Federal Court Decisions

     T-2028-95

BETWEEN:

     WHIRLPOOL CORPORATION and

     INGLIS LIMITED,

     Plaintiffs

     - and -

     CAMCO INC., AND GENERAL ELECTRIC COMPANY

     Defendants

     REASONS FOR ORDER

TEITELBAUM, J:

Introduction

     This is an appeal of a decision of the Associate Senior Prothonotary dated April 3, 1997. The Prothonotary had dismissed the Defendants' motion to compel production of certain patent files. Specifically, the Defendants had sought to obtain correspondence written between the American in-house counsel (patent attorney) of the Plaintiffs operating in the United States and a Canadian patent agent entrusted with the prosecution of three of the Plaintiffs' Canadian patents. The Defendants had originally also sought documents from the Plaintiffs' American patent files but withdrew that request before the Prothonotary.

     The documents themselves only exist in the files of the Plaintiff Whirlpool because the Canadian patent agent destroyed his own copies. The Prothonotary ruled that these documents were subject to solicitor-client privilege and did not have to be produced. The Defendants now appeal that order.

     Both parties agree that the documents are relevant to the current litigation. However, there was also no dispute that the correspondence at issue was not written in contemplation of litigation. The Prothonotary came to this same conclusion on the first page of his decision: "No litigation was specifically contemplated at the time". The only issue before the Court is whether the Prothonotary committed an error of law in holding that the documents did not have to be produced because they were subject to solicitor-client privilege.

The Basis of the Prothonotary's Decision

     With respect, I am convinced that the Prothonotary committed an error of law in holding that the documents did not have to be produced by the Plaintiffs. Such errors of law must be overturned: Canada v. Aqua-Gem Investments Limited [1993] 2 F.C. 425 (F.C.A.). At page 3, the heart of his decision, the Prothonotary states that privilege existed because the Plaintiffs' American lawyer had specifically requested the information received from the Canadian patent agent in order to later provide advice to his client. According to the Prothonotary, the American lawyer believed that this information was subject to a solicitor-client privilege. The Prothonotary attempted to distinguish the case at bar from Wheeler v. Le Marchant (1881), 17 Ch.D. 675. The Prothonotary concluded at page 3:

Wheeler v. Le Marchant was not a case where the solicitor had asked the person to generate information for the purpose of enabling the solicitor to give the legal advice or assistance asked by the client. The information already existed, the solicitor asked for it. The request did not render the pre-existing information privileged. It is my view, that where a solicitor requests the person to obtain or generate and supply information to the solicitor so that the solicitor can render legal advice or assistance to his client, that information while possibly exigible from other sources is not exigible from the solicitor's files. This protection is not diminished by the fact that the material or information in the U.S. attorney's files may have been originated by a patent agent.

The Law on Communications Generated by a Patent Agent

     The Prothonotary did not provide any authorities for his conclusion that because a solicitor requests information from a third party to obtain information subsequently provided to a client, this information is privileged even if the third party is a patent agent. However, there is overriding and conclusive jurisprudence in Canadian law that communications between a client and a patent agent are not privileged, unless the documents were prepared through the medium of the client's solicitor if made in contemplation of litigation: Flexi-Coil Ltd. v. Smith-Roles Ltd. et al. (1983), 73 (2d) 89 (F.C.T.D.) at 92-93 [hereinafter "Flexi-Coil"]. In Lumonics Research Ltd. v. Gould (1983), 70 C.P.R. (2d) 11 (F.C.A.) [hereinafter "Lumonics"], Mr. Justice Pratte held for the Federal Court of Appeal at page 15:

It is clear that, in this country, the professional legal privilege does not extend to patent agents. The sole reason for that, however, is that patent agents as such are not members of the legal profession. That is why communications between them and their clients are not privileged even if those communications are made for the purpose of obtaining or giving legal advice or assistance.

     As I stated above in relation to the current proceedings, the dominant, indeed only purpose, of the communication between the Canadian patent agent and the American in-house counsel was the prosecution of the patents in Canada. Mr. Justice Mahoney stated at page 64 in Proctor & Gamble Co. v. Calgon Interamerican Corp. (1980), 48 C.P.R. (2d) 63 (F.C.T.D.) [hereinafter "Calgon"]:

While it was apparently contemplated, at least in the more recent documents, that, once issued, actions for its infringement would be brought against the defendants and others in respect of the products then on the market, the documents clearly relate directly to the processing of the application in the Patent Office and only coincidentally, if at all, to contemplated litigation.

     Where there is no inkling of any contemplation of litigation, as in the case at bar, there is even stronger argument for withholding the solicitor-client privilege from the correspondence of a patent agent.

The Competency of the American Lawyer

     As well, to compound the lack of privilege attending the documents in question, the American lawyer was not competent to give advice to his American clients on Canadian patent law on the basis of the information provided by the Canadian patent agent. I therefore respectfully disagree with the Prothonotary when he states at pages 4-5 of his decision "I am satisfied that, in these circumstances, the American plaintiff's house counsel qualifies as a legal adviser for the purposes of the American plaintiff being able to claim solicitor and client privilege". The Prothonotary cited Re United States of America v. Mammoth Oil Co., [1925] 2 D.L.R. 966 (Ont. C.A.) [hereinafter "Mammoth"]. In Mammoth, a Canadian lawyer gave advice in the United States to an American on a point of American law. The Court held that the lawyer could not invoke solicitor-client privilege as justification for refusing to answer the questions of American authorities. The case at bar is the converse of Mammoth. Here, we have an American lawyer giving advice to American clients about Canadian patent law on the basis of information provided by a Canadian patent agent. In this instance, no one, including the Canadian patent agent, was competent as a legal professional to give advice on Canadian patent law. Mammoth was cited by Mr. Justice Mahoney in Calgon, supra, at page 64, a case that the Prothonotary did not refer to in his own reasons.

