A-643-81
Lumonics Research Limited (Appellant)
v.
Gordon Gould, Refac International Limited, and
Patlex Corporation (Respondents)
Court of Appeal, Pratte, Heald and Ryan JJ.—
Ottawa, November 9, 1982; January 28, 1983.
Practice — Discovery — Production of documents — Docu
ments listed as relevant by respondents in patent-infringement
action relating to dealings with American solicitors in U.S.
Patent Office proceedings 20 years earlier — Objecting to
production of 500 items as privileged — Appellant seeking R.
455 order for production — Solicitor-client privilege not
extending to patent agents even if communication concerns
legal advice, because not members of legal profession —
Privilege applying to all confidential communications with
members of legal profession even if legal service normally
dispensed by patent agent — Though solicitor can act in
Patent Office only qua patent agent, client seeks advice qua
solicitor re patent proceedings — Appeal allowed — Federal
Court Rules, C.R.C., c. 663, RR. 448, 455 — Patent Rules,
C.R.C., c. 1250, R. 143(1),(2).
Practice — Affidavits — Solicitor's affidavit filed by
respondents upon motion for order for production of docu
ments — Argument that affidavit must be that of party
claiming privilege rejected — Affidavit filed to substantiate,
not for claiming, privilege — Substance of affidavits governed
by R. 332 — Affidavits as to belief with grounds thereof may
be admitted on interlocutory motions — Affidavit herein in
substance, though not in form, one of belief — Inadmissibility
argument based on dictum of Thurlow A.C.J. in The Queen v.
A. & A. Jewellers Limited, [19781 1 F.C. 479 (T.D.) rejected
— Affidavit not meeting requirement of R. 332(1) in failing to
establish privilege claimed — Appeal allowed — Production
of documents ordered — Federal Court Rules, C.R.C., c. 663,
RR. 332(1), 448, 455.
Patents — Practice — Documents listed as relevant by
respondents in infringement action relating to dealings with
American solicitors in U.S. Patent Office proceedings 20 years
earlier — Claiming solicitor-client privilege for some
Appellant seeking R. 455 order for production — Solicitor-
client privilege not extending to patent agents even if com
munication concerns legal advice, because not members of
legal profession — Privilege applying to all confidential com
munications with members of legal profession even if legal
service normally dispensed by patent agent — Though solicitor
can act in Patent Office only qua patent agent, client seeks
advice qua solicitor re patent proceedings — Federal Court
Rules, C.R.C., c. 663, RR. 448, 455 — Patent Rules, C.R.C., c.
1250, R. 143(1),(2).
The respondents sued the appellant for infringement of a
patent. Pursuant to Rule 448 each side filed a list of documents
in their possession that were relevant to the case. In their list,
the respondents objected to producing some 500 pieces of
correspondence, memoranda and notes, on the ground of solici-
tor-client privilege. All of the documents related to proceedings
in the U.S. Patent Office twenty years earlier, and the solicitors
with whom the respondents claimed to have had a privileged
relationship were American solicitors. The appellant applied
under Rule 455 for an order requiring production of the
documents. In reply, the respondents filed an affidavit made by
one of their present solicitors. The Trial Judge upheld the claim
of privilege.
Held, the appeal is allowed, and certain of the documents
must be produced.
(1) Under Canadian law, the privilege relating to the legal
profession does not extend to patent agents, because patent
agents as such are not members of the profession. No privilege
exists even where the objective of the particular communication
is to obtain or to give legal advice. All confidential communica
tions to or from a member of the legal profession are, however,
privileged—and this rule applies even if the communication
relates to the kind of legal services normally performed by
patent agents. When a client seeks the assistance of a solicitor
in regard to Patent Office proceedings, he is seeking the
person's advice as a solicitor, not as a patent agent. This truth
is not altered by the fact that a solicitor, as such, cannot act for
an applicant in proceedings in the Patent Office.
(2) The respondents bore the onus of establishing facts to
substantiate their claim of privilege. There is no impropriety in
the circumstance that the affidavit was made by one of the
respondents' solicitors, rather than by the parties actually
claiming the privilege. The affidavit was not filed to verify the
respondents' list of documents, and thus Rule 448 does not
determine who must make the affidavit. Although the privilege
is that of the client, and cannot be claimed by the solicitor, the
affidavit was not filed for the purpose of claiming the privilege.
