Privileged at last…
A new Rule at the U.S. Patent Office establishes that communications with foreign patent attorneys can be privileged.
Since its coming into force on 7 December 2017, a new Rule (§ 42.57)[i] establishes that US patent agents, as well as foreign patent “practitioners”, who are qualified in their jurisdiction, will receive the same treatment as US attorneys on all issues affecting privilege or waiver. 82 Fed. Reg. 51570-75 (Nov. 7, 2017).
This clarification was long overdue as the status of a communication between a litigant and its domestic or foreign patent agent had been a hotly debated topic in the United States (US) for the last 50 years.
This is of real importance as patent litigations on an international level frequently involve the US, including challenges regarding the validity of patents which are heard before the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).
Privileged information and the US discovery process
In the US, pre-trial steps will generally involve the dreaded “discovery” process[i]. In this process reciprocal demands will be made by the parties for production of documents, depositions of parties and potential witnesses, written interrogatories etc…. The theory underlying the US rights of discovery is that all parties will go to trial with as much knowledge as possible and that neither party should be able to keep secrets from the other (except for protection against self-incrimination). This common law pleading principle is mainly applied to civil disputes and is the object of some detailed dispositions[ii] at the Federal level.
Therefore some information may not have to be disclosed and may be kept secret. Such information is described as being “privileged”. Legal advice provided by an attorney to her/his client can enter the category of privileged information upon very specific conditions[iii] and is generally referred to as being “client-attorney privileged”.
Litigation involving patents offers several very specific challenges when the parties come to the discovery step and have to determine if a communication is, or is not, privileged. In particular this is due to fact of:
- the nature of patent-related communications: they may comprise a great deal of highly sensitive technical information.
- the legal status of the advisers: they are frequently not registered before a US court to practise law and therefore, strictly speaking, not “attorneys”. They can be US patent agents, or in-house counsels. Even more difficult is the case of foreign patent practitioners, who can also be either independent or in-house advisers of the litigant.
The new provisions now clarify at least the issue of professional status before the USPTAB of qualified independent patent practitioners such as the French CPI (Conseil en propriété industrielle), German (Patentanwalt) and British CPA (Chartered Patent Attorneys).
It is however always worth keeping in mind that the “privilege” status is to be decided on a document-by-document basis. The nature of the communication is as important as the person writing it in order to decide if the privilege can be asserted. The communication must be confidential in nature and “reasonably necessary and incident to the scope of the practitioner’s authority”[iii]. Opinions relating, for example, to commercial matters are unlikely to qualify. Likewise, results of a patent search, even if carried out by a qualified patent attorney, may not be privileged although a detailed patentabilty opinion based on said search should be.
Thus, the issue of privileged information will stay an exceptionally delicate matter for patent attorneys worldwide and should be considered most carefully before starting any litigations involving countries, like the US, which have discovery-like provisions.
[ii] Chapter V of Federal Rules of Civil Procedure
[iii] The standard set forth in United States v. United Shoe Machinery Corp. 1918 is often cited as « the » test for privilege:
“The privilege applies only if (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication is made (a) is a member of the bar of a court, or his subordinate and (b) in connection with the communication is acting as a lawyer; (3) the communication related 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) or legal services or (ii) 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.” (emphasis added).