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Serving the Creative and Legal Communities
John B. PegramFish & Richardson P.C.
International harmonization of Attorney-Client privilege
1© AIPLA 2015
© AIPLA 20152
Disclaimer
The purpose of this presentation is to provide educational and informational content, and is not intended to provide legal services or advice.
The opinions, views and other statements expressed by the presenter are solely those of the presenter, and do not necessarily represent those of his employer, clients, AIPLA or AIPPI-US.
The Issue: Protecting confidential client-IP advisor
communications from forced disclosure on a global scale
Summary
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The General Problems: Lack of a privilege in many countries
comparable to U.S. attorney-client privilege
Lack of privilege for in-house advisers Lack of privilege in cross-border
situations Variations in application of privilege
laws(See Appendix).
An IP-specific Problem:Lack of privilege for communications
with some types of IP Advisers
Summary
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Generally—the right of a person who makes a confidential communication to not have the other person be compelled to disclose the communication
Examples: Doctor-Patient Priest-Penitent Husband-Wife (or vice versa) Attorney-Client
The facts may be discovered in other ways.
What is a “Privilege”
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Elements of U.S. Attorney Client Privilege: A communication Which is confidential From a client To an attorney For the purpose of obtaining legal
advice And the privilege has not been waived.
Based on common law Not defined by a statute or rule.
U.S. Attorney-Client Privilege
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Privileges are based on common law of past, precedential court decisions Not well-defined by a statute or rule. Different courts have applied different
interpretations, especially regarding oWho qualifies as an “attorney,” and oScope of the qualifications of a
foreign IP adviser
U.S. Attorney-Client Privilege
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U.S. Registered Patent Agents Perform the same legal functions in
patent prosecution as registered patent attorneys-at-law
Are qualified to represent clients in PTAB proceedings
Are not qualified to represent clients in courts
Are not qualified to advise clients on state law issues, including assignments & licenses
Is a Patent Agent an “Attorney”?
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Statutory professional secrecy obligations for non-lawyer IP/patent professionals exist in some jurisdictions: E.g.: Germany, Switzerland, Sweden,
France, JapanoU.S. courts have treated some, but
not all, such laws as equivalent to a privilege
Secrecy Obligations
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Qualifications of foreign IP adviser Attorney-at-law or equivalent?
Nature of advice (is the foreign adviser qualified to give the advice?)
May be protected in some countries based on professional secrecy obligations
Comity may apply (civil and common law countries)
What is the status of the communication in the foreign jurisdiction? U.S. court may apply “choice of law”
principles.
U.S. Court Recognition of Foreign Privilege?
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In the United States: Most in-house IP advisers are
attorneys-at-law A small number are registered patent
agentsoUsually supervised by attorneys-at-
lawIn some jurisdictions outside the United
States: In-house IP advisers may not be
attorneys or patent agents Privilege may not apply to in-house
advisers
In-House IP Advisers
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Colloquium on the Protection of Confidentiality in IP Advice
Goal: To develop a model framework for international protection of confidentiality in IP professional advice
Attendees: Government representatives (e.g.:
Australia, Germany, Japan, Switzerland, U.S., Canada, Denmark and Norway)
Practitioners from around the worldResult: Joint Proposal for a multilateral
agreement
AIPLA-AIPPI-FICPI June 2013 Colloquium
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Functional approachNot based on an explicit privilege being
created No distinction between common
law/civil law countriesProposal is simple in nature:
The protection What communications are covered With whom (definition of IP advisor) Permits exceptions
AIPLA-AIPPI-FICPI Joint Proposal
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The Definition Clauses:intellectual property advisor means a lawyer, patent attorney or patent agent, or trade mark attorney or trade mark agent, or other person, where such advisor is officially recognized as eligible to give professional advice concerning intellectual property rightscommunication includes any oral, written, or electronic record professional advice means information relating to and including the subjective or analytic views or opinions of an intellectual property advisor but not facts … (for example, the existence of relevant prior art) © AIPLA 201514
Joint Proposal
The Operative Clauses – The Protection
2. Subject to the following clause,
a communication made for the purpose of, or in relation to, an intellectual property advisor providing professional advice on or relating to intellectual property rights to a client,
shall be confidential to the client and shall be protected from disclosure to third parties,
unless it is or has been made public with the authority of that client.
Joint Proposal
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The Operative Clauses – Exceptions
3. Jurisdictions may have and apply specific limitations, exceptions and variations on the scope or effect of the provision in clause 2, consistent with the objectives.
Joint Proposal
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AIPLA, AIPPI & FICPI presented in fall 2014 to WIPO B+ countries, and WIPO Standing Committee on Patents
U.S.P.T.O. has requested comments on a potential U.S. legal framework AIPLA submitted a response, consistent
with the Joint Proposal No reaction yet from PTO
Multinational agreements?U.S. Domestic Laws
Recent Follow-Up
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Communicate with a qualified, U.S. attorney-at-law on all legal issues that may arise in the USPTO or U.S. courts Involve others in communications as
necessary to assist the U.S. attorney-at-law in providing legal advice
(See Appendix re “work product”). When non-U.S. legal issues are involved,
have a U.S. attorney communicate with qualified legal advisers
Best Practices for the U.S. Today
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Appendix
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Elements of work product immunity: A party may ordinarily not discover
documents and things Prepared in anticipation of litigation or
for trial By or for another party or its
representative, including its:oAttorney,oConsultant,o Insurer, oroAgent.
U.S. Work Product Immunity
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Based on a Supreme Court decision Implemented by Rule 26(b)(3)-(4) Primarily intended to protect against
disclosure of a litigation attorney’s oMental impressions, oConclusions, oOpinions, andoLegal theories.
U.S. Work Product Immunity
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A party may discover such material if it shows it has a substantial need to prepare its
case and It cannot, without undue hardship,
obtain their substantial equivalent by other means.
U.S. Work Product Immunity
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The Federal Circuit seeks to apply the law of privilege as interpreted by the court of appeals for the circuit in which the district court is located. See Wi-LAN, Inc. v. Kilpatrick Townsend & Stockton LLP, 684 F.3d 1364 (Fed. Cir. 2012).
Variations in U.S. Privilege Law
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