The claim had already been made, in the respondents' list of
documents and on the respondents' behalf. Accordingly, the
affidavit was filed with the sole objective of substantiating the
claim. If someone other than the respondents is in a position to
prove the facts on which the claim is based, including confiden
tiality of the communication, there is no reason to reject or
disregard his evidence. Nonetheless, the affidavit is objection
able on other grounds. Rule 332(1) sets forth the circumstances
in which an affidavit of belief is—and is not—admissible. This
Rule is directed to the substance of affidavits, not their form: as
long as an assertion in an affidavit is one which is not based on
the deponent's own knowledge, that assertion is a statement of
belief for the purposes of the Rule, even if it is not drafted as
such. Here, the solicitor's affidavit does not on its face appear
to be an affidavit of belief. Clearly, however, some of the
statements made by the deponent solicitor cannot have been
expressions of his own first-hand knowledge, since he could not
have had direct knowledge with respect to documents that
supposedly were written twenty years earlier, and in the United
States. The dictum of Thurlow A.C.J. (as he then was) in The
Queen v. A. & A. Jewellers Limited, [1978] 1 F.C. 479 (T.D.)
notwithstanding, Rule 332(1) imposes only two prerequisites
for the admissibility of an affidavit of belief (though, once
admitted, it may be ascribed little weight). First, it must be
filed on an interlocutory motion; secondly, it must identify the
grounds for the beliefs stated by the deponent. The affidavit in
the instant case does not comply with the second of these
conditions, nor does it indicate facts that would support the
claim of privilege. The Court does have before it almost all of
the documents in question, and an examination of these reveals
that some (viz the correspondence) are of a kind to which
solicitor-client privilege applies; the accuracy of the deponent's
statement that others of the documents (viz, the memoranda
and notes) also were prepared by attorneys for the respondents
is not evident either from those documents themselves, or from
the American court material which has been submitted. Conse
quently, the claim for privilege in respect of these latter docu
ments cannot be sustained, and they must be produced.
CASES JUDICIALLY CONSIDERED
NOT FOLLOWED:
The Queen v. A. & A. Jewellers Limited, [1978] I F.C.
479 (T.D.).
REFERRED TO:
Flexi-Coil Ltd. v. Smith-Roles Ltd., [1982] 1 F.C. 827;
59 C.P.R. (2d) 46 (T.D.).
COUNSEL:
David W. Scott, Q.C. and Terrance J.
McManus for appellant.
Roger T. Hughes for respondents.
SOLICITORS:
Scott & Aylen, Ottawa, for appellant.
Sim, Hughes, Toronto, for respondents.
The following are the reasons for judgment
rendered in English by
PRATTE J.: This is an appeal from a judgment
of the Trial Division [T-5951-78, order dated
October 20, 1981] dismissing an application made
by the appellant under Rule 455 [Federal Court
Rules, C.R.C., c. 663] for an order that certain
documents be produced by the respondents.
The respondents are plaintiffs in the Trial Divi
sion, where they have sued the appellant for
infringement of a patent of invention. In that
action, both the appellant and the respondents
have filed lists of all documents in their possession
"relating to any matter in question in the cause"
(Rule 448). However, in Part 2 of Schedule I of
the respondents' list, some five hundred documents
were enumerated and summarily described, which
the respondents refused to produce for the follow
ing reason:
The plaintiffs object to produce the documents enumerated in
Part 2 of said Schedule 1 on the ground of solicitor-client
privilege in that the same are communications between one or
more of the plaintiffs and their solicitors in or in contemplation
of litigation respecting matters at issue herein.
The respondents' list of documents, which con
tained the above-quoted statement, was not veri
fied by an affidavit. However, after having been
served with a notice that the appellant would apply
to the Trial Division for an order that the docu
ments enumerated in Part 2 of Schedule I be
produced, the respondents filed an affidavit for the
obvious purpose of establishing their claim to
privilege. The body of that affidavit read as
follows:
1, KENNETH D. MCKAY, of the Municipality of Metropoli
tan Toronto, Province of Ontario, Barrister and Solicitor,
MAKE OATH AND SAY:
1. 1 am a barrister and solicitor associated in practice with
the firm of Donald F. Sim, Q.C., solicitor for the plaintiffs
herein and I have knowledge of the matters sworn to herein.
2. Those documents listed in the Plaintiffs' List of Docu-
ments—Rule 448 in Schedule 1, part 2 on the attached list
have been reviewed by Counsel for the plaintiffs and it is
believed that the claim for privilege respecting the same is
well founded in that the documents there listed are corre
spondence and memoranda made by attorneys representing
the plaintiffs concerning proceedings in the United States
Patent Office relating to prosecution of equivalent patent
there, relating to litigation by way of interferences there and
relating to possible settlement of litigation by way of licence
or otherwise, all as particularized in that list.
