PRIVILEGE

A general overview

David Musker, EPA

R G C Jenkins, London

Effect of privilege

• Evolved as a shield against discovery– Excludes documents you would have to provide– Excuses witness from testifying on some points

• Now also relevant in:– Criminal investigations– Raids by competition or tax authorities

• Once irrelevant in “civil law countries • Now, TRIPS requires WTO countries to allow

production of documents (Art. 43(1))

Rationale for privilege

• Justice works best if:– Clients can tell lawyers the full truth, and– Lawyers can tell clients frankly what they think

of the position, and what to do.

• Clients and lawyers will not do that if:– They know it may be reported to the Court– They know it may be reported to the

competition.

Must be reliable

“An uncertain privilege, or one which purports to be certain but results in widely varying applications by the courts, is little better than no privilege at all”

Supreme Court, Upjohn Co. v. United States

Why not discovery of advice?

• Patent litigation involves non-technical tribunal answering technical questions

• Requires objective and independent analysis by the tribunal, BUT

• Tempting to take a cuts by relying on party’s own disclosed opinions

Short cuts

• Question: what does the claim mean?– Short cut: the inventor said it couldn’t mean X

• Question: was it obvious to the skilled person in 1995?– Short cut: the inventor or patent agent said it was

obvious to him in 1996

• Answering the wrong questions does not help, and may be harmful, in reaching the objective truth

Systemic problems caused

• Scrutiny of irrelevant documents costs time and money for parties and tribunal– Adds to the already high expense of patent litigation

• Pressure can make the disclosing party give up• “Litigation-savvy” clients may try to avoid

discovery by leaving no paper trail - BUT– Highly inefficient way to manage valuable assets– Difficult to do for a full 20 year term– Very difficult in the email age!– Advisors can be cross-examined anyway

Privilege rule - Wigmore

(1) Where legal advice of any kind is sought (2) from a professional legal advisor in his capacity as

such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client [AND THE LAWYER], (6) are at his instance permanently protected (7) from disclosure by himself or by the legal advisor, (8) except the protection be waived.

Privilege rule - Wyzanski

United States v. United Shoe Machinery (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made(a) is a member of the bar of a court, or his subordinate and (b) in connection with this communication is acting as a lawyer; (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers(c) for the purpose of securing primarily either (i) an opinion on law or (ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client.

Model

The “Client”

• Attorney/client relationship

• Confidential

• Giving facts and instructions

• Seeking and getting advice or legal assistance

• Can waive privilege

• For a corporate, may be limited part

The “Attorney”

• Not all advisors – must be a “lawyer”/“member of a bar”

• Foreign lawyers always recognised in the same way as local ones

• Must be “acting as such” – i.e. not as a business advisor, accountant, executive …

• Therefore, many Courts do not recognise a patent agent at common law as a lawyer /attorney/ member of a bar.

The “Communication”

• Communication from either– Client or– Attorney

• Written or Oral

• Includes preparatory materials and records of conversations

Non-professional middlemen

• Attorney-client professional privilege is essentially only between lawyer and client

• Either can act through an employee

• Either can act through an agent of communication

• Otherwise, third parties in the loop may break the chain of privilege

Problem 1 - client consults

Problem 2 - Attorney consults

Status of non-lawyer

• Non-lawyer patent agent/attorney is NOT covered by privilege rule according to:– US (some courts) for US agents,– UK in the past,– AU– CA– Etc

Position of non-lawyer attorney

• Typically obliged to keep client secret– NOT PRIVILEGE – must tell the Court

• May be excused from testifying– NOT PRIVILEGE – client may not be excused

• May have privilege statute– AU, NZ, JP, SG, GB …

• May not have– KR, IN, CN …

Privilege applicable?

• Both your local law and foreign law are be relevant:

Conflict of laws

• Attorney has privilege “at home”

• Litigation is in another country

• Whose laws apply?

• Usually:– Law of Court (lex fori) for evidence matters– Therefore, no privilege for foreign patent

attorneys

US Treatment

• Varies widely between courts

• Many courts now respect foreign patent attorney privilege, IF:– Foreign law does so– Only foreign patents are concerned

• Therefore, important to have protection for non-US, non-lawyer patent attorneys!

Practice

• Start parallel litigation in several countries

• Can get discovery in first country – e.g. AU

• When you know what is available, can– Re-use in another country – unless protective

order applies, or– Ask for discovery in another country

Conclusion• IP does not stop at national borders• Patent agents frank advice required in addition to

general lawyers’• Many countries recognise the need for privilege• However, their intentions are thwarted when

boundaries are crossed• International problem requires an international

approach, implemented nationally

Questions?

Any Questions?