Confidential Patent Prosecution Communication and the US Attorney-Client Privilege

1. Confidential Patent Prosecution Communication and the US Attorney-Client Privilege Raymond E. Farrell EPI - AIPLA IP Practice in Europe Joint Delegation Meeting Munich March 13, 2014

2. Overview • US Attorney-Client Privilege • What Types of Communications? • Between Whom? • Choice of Law Determination • Harmonization Attempt

3. US Attorney-Client Privilege • Confidentiality of communications between attorney and client made for the purpose of obtaining legal advice. (Genentech) • Full and frank communication between attorneys and their clients, and promotes broader public interests. (Upjohn) • Sound legal advice or advocacy serves public ends and that such advice depends upon the lawyer's being fully informed by the client. (Upjohn)

4. US Attorney-Client Privilege • Privilege only applies if: • Asserted privilege holder is or sought to become a client; • Person to whom the communication was made (a) is a member of the bar of a court, or his subordinate and (b) in connection with this communication is acting as a lawyer; • Communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily either (i) an opinion on law or (ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort [includes inequitable conduct (Therasense)];and • Privilege claimed and not waived by the client. (Colton)

5. Invention records generally used for inventors to disclose to patent attorneys that an invention has been made: the names of inventors, description and scope of the invention, prior art, dates of conception, disclosure to others, and publication, etc. Documents containing a prior art search may be privileged if the primary purpose of conducting the prior art search was either to evaluate patentability or to aid counsel in the preparation of a patent application. (Spalding) What Types of Communications?

6. Communications regarding prior art and the duty to disclose material information to the USPTO, including “relevant technical information . . . [required to] evaluate patentability and/or to prepare a patent application.” (Martin Marietta Materials) Documents that appear to be “conveyed from [a corporation’s in-house patent attorney] to . . . outside patent lawyers for the purpose of obtaining legal advice concerning the preparation of the . . . patent applications at issue, or was prepared by the outside patent lawyers in response to such a request.” (Innogenetics) Draft patent applications, invention control reports, inventor questionnaires, and duty of disclosure reminder forms. (McCook Metals) What Types of Communications?

7. Attorney-client privilege is not limited to communications directly between the client and the attorney. Rather, if the purpose of the communication is to facilitate the rendering of legal services by the attorney, the privilege may also cover communications between the client and the attorney's representative, between the client's representative and the attorney, and between the attorney and the attorney’s representative. (Golden Trade) Between Whom?

8. Communications regarding a US patent being litigated in the US US law of privilege applies (Duplan; Golden Trade; Gucci America) Communications relating to patent prosecution or rendering legal advice on the patent law of another country where a related US patent is being litigated in the US Determine which country’s privilege law applies (“Touch Base” test) Determine whether the governing law recognizes privilege for the communications at issue, and the scope of the privilege (Duplan) Choice of Law Determination

9. “Touch Base Test” Factors include: Whether the relevant communications involved a US Attorney Whether the client was a US resident Whether the client was attempting to protect a right arising under US law Whether the actions at issue took place in the US Choice of Law Determination

10. If the communication: “touches base” with the US > incidental connection, but < “touch base” no connection/merely incidental Apply US privilege law “most direct and compelling interest” test law of country where relationship involving the communication was entered into or centered at the time of the communication Choice of Law Determination

11. “Most Direct and Compelling Interest” Test: The place the allegedly privileged relationship was entered into, and that the relationship was centered at the time of the communication The subject matter at issue (e.g., whether there is a US legal issue or whether the patent at issue is non-US) Whether application of non