3. The documents so listed were the subject matter of an
application for production before The United States District
Court for the Middle District of Florida, Orlando Division,
which Court inspected these documents and declared that all
documents save six, were privileged. These six have been
produced in this Canadian litigation. Annexed as Exhibit A
hereto are copies of the Order of the Florida Court; as well
as the affidavit and memorandum filed by the plaintiffs in
those proceedings.
4. The plaintiffs have available for inspection by the Court, if
required, copies of all the documents so listed for which
privilege is claimed, in the following bundles:
a) correspondence, invoices, drafts and the like pertaining
to United States and some foreign applications for patents,
and interference proceedings, which are in the nature of
letters of transmittal, submissions of drafts for approval
and bills from attorneys for services rendered. All docu
ments are made by or addressed to attorneys for the
plaintiff;
b) a group of handwritten notes, and drafts of documents
with handwritten notes prepared by attorneys for the
plaintiffs for use in the course of interference proceedings
before the United States Patent Office and higher Courts;
and
c) correspondence from and to attorneys for the plaintiffs
relating to United States Interference proceedings, and
proposals for settlement.
5. Interference proceedings before the United States Patent
Office are in a broad way like conflict proceedings before the
Federal Court in that they are conducts inter partes there is
evidence led, arguments made, interlocutory motions may be
made. The decisions are appealable to various United States
Courts.
Paragraph 3 of Mr. McKay's affidavit refers to
another affidavit filed before an American court.
In that affidavit, the respondent Gould merely
identified the authors and addressees of the vari
ous letters for which solicitor-client privilege was
claimed before the American court.
On the basis of that evidence and of his exami
nation of the documents, the learned Judge below
held that all those documents were protected from
disclosure by the solicitor and client privilege, and
he accordingly dismissed the appellant's applica
tion for production.
The appellant has now withdrawn its request for
the production of certain of the documents in
question (see paragraph 5 of Part I of its memo
randum). With respect to the other documents,
however, counsel for the appellant attacked the
decision of the Trial Division on two grounds.
First, he said that the Judge of first instance erred
in failing to take into consideration that the docu
ments of which the production was sought were
not correspondence between solicitors and their
clients or memoranda prepared by solicitors but
were, rather, correspondence between patent
agents and clients and memoranda prepared by
patent agents. Counsel's second submission was
that, in any event, the affidavit of Mr. McKay did
not establish the respondents' claim to privilege.
I—Solicitor or patent agent
It is common ground that all the documents in
issue, whether they be letters or memoranda or
notes, relate to proceedings in the United States
Patent Office some twenty years ago. It is also
common ground that the solicitors with whom the
respondents claim to have had such a relationship
as to give rise to the privilege were American
solicitors.
The appellant's submission, on this branch of
the case, is based on the premise that, as the law of
the United States is presumed, in the absence of
evidence to the contrary, to be similar to our law,
the respondents' American solicitors were not en
titled, as solicitors, to prosecute applications before
the Patent Office,' since that privilege was and
still is reserved to patent agents. Counsel for the
appellant drew two inferences from that premise:
first, that the American solicitors, in their relation
ship with the respondents, were acting in the
capacity of patent agents and not as solicitors;
second, that, as a consequence, the communica
tions between those solicitors and the respondents
were, in fact, communications between patent
agents and clients which were not privileged since
the legal professional privilege does not extend to
patent agents.
' See section 143 of the Patent Rules [C.R.C., c. 1250]:
143.(1) Subject to subsection (2), the only person who may
prosecute an application before the Office is a patent agent
appointed
(a) as agent; or
(b) as associate agent by the applicant's agent.
(2) The inventor of an invention in respect of which an
application is made may prosecute the application before the
Office until such time as an assignment of his right to the
patent or of the whole of his interest in the invention has
been registered in the Office.
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 profes
sion. 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.
On the other hand, all confidential communica
tions made to or by a member of the legal profes
sion for the purpose of obtaining legal advice or
assistance are privileged, whether or not those
communications relate to the kind of legal advice
or assistance that is normally given by patent
agents. Legal advice does not cease to be legal
advice merely because it relates to proceedings in
the Patent Office. Those proceedings normally
raise legal issues; for that reason, when the assist
ance of a solicitor is sought with respect to such
proceedings, what is sought is, in effect, legal
advice and assistance. And this in spite of the fact
that a solicitor, as such, cannot represent an appli
cant in proceedings before the Patent Office.
