AIPLA Firm Logo 1 American Intellectual Property Law Association Strategies for Preserving U.S. Attorney-Client Privilege in Patent Prosecution and Litigation April 8, 2014 Presented by David W. Hill Partner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

AIPLA Firm Logo 2 Purpose of the Attorney-Client Privilege Upjohn Co v United States, 449 US 383 at 389 (1981): “Its [i.e., attorney-client privilege’s] purpose is to encourage full and frank communication between attorneys and their clients and thereby promote broader public interests in the observance of law and administration of justice. The privilege recognizes that sound legal advice or advocacy serves public ends and that such advice or advocacy depends upon the lawyer’s being fully informed by the client.” [emphasis added]

AIPLA Firm Logo 3 Overview of Attorney-Client Privilege in the United States Oldest common law privilege protecting confidential communications Promotes full communication between attorneys and clients Construed narrowly (facts not insulated) Broad scope of U.S. discovery in litigation makes it essential –Rule 26, Fed Rule of Civil Procedure - Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense.

AIPLA Firm Logo 4 How is Privilege Claimed? Document Production –Typically done by producing general list identifying documents being withheld from production on basis of privilege claim –May also produce documents with portions blocked out on basis of privilege –Court may resolve disputes by reviewing documents in private or having magistrate judge or master review Answers to Deposition Questions Answers to Testimony in Open Court –Attorney of the witness objects to question based on privilege

AIPLA Firm Logo 5 What about IP Professionals? Protection of communications between IP professionals and their clients varies greatly from country to country U.S. historically has applied attorney-client privilege to protect client’s communications to an attorney for the purpose of securing legal advice Privilege has been extended by most U.S. courts to apply to communications with U.S. patent agents

AIPLA Firm Logo 6 What about Non-U.S. IP Professionals? Protection for communications of client with non-U.S. IP professionals depends on many factors and is not consistently applied in the U.S. courts Confidentiality of client communications for attorneys and other IP professionals employed in companies is also applied in an inconsistent manner

AIPLA Firm Logo 7 Privilege for Japanese Benrishi Japan In response to a U.S. decision [Alpex Computer Corp v Nintendo Co Ltd, US Dist LEXIS 3129 (QL) (SD NY 1992)], Japan changed its domestic legislation in 1998 pursuant to which Japanese patent agents [“benrishi”] may refuse to testify or produce “secret” documents Since 1998, a number of U.S. courts have held that communications between Japanese patent agents and clients are protected from forced disclosure [e.g., Eisai Ltd v Dr Reddy’s Laboratories, 77 USPQ 2d 1854 (SD NY 2005)]

AIPLA Firm Logo 8 Protection for Foreign IP Practitioners Australia In 2011, Australia extended privilege to foreign practitioners “authorised to provide intellectual property advice” New Zealand Communications between clients and non-lawyer New Zealand patent/trade-mark agents protected by statute Extended in 2008 to foreign practitioners whose functions “correspond” to New Zealand attorneys

AIPLA Firm Logo 9 Recent Developments on Privilege Sweden (2010): Extended privilege to communications with Swedish/European non-lawyer patent advisors Switzerland ( ): Extended professional secrecy obligation to Swiss patent attorneys; enabled them to refuse production of “secret” documents European Unified Patent Court (“UPC”): Proposed rules state that advice of lawyer/non-lawyer patent attorneys is privileged and not subject to disclosure in any UPC proceedings

AIPLA Firm Logo 10 International Efforts on Privilege Since June 2008, WIPO’s Standing Committee on the Law of Patents (“SCP”) has considered the issue of confidentiality of client- IP advisor communications Despite significant work on identifying the problems that exist globally, no progress yet on a solution at SCP Group B+ countries announced at September 2012 WIPO General Assembly their intention to consider the issue separately from WIPO/SCP

AIPLA Firm Logo 11 June 2013 Paris Colloquium Colloquium on the Protection of Confidentiality in IP Advice Organizers: AIPLA, AIPPI, FICPI Held: Paris, France from June 26-28, 2013 Goal: To assist Group B governments to develop model framework for international protection of confidentiality in IP professional advice Attendees: Government representatives from Australia, Germany, Japan, Switzerland, U.S., Canada, Denmark and Norway; practitioners from the U.K., U.S., Canada, Europe, and Asia; academia; judiciary

AIPLA Firm Logo 12 Moving Forward Group B+ countries discussed issue during Group B+ Plenary Session held on September 25, 2013 –Switzerland: Proposed multilateral treaty, either: a)Reciprocal recognition: Communications with other member countries’ patent attorneys entitled to same protection as domestic patent attorneys; or b)Harmonization: Member countries share definitions and standards of protection, but not based on reciprocity

AIPLA Firm Logo 13 Thank you for your attention! David W. Hill Past-President, AIPLA Chair, AIPPI-US Division Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Ave., NW Washington, DC, (mobile) David W. Hill