John B. Pegram Fish & Richardson P.C. International harmonization of Attorney-Client privilege 1 © AIPLA 2015

2 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 © AIPLA

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 © AIPLA

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” © AIPLA

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 © AIPLA

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 o Who qualifies as an “attorney,” and o Scope of the qualifications of a foreign IP adviser U.S. Attorney-Client Privilege © AIPLA

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”? © AIPLA

Statutory professional secrecy obligations for non-lawyer IP/patent professionals exist in some jurisdictions:  E.g.: Germany, Switzerland, Sweden, France, Japan o U.S. courts have treated some, but not all, such laws as equivalent to a privilege Secrecy Obligations © AIPLA

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? © AIPLA

In the United States:  Most in-house IP advisers are attorneys- at-law  A small number are registered patent agents o Usually supervised by attorneys-at-law In 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 © AIPLA

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 world Result : Joint Proposal for a multilateral agreement AIPLA-AIPPI-FICPI June 2013 Colloquium © AIPLA

Functional approach Not based on an explicit privilege being created No distinction between common law/civil law countries Proposal is simple in nature:  The protection  What communications are covered  With whom (definition of IP advisor)  Permits exceptions AIPLA-AIPPI-FICPI Joint Proposal © AIPLA

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 rights communication 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 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 © AIPLA

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 © AIPLA

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 © AIPLA

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 © AIPLA

Thank You! 19 John B. Pegram Senior Principal Fish & Richardson P.C. New York

Appendix © AIPLA

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: o Attorney, o Consultant, o Insurer, or o Agent. U.S. Work Product Immunity © AIPLA

Based on a Supreme Court decision  Implemented by Rule 26(b)(3)-(4)  Primarily intended to protect against disclosure of a litigation attorney’s o Mental impressions, o Conclusions, o Opinions, and o Legal theories. U.S. Work Product Immunity © AIPLA

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 © AIPLA

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 © AIPLA