I would, for these reasons, reject the appellant's
first submission.
II—The affidavit
The respondents refused to produce documents,
on the ground that they were privileged. They had
the onus of establishing facts showing that their
claim of privilege was well founded. The only
evidence that they adduced for that purpose, apart
from the documents themselves, was the affidavit
of Kenneth D. McKay which I have already
reproduced.
Counsel for the appellant argued that that
affidavit was irregular for two reasons: because it
was the affidavit of a solicitor rather than of the
party claiming the privilege, and because it was a
mere affidavit of belief which did not establish the
necessary ingredients of the privilege.
In support of his contention that the affidavit
should have been sworn by the party claiming the
privilege rather than by one of his solicitors, coun-
sel for the appellant first invoked Rule 448, pursu
ant to which an affidavit verifying a list of docu
ments must be the affidavit of the party himself;
he also invoked the fact that the privilege is the
privilege of the client rather than of the solicitor;
finally, he relied on the fact that one of the
essential ingredients of a privileged communica
tion is its confidentiality, which, in his submission,
could only be established by the party himself.
These arguments must, in my view, be rejected.
The affidavit of Mr. McKay is not an affidavit
verifying a list of documents. No such affidavit
was ever filed in these proceedings. The McKay
affidavit was filed for the sole purpose of establish
ing the facts on which the claim of privilege was
based. If a person other than the respondents
themselves was in a position to prove those facts, I
do not see why his evidence should be rejected or
disregarded. True, the privilege is that of the client
and cannot be claimed by the solicitor. However,
the affidavit was not filed for the purpose of
claiming the privilege. That claim had already
been made, on behalf of the respondents, in the list
of documents. The affidavit, as I have already
said, was filed for the purpose of demonstrating
that the claim was well founded. I add that I do
not see why the evidence of the client himself
would be required in order to prove the confiden
tiality of a communication he had with his lawyer.
For these reasons, I do not find any merit in the
appellant's contention that the affidavit of Mr.
McKay was inadmissible because its author was
not the party claiming the privilege.
Counsel also argued that the affidavit was
irregular in that it was an affidavit of belief which
was not admissible under Rule 332(1) [Federal
Court Rules, C.R.C., c. 663]. In answer to that
argument, counsel for the respondents said that, in
his view, the affidavit of Mr. McKay was not an
affidavit of belief but was an affidavit in which the
deponent simply asserted the truth of certain facts.
As Mr. McKay was not cross-examined on his
affidavit and as no evidence was adduced to con
tradict his assertions, counsel for the respondents
submitted that the veracity of those assertions
cannot now be challenged.
Rule 332(1) indicates the circumstances in
which affidavit evidence of belief is admissible:
Rule 332. (1) Affidavits shall be confined to such facts as the
witness is able of his own knowledge to prove, except on
interlocutory motions on which statements as to his belief with
the grounds thereof may be admitted.
In my view, that provision does not govern the
form of affidavits, but their substance. That is to
say that an affidavit in which a deponent asserts
facts which he is unable of his own knowledge to
prove will contravene the first part of the Rule
whatever be the form of that affidavit. It follows,
in my view, that an affidavit may be, in effect, an
affidavit of belief even if it is not drafted as such.
The affidavit of Mr. McKay does not, at first
sight, present itself as an affidavit of belief. In the
first paragraph, the deponent says that he is
associated in the practice of law with the firm of
Toronto solicitors representing the respondents in
these proceedings, and he asserts that he has
"knowledge of the matters sworn to herein." In
paragraphs 2 and 4 of the affidavit, he swears that
the documents in issue are either correspondence
from or to attorneys for the plaintiffs [respond-
ents] relating to proceedings in the Patent Office
in the United States, or memoranda and notes
prepared by attorneys for the plaintiffs [respond-
ents] for use in the same proceedings. What the
affidavit does not say, however, is whether Mr.
McKay's knowledge of those facts was first-hand
or second-hand knowledge. It is clear, however,
that his knowledge could not be first-hand knowl
edge. How could he, who practised law in Toronto,
have direct and personal knowledge of the circum
stances in which United States residents had writ
ten confidential letters to each other more than
twenty years ago? How could he identify the
various parties to that correspondence? How could
he identify, as having been written by the respond
ents' American solicitors, unsigned notes and
documents that were allegedly written more than
twenty years ago? In spite of its form, the affidavit
of Mr. McKay is not, in my opinion, an affidavit
"confined to such facts as the witness is able of his
own knowledge to prove"; it is in fact an affidavit
in which Mr. McKay states his belief that the
documents here in question are of the kind
described in paragraphs 2 and 4 of his affidavit.
