Attorney-Client Privilege LatAm October 23rd, 2014 AIPLA Annual Meeting Washington | DC Attorney-Client Privilege LatAm October 23rd, 2014 AIPLA Annual Meeting Washington | DC © Dannemann Siemsen. All rights reserved.

OVERVIEW  CIVIL LAW COUNTRIES  NO DISCOVERY  PATENT AGENTS BRAZIL ARGENTINA MEXICO LatAm countries in analysis: © Dannemann Siemsen. All rights reserved.

BRAZIL | Attorney-Client Privilege Brazilian Bar Association Ethics Code  Article 26 – An attorney cannot disclose during a court examination/deposition any information obtained by means of his/her professional activities, even if authorized or requested by the client (it can only be disclosed if essential for defending the client and if expressly authorized by the client). An attorney can refuse to depose.  Article 27, sole § – It is considered as confidential all communication between attorney and client.  Article 25 (exception) – An attorney can disclose information in case of his/her life is in risk or, if necessary, to defend himself/herself in a court-of- law from accusations of professional misconduct from the client, but only in relation to the case itself. © Dannemann Siemsen. All rights reserved.

BRAZIL | Attorney-Client Privilege Law 8,905/94 – Statute of the Attorney-at-Law  Article 7 – The attorney-at-law has the right to: XIX – refuse from testifying as a witness in a litigation in which he/she has performed as an attorney, or about facts related to a client that he/she was an attorney, even if authorized or requested by this client, as well as about any piece of information that can be considered as obtained by means of his/her professional activities. Penalty for infringing the attorney/client privilege:  Disbarment © Dannemann Siemsen. All rights reserved.

“It is not granted to the Judge or the Police Authority the right to determine search and seizure of documents covered by attorney- client privilege, e.g., all documents that could jeopardize the client’s rights and its defense, either before a civil or a criminal court.” (Superior Court of Justice, writ of mandamus n. 27,419-SP) BRAZIL | Attorney-Client Privilege © Dannemann Siemsen. All rights reserved.

BRAZIL | In-House Counsel  In-house counsels have the same privileges and obligations of the outside attorneys: “The in-house attorney has the same obligations of keeping in secrecy the privilege information obtained to the other areas of the company. Only the in-house counsel should have full access of the files, communications, s, as well as any information obtained by means of telephone calls, considered as privilege and he/she should keep them confidential.” (State of Rio de Janeiro Bar Association Resolution). © Dannemann Siemsen. All rights reserved.

BRAZIL | Patent Agent  Decree 8,933 of January 26, 1949 establishes the profession of the Industrial Property Agent.  Resolution n. 195/08 from the Brazilian Patent and Trademark Office (INPI) establishes the Code of Conducts and Ethics of the Industrial Property Agents.  Chapter III of the Code grants to the Patent Agents the very same prerogatives granted to the Attorneys-at-Law in Brazil regarding privilege, keeping safe information obtained by the client and refusal to depose in any court action or investigation. © Dannemann Siemsen. All rights reserved.

BRAZIL | Patent Agent  Differently from the Code that regulates the profession of the Attorneys-at-Law, this Code is not Law but a regulation. However, article 406, II of the Civil Procedural Code and article 207 of the Criminal Procedural Code establish that a given person can refuse to depose if it needs to keep secrecy due to professional duties. There are no decisions concerning to the confidentiality obligation of the Patent Agent in Brazil. © Dannemann Siemsen. All rights reserved.

ARGENTINA | Attorney-Client Privilege Code of Ethics  Section 10 provides, when listing lawyers' obligations, that lawyers shall strictly preserve the attorney-client privilege and refuse to be released from such attorney-client privilege whether by judges or other competent authorities, refusing to answer those questions that would entail a violation of the attorney-client privilege. Lawyer will only be exempted from this obligations if (a) the client so consents; or (b) necessary for its own defense.  In the same section, the Code of Ethics provides that lawyers shall defend the privacy of its law firm's premises and of all documents that have been entrusted to him/her. © Dannemann Siemsen. All rights reserved.

ARGENTINA | Attorney-Client Privilege Law Practice No. 23,187  Pursuant to section 6, it is a specific obligation of lawyers to preserve attorney-client privilege, unless otherwise authorized by the interested party (i.e. the client). Likewise, section 7 provides as a right of lawyers to keep unrevealed information protected under attorney-client privilege. © Dannemann Siemsen. All rights reserved.

ARGENTINA | Attorney-Client Privilege  Argentine Criminal Code It is an offense under the Argentine Criminal Law to reveal, without cause, any information that has come to a person's knowledge by virtue of its profession and which can derive in damages. The sanction for such offense is the imposition of fines ranging from AR$ 500 to AR$ 95,000 and special disqualification from practicing such profession.  Code on Civil and Commercial Proceeding Section 444 provides that a witness may refuse to answer a question if such answer would entail to reveal information protected under a professional secret (i.e. including attorney-client privilege). © Dannemann Siemsen. All rights reserved.

