance on the Registers of patent agents and trademark agents. While we have not studied in detail the financial projections and assumptions upon which that conclusion is based, we are concerned that the creation of the proposed College would create an expensive bureaucratic structure and that any funding shortfalls in the future for the proposed College will be passed on to its members in the form of increased fees. Thus, on the whole, we are not persuaded that there is any necessity for the creation of the proposed College as suggested by IPIC, or any other form of structured self-regulation governing body for patent and trademark agents. In our view, the status quo is acceptable. We also oppose the proposal to amend the Patent Act and the Trade-marks Act to create a statutory privilege for agent-client communications. We not persuaded by the concerns put forward to date by some in support of arguments to justify the creation of statutory privilege. For example, we have seen no evidence put forward by clients that Canadian-originated intellectual property is handled initially by foreign firms rather than Canadian firms because of privilege concerns, nor have we heard any evidence from clients or foreign associates that they are less likely to file intellectual property applications in Canada due to a concern about a lack of agent privilege. Another argument put forward by proponents for the proposed statutory privilege is that non-lawyer agents are at a competitive disadvantage vis-a-vis lawyer-agents. We do not find this argument persuasive. As with Canada there is no statutory privilege for agents in the United States and our experience suggests that this has not hurt or diminished the competitive position of US agents. Most importantly, we are quite concerned about the possible effects that creating a statutory privilege for agents will have on solicitor-client privilege. Solicitor-client privilege is a unique aspect of the common law legal system in Canada that is meant to encourage clients to engage in frank and full discussions with their solicitors without fear that those communications will be admissible as evidence. Courts have been very reluctant to extend privilege to relationships other than solicitor-client since doing so would result in relevant evidence being excluded from legal proceedings, which is contrary to the notion that justice is best served by having all relevant evidence disclosed and put before the court. The proposed amendment to create statutory agent privilege must be viewed in this light. We do not find it persuasive to simply refer to similarities between the work of agents and lawyers in the IP field and then conclude that agents must be entitled to privilege. Professionals in many fields provide advice or assistance to clients in a manner which might loosely be “similar” to the manner that lawyers provide legal advice to clients. Such professionals include those identified in CIPO’s Discussion paper - chartered accountants, tax advisors - as well as others such as real

OYEN WIGGS GREEN & MUTALA
-3February 27, 2004

estate agents, notaries, stock brokers and the like. Creating a statutory privilege for patent agents and trademark agents will most certainly leave open the possibility of the recognition of privilege for communications with any number of other professionals or advisers, or worse yet, less stringent recognition of solicitor-client privilege in the future. Diminishing solicitor-client privilege in any way would result in reduced rights and protection for individuals in our legal system as a whole and this would clearly be unacceptable. Thus, we do not support the proposal for the creation of a statutory privilege for client communications with patent agents and trademark agents. Respectfully submitted,

OYEN WIGGS GREEN & MUTALA CAA/as cc: Mr. Jean-Claude Villiard Deputy Minister, Industry Canada By Fax No. (613) 954-3272


								
To top