Counsel for the appellant argued that the affida
vit of Mr. McKay was not admissible in evidence
because there existed no special circumstances
warranting the filing of an affidavit on information
and belief. In support of that argument, counsel
referred to the recent decision of Mahoney J. in
Flexi-Coil Ltd. v. Smith-Roles Ltd., [[1982] 1
F.C. 827]; 59 C.P.R. (2d) 46 [T.D.] and to the
following dictum of Thurlow A.C.J. (as he then
was) in The Queen v. A. & A. Jewellers Limited,
[1978] 1 F.C. 479 [T.D.], at page 480:
It seems to have become a common practice in preparing
material for use in interlocutory applications to ignore the first
clause of this Rule and to use the second clause as a device to
avoid the swearing of an affidavit by a person who knows the
facts in favour of putting what he knows before the Court in
the form of hearsay sworn by someone who knows nothing of
them. This is not the object of the Rule. The Court is entitled to
the sworn statement of the person who has personal knowledge
of the facts when he is available. The second part of the Rule is
merely permissive and is for use only when the best evidence,
that is to say the oath of the person who knows, is for some
acceptable or obvious reason not readily obtainable.
I cannot agree with that submission. In my
opinion, Rule 332(1) imposes only two conditions
for the admissibility of affidavit evidence of belief:
first, that the affidavit be filed on an interlocutory
motion; and second, that the deponent indicate in
his affidavit the grounds of his belief. Once those
conditions are met, the affidavit evidence is, in my
view, admissible even though it may have little or
no weight or probative value.
Counsel for the appellant finally argued that the
affidavit of Mr. McKay did not meet the require
ments of the last part of Rule 332(1) and that it
was, in any event, insufficient to establish the
privilege claimed.
I agree with that last submission. The docu
ments referred to in Mr. McKay's affidavit are of
two kinds: first, correspondence (contained in bun
dles (a) and (c), referred to in subparagraphs 4(a)
and (c) of the affidavit); and second, memoranda
and notes (contained in bundle (b)). In so far as it
relates to the correspondence, the affidavit merely
asserts that it was correspondence from and to
attorneys for the plaintiffs [respondents]—an
assertion which, even if it were true, would not
prove the correspondence to be privileged. That is
not to say, however, that the learned Trial Judge
was wrong in concluding that that correspondence
was privileged. Indeed, when it is examined, it
becomes apparent that it is not only correspond
ence from and to attorneys for the plaintiffs
[respondents] or their predecessors in title, but
that it is correspondence of the kind to which the
legal privilege extends. I except from that finding,
however, document 398, which I could not find in
the three bundles of documents that were pro
duced for inspection by the Court. In so far as Mr.
McKay's affidavit relates to the second class of
documents, it asserts that the unsigned memoran
da and notes were, in fact, prepared by attorneys
for the plaintiffs [respondents]. The affidavit does
not indicate any ground for that belief. Moreover,
there is nothing in the judgment of the American
court or in the evidence filed in that court which
could support that belief, and, except for docu
ments Nos. 498 and 499, which are sufficiently
identifiable by their contents, it is impossible from
an examination of the documents themselves to
determine by whom they were prepared. For that
reason, that second class of documents (which
comprises the documents included in bundle (b)
and, also, document No. 251 as well as document
No. 259A which I could not find anywhere) has
not been proven—save for documents 498 and
499—to be privileged from production.
I would, for these reasons, allow the appeal, set
aside the decision of the Trial Division rejecting
the appellant's motion for production and, ruling
on that motion, I would order that the documents
identified by the following numbers in the respond
ents' list of documents be produced to the appel
lant for inspection and copying: Nos. 251, 313,
398, 213A, 213B, 213C, 213D, 213E, 213F, 213G,
227, 227A, 249, 253, 254, 255A, 258, 258A, 258B,
259, 259A, 262, 262A, 263, 263A, 266, 267,
267A, 268, 269, 270, 271, 272, 273, 275, 276,
284A, 298, 299, 300, 301, 302, 326, 327, 346.
I would grant the appellant its costs both in this
Court and in the Court below. The three bundles
of documents that were filed with the affidavit of
Mr. McKay should be returned to the respondents.
HEALS J.: I concur.
RYAN J.: I concur.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.