ARGENTINA | Attorney-Client Privilege  Code on Criminal Proceedings Pursuant section 244 lawyers shall refrain from testifying about secret actions that have come to their knowledge in the practice of their profession. Notwithstanding, lawyers cannot refuse to testify when the interested party has released them from their professional secret.  Searches and Seizure Searches and seizure can only take place under a warrant issued by a competent Court in the course of a criminal investigation and specifically directed to certain documentation or elements. Prior to issuing the warrant, the Court must state formally for the record the reasons and evidence or circumstantial evidence that justify the issuance of the search and seizure order in a lawyer’s office. © Dannemann Siemsen. All rights reserved.

ARGENTINA | In-House Counsel  The protection includes the communication between in-house counsel and management provided that:  the in-house counsel has been appointed as such and publicly holds that position;  the in-house counsel is admitted to the bar at least in the jurisdiction of the domicile of the employer;  the communication with management and all other documents in the possession of the lawyer relate and have been issued in connection with the rendering of legal advice. © Dannemann Siemsen. All rights reserved.

ARGENTINA | In-House Counsel  The protection includes also the office of the in-house counsel and all documents within. It is good practice to provide to the in-house lawyers with an office duly identified as the “legal office” or “in- house lawyer’s office” secluded or easily distinguishable from the rest of the administrative offices in the premises of the employer. The same applies to the files, if located outside the lawyer’s office. © Dannemann Siemsen. All rights reserved.

ARGENTINA | Patent Agent  The Argentine Patent Office issued Regulation N° 101/2006, which relates to the rules of Industrial Property Agents. Section 5(b) of Regulation N° 101/2006 states: “Duties: Industrial Property Agents shall observe at all times professional performance commensurate with the importance of the tasks entrusted to them, being particularly obliged to: b) Save confidentiality regarding all information received in the exercise of the profession, on occasion of the entrusted matter.”

ARGENTINA | Patent Agent  Also, the local association of Industrial Property Agents provides in its by-laws: Section 11: “The Associates have the following obligations, whatever their category: d) To maintain professional secrecy rigorously in all the steps that are entrusted.” © Dannemann Siemsen. All rights reserved.

MEXICO | Attorney-Client Privilege  Law of Professional Services of Mexico City “While the Laws referred in the amended article 2nd are issued, the professions that in their respective branches need a diploma to be practiced, are the following ones: (…) Attorney (…)” (…) “Every professional will be compelled to strictly keep the secret for the matters their clients entrust them, except for those information that can be requested pursuant to the respective laws.” © Dannemann Siemsen. All rights reserved.

MEXICO | Attorney-Client Privilege  Civil Code for the Federal District of Mexico City “The agent or attorney who revealed or disclosed to the opposing party, the secrets of his client or grantor, or in which case provides him with documents or data that injures to his client or grantor, will be responsible of all damages, and shall be subject to the disposals of the Criminal Code for these cases.” © Dannemann Siemsen. All rights reserved.

MEXICO | Attorney-Client Privilege  Criminal Code for the Federal District of Mexico City “To the person who without consent of the one entitled to grant it or in detriment of someone, discloses the secret or confidential communication that has known for any reason or has been entrusted to him, or uses it for his own profit or other’s profit, shall be imposed to imprisonment from six months to two years, and from twenty-five to one hundred days fine.” © Dannemann Siemsen. All rights reserved.

MEXICO | Attorney-Client Privilege  In the event a judge requires an attorney to reveal information about his clients during a judicial proceeding or trial, the attorney will have the obligation to reveal the requested information. In this case the disclosure by the attorney will not be taken as a breach to the attorney-client privilege. © Dannemann Siemsen. All rights reserved.

MEXICO | Attorney-Client Privilege  However, there is a criteria from the Supreme Court establishing that an attorney cannot be compelled to testify about information received from one of his clients into a trial or judicial proceeding (see: Amparo en revisión 73/ de mayo de Mayoría de votos. Disidente: Neófito López Ramos. Ponente: Víctor Francisco Mota Cienfuegos. Secretario: Erick Fernando Cano Figueroa).  The situation for in-house counsel is the same as for the attorney- at-law. © Dannemann Siemsen. All rights reserved.

MEXICO | Patent Agent © Dannemann Siemsen. All rights reserved.  There are no specific regulations for patent agents, which is not considered as a profession per se.  However, the mentioned Law of Professional Services of Mexico City includes as professions covered by privilege, besides attorneys-at-law: architects, bacteriologists, biologists, engineers, chemists, among others.  So, in theory, an engineer acting as a patent agent in Mexico, is protected by the privilege legistation.

In theory, a Patent Agent has also the same privilege as an Attorney-at-Law. An In-house counsel has the same privilege rights as an outside counsel. Attorney can refuse to depose to preserve privilege information. Attorney-client privilege is statutory. Final Conclusions

THANK YOU. Joaquim E. Goulart |