The legal adviser with whom the plaintiff communicated must have been professionally qualified to advise it in respect of Canadian law: (Mammoth, supra). While such a communication with a qualified employee is as privileged as if with a qualified private practitioner, any such lawyer must have been qualified to practise law in Canada as a barrister and solicitor, not as a patent agent.

         (my emphasis)

     In Montreal Fast Print (1975) Ltd. v. Polylok Corp. (1983), 74 C.P.R. (2d) 34 (F.C.T.D.) [hereinafter "Montreal Fast Print"], the Court considered circumstances similar to the case at bar. The facts concerned a Canadian law firm which had lawyers who also acted as patent agents, and patent agents who were not attorneys. Mr. Justice Walsh had to sift through the correspondence between this firm and American lawyers representing a corporate American client. None of the correspondence was made in contemplation of litigation. Mr. Justice Walsh concluded at pages 46-47 of his decision that certain communications in connection with patent applications (between a Canadian patent agent and an American lawyer purporting to give advice to American clients on questions of Canadian law) were not privileged:

2. All communications from Pennie and Edmunds [the American attorneys] to Herridge, Tolmie the Canadian firm or to the client Polylok Corporation as well as all communications from Herridge, Tolmie or Polylok Corporation to Pennie and Edmunds or to each other are privileged, with the exception of communications addressed to patent agents members of said firms or emanating from such patent agents, acting solely in their quality as patent agents for prosecution of the Canadian applications and not constituting any legal advice, which are not privileged.

         (my emphasis)

3.      Also excluded from privilege are communications from Pennie and Edmunds to Herridge, Tolmie in connection with said patent applications to the extent that any such communications purport to give advice with respect to Canadian law.

         (my emphasis)

     As well, in one important respect, the current proceeding differs from Montreal Fast Print since all of the correspondence at issue is addressed to and from individuals working solely as patent agents. The fact that a patent agent was part of a firm that also carries on business as barristers and solicitors and as patent agents under the same name is not material. Just as Mr. Justice Mahoney determined at page 65 in Calgon, supra, the correspondence at issue in the case at bar is directed to and from one of the patent agents rather than one of the lawyers of the firm.

Conclusion

     The burden was on the Plaintiffs as the party invoking solicitor-client privilege to prove that it existed in Canadian law: (Lumonics, supra, at 16). They have not done so. Counsel for the Plaintiffs cited Descôteaux et al. v. Mierzwinski, [1982] 1 S.C.R. 860, a decision of the Supreme Court of Canada, to argue that in Lumonics, supra, the Federal Court of Appeal had misconstrued the scope of solicitor-client privilege as it pertains to patent agents. Mr. Justice Lamer (as he then was) stated at page 873 of his decision in Descôteaux:

Seeking advice from a legal adviser includes consulting those who assist him professionally (for example, his secretary or articling student) and who have as such had access to the communications made by the client for the purpose of obtaining legal advice.

     The Plaintiffs argue that if the communications of an articling student are encompassed within the umbrella of the solicitor-client privilege, all the more reason that documents produced by a seasoned professional like a patent agent should enjoy the same protection. However, the Plaintiffs were unable to point to any cases that had interpreted Descôteaux in this fashion. Moreover, the Plaintiffs failed to cite cases that had cast doubt on the numerous decisions made subsequent to Descôteaux on the role of patent agents and solicitor-client privilege. Indeed, in Montreal Fast Print, supra, Mr. Justice Walsh did take Descôteaux into account. However, after a review of the relevant caselaw, including Descôteaux and Flexi-Coil, supra, he still held at page 42 of his decision that "the distinction is still maintained between legal advice given by a patent agent as such and opinion given by an attorney or a solicitor". If one looks to the context of Mr. Justice Lamer's statement in Descôteaux, it is clear that the Supreme Court is addressing the scope of solicitor-client privilege in relation to a professional legal advisor. On page 872 of his decision, immediately preceding the passage cited above, Mr. Justice Lamer quotes from Wigmore (8 Wigmore, Evidence, paragraph 2292 (McNaughton rev. 1961):

Where legal advice of any kind is sought from a professional legal adviser in his capacity as such, the communications relating to that purpose, made in confidence by the client, are at his instance permanently protected from disclosure by himself or by the legal adviser, except the protection be waived.

     In addition, the American in-house lawyer, the recipient and author of the communications at issue, was not competent to give advice to his American clients on the basis of information provided by the Canadian patent agent. This factor also mitigates extending the scope of the solicitor-client privilege to the case at bar.

     I have looked to the documents themselves that will be produced and am satisfied that they concern correspondence between a Canadian patent agent and the American in-house counsel of the Plaintiffs and are within the jurisdiction of the Court: Proctor & Gamble Co. v. Nabisco Brands Ltd. (1989), 24 C.P.R. (3d) 570 (F.C.A.).

     The appeal from the Order of the Prothonotary is allowed. Under the terms of the separate Order, the documents from the solicitors' files shall be produced and made available to the Defendants.

                                                          J U D G E

OTTAWA

April 11, 1997