Disclaimer, Union IP Position Paper

Note from the Editorial Committee: It is our intention to inform our members of developments and/or opinions of members and others in the field of IP. We therefore scrutinise rigorously requests for publication in epi Information with we trust transparency and fairness. There is, however, an understood caveat that the views and opinions expressed in documents that are published are solely those of the author(s), and not those of the epi or of the Editorial Committee. Neither the epi nor our Committee endorses the views and opinions expressed in documents selected for publication. With the above statement in mind, we publish below for the information of our members a position paper recently submitted to us by UNION IP

Position paper on Client-Attorney Privilege in IP advice

R. Wijnstra, President of Patents Commission of UNION-IP
M. Baccarelli, President of IP Litigation Commission of UNION-IP

UNION-IP is an association of practitioners from different European countries in the field of IP, that is of individuals whose principal professional occupation is concerned with patents, trademarks or designs and related questions and who carry on their profession independently or as employees.

UNION-IP was asked to produce a position paper on client-attorney privilege for patent advisers. Client-attorney privilege in the IP context should be considered as the right to resist requests from authorities or other parties to disclose communications between a person and that person's IP advisor. We find that it is unacceptable that IP professionals, who are obliged to keep information confidential under one national law, may face criminal prosecution in other countries for complying with this obligation.

With regard to the WIPO study on Patent Attorney privilege, the agreed position between the Patents and the Litigation Commissions of the UNION-IP is that we endorse the position taken by the AIPPI and we wish to continue as an interested observer. We refer to the Joint Proposal of the AIPLA, AIPPI and FICPI, reproduced below (completed with our comments):

IN ORDER to give effect to the statements recited above, the nations cited in the Schedule to this Agreement have executed this Agreement on the dates stated respectively in that Schedule.

The nations so cited AGREE as follows.

  1. In this Agreement,
    '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.

Comment: we note that the qualification of "IP advisor" is unclear and the following must be taken into account:

  • Contrary to common law countries, in many civil law countries, there is generally no protection for in-house counsels since they are considered to be a separate profession and do not enjoy the same status as attorneys.
  • In some countries it could be unclear whether "patent attorney" is a qualified professional or not. For instance, in Sweden, the title "patent attorney" is not protected, thus any one may say that they are a patent attorney even though they do not possess any relevant education at all.
  • In other countries, even communications with third parties can be covered by privilege. For instance, in the UK, the protection by privilege covers communications between lawyer or client and a third party which come into existence for the dominant purpose of being used in connection with actual or pending litigation ("litigation privilege").

Our position is that the IP advisor should be a qualified professional, duly authorized in accordance with domestic law and to whom exist adequate regulation. In this respect, we find beneficial if each country should provide WIPO with the specific categories of advisers whose clients benefit from privilege under this standard.

'intellectual property rights' includes all categories of intellectual property that are the subject of the TRIPS agreement, and any matters relating to such rights.

Comment: we find that the use of the expression "any matters relating to such rights" is unclear and could be enhanced by including some examples that would allow the reader to understand the full scope of this definition.

'communication' includes any oral, written, or electronic record whether it is transmitted to another person, or not.

Comment: we find that such wording could be enhanced if redrafted the definition as following:
"communication includes any communication made by any means (for example, oral, written, or electronic record) irrespective of the country of origin of that communication, whether it is transmitted to another person authorized to receive such communication or not", as doubt to the application of the agreement may arise in relation to cross-border communications.

'professional advice' means information relating to and including the subjective or analytical views or opinions of an intellectual property advisor but not facts including mere statements of fact which are objectively relevant to determining issues relating to intellectual property rights (for example, the existence of relevant prior art).

Comment: we suggest that the reference to "facts including mere statements of fact" could be further explained in order to avoid misinterpretations of the scope of the exception.

2. Subject to the following clause, a communication made for the purpose of, or in relation to, an intellectual property advisor providing 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.

3. Nations may have and apply specific limitations, exceptions and variations on the scope or effect of the provision in clause 2 provided that such limitations and exceptions individually and in overall effect do not negate or substantially reduce the objective effect of clause 2 having due regard to the need to support the public and private interests described in the recitals to this Agreement which the effect of the provision in clause 2 is intended to support, and the need which clients have for the protection to apply with certainty.

Comment: we highlight that there are already specific limitations which cover communications from patent attorneys. For instance, in the context of the future Unified Patent Court (UPC), the Proposed Rule 287 provides that advice from lawyers and non-lawyer patent attorneys are privileged from proceedings before UPC. Also, Rule 153 of the European Patent Convention (EPC) provides that advice from "professional representatives" to client are privileged from disclosure in proceedings before European Patent Office. However, there are two specific issues regarding the application of this specific rule:

  • Article 64 (3) of the EPC makes reference to national law in case of infringement of a European patent, so it expands significantly the scope of such protection by national laws ; and
  • Rule 153 was amended under French law on 21 October 2008 and the amended version entered into force on 01 April 2009, so it is unclear if the privilege applied to communications/advice before this date.

Considering the above, UNION-IP thinks that it will be very difficult to implement a system which prevents states from limiting, excepting or varying the scope of the effect of the provisions in clause 2. We tend to believe that the "weakest protection", which cannot be abolished by the state in any circumstance, would be the best solution, provided that it does not reduce the protection provided for by clause 2.

Union IP

Done on 10 December 2017 at Amsterdam.