Strategies for Preserving U.S. Attorney-Client Privilege in Patent Prosecution and Litigation

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

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]

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.

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

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

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

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)]

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

9. Recent Developments on Privilege Sweden (2010): Extended privilege to communications with Swedish/European non-lawyer patent advisors Switzerland (2011-2013): 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

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

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

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

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, 20001 +1-202-408-4000 +1-202-230-4129(mobile) david.hill@finnegan.com David W. Hill