Patent & Trade Mark Attorney Privilege

1. Patent & Trade Mark Attorney Privilege Competition Law Association Nicholas Fox 29 April 2013

2. Overview • Historical background • Scope of patent and trade mark attorney advice privilege • Patent and trade mark attorney litigation privilege • The European dimension • Wider global view

3. Historical background • Moseley v The Victoria Rubber Co (1886) 3 RPC 351 • Civil Evidence Act 1968 s 15 • Patents Act 1977 s 104 • Dormeuil Trade Mark [1983] RPC 131 • Wilden Pump Engineering Co v Fusfeld [1985] FSR 159

4. Patent attorney advice privilege – CDPA 1988 s280 • 280.— Privilege for communications with patent agents. • (1) This section applies to communications as to any matter relating to the protection of any invention, design, technical information or trade mark, or as to any matter involving passing off, and documents, material or information relating to any matter mentioned in paragraph (a). • (2) Where a patent attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the patent attorney had at all material times been acting as the client's solicitor. • (3) In subsection (2) “patent attorney” means — • (a) a registered patent attorney or a person who is on the European list, • (b) a partnership entitled to describe itself as a firm of patent attorneys or as a firm carrying on the business of a European patent attorney, or • (ba) an unincorporated body (other than a partnership) entitled to describe itself as a patent attorney, or • (c) a body corporate entitled to describe itself as a patent attorney or as a company carrying on the business of a European patent attorney

5. Trade mark attorney advice privilege – TMA 1994 s87 • 87.— Privilege for communications with registered trade mark agents. • (1) This section applies to– communications as to any matter relating to the protection of any design or trade mark, or as to any matter involving passing off, and documents, material or information relating to any matter mentioned in paragraph (a). • (2) Where a trade mark attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the trade mark attorney had at all material times been acting as the client's solicitor. • (3) In subsection (2) “trade mark attorney” means — (a) a registered trade mark attorney , or (b) a partnership entitled to describe itself as a firm of registered trade mark attorneys, or (c) any other unincorporated body or a body corporate entitled to describe itself as a registered trade mark attorney.

6. Litigation privilege

7. IP attorneys litigation and advocacy rights • Intellectual Property Litigation Certificate • A right to conduct appeals from and/or apply for judicial review in the High Court of decisions of the Patent Office and other IP tribunals • A right to conduct litigation in the Patents County Court; and any County Court when the court is hearing a matter where Part 63 of the Civil Procedure Rules apply • A right of audience to appear before the Patents County Court and the High Court on appeal from the decisions of the Patent Office and other IP tribunals

8. IP attorneys litigation and advocacy rights • Higher Courts Litigation Certificate • A right of audience to appear before any County Court when the court is hearing a matter where Part 63 of the Civil Procedure Rules apply • A right to conduct litigation and a right of audience to appear in case management conferences and in interim proceedings before the Patents Court and any other Court of the High Court when the court is hearing a matter where Part 63 of the Civil Procedure Rules apply. • Higher Courts Advocacy Certificate • A right of audience before the High Court, the Court of Appeal and the Supreme Court in proceedings which may be conducted by an attorney holding a Higher Courts Litigation Certificate.

9. Litigation privilege – LSA 2007 s190 • 190. — Legal professional privilege. • (1) Subsection (2) applies where an individual (“P”) who is not a barrister or solicitor– provides advocacy services as an authorised person in relation to the exercise of rights of audience, provides litigation services as an authorised person in relation to the conduct of litigation,… • (2) Any communication, document, material or information relating to the provision of the services in question is privileged from disclosure in like manner as if P had at all material times been acting as P's client's solicitor. .

10. The European Dimension

11. European Patent Convention Rule 153. - Attorney-client evidentiary privilege Where advice is sought from a professional representative in his capacity as such, all communications between the professional representative and his client or any other person, relating to that purpose and falling Article of the Regulation on discipline for professional representatives, are permanently privileged from disclosure in proceedings before the European Patent Office, unless such privilege is expressly waived by the client. Such privilege from disclosure shall apply, in particular, to any communication or document relating to: the assessment of the patentability of an invention; the preparation or prosecution of a European patent application; any opinion relating to the validity, scope of protection or infringement of a European patent or a European patent application. .

12. Unified Patent Court ­Rule 287 - Attorney-client privilege • Where a client seeks advice from a lawyer he has instructed in a professional capacity, then any confidential communication (whether written or oral) between them relating to the seeking or the provision of that advice is permanently privileged from disclosure, whether in court or arbitration proceedings of any nature or in the face of any compulsory information gathering powers of any body. • This privilege applies to communications between a client and a lawyer employed by the client and instructed to act in a professional capacity and a client and a patent attorney or agent (including a patent attorney or agent employed by the client) who is instructed in his professional capacity to advise on patent matters;

13. Unified Patent Court • 3. This privilege extends to the work product of the lawyer or patent attorney or agent (including communications between lawyers and/or patent attorneys or agents employed in the same firm or entity or between lawyers and/or patent attorneys or agents employed by the same client) and to any record of a privileged communication. • 4. This privilege prevents the lawyer or patent attorney or agent and his client from being questioned or examined about the contents or nature of their communications; • 5. This privilege may be expressly waived by the client. • 6. The expressions "patent attorney" and "patent agent" shall bear the meanings given to them by the law of the contracting state to the Agreement in which the individual practises

14. Unified Patent Court • Rule 288 - Litigation privilege • 1. Where a client, or a lawyer or patent attorney or agent instructed by a client in a professional capacity, communicates confidentially with a third party for the purposes of obtaining information or evidence of any nature for the purpose of or for use in any proceedings reasonably anticipated or pending before the Court, such communications shall be permanently privileged from disclosure in the same way and to the same extent as provided for in Rule 287. .

15. Conclusions Wider Global View • US discovery v UK disclosure • National regulations • Impact of the enforcement regulation • WIPO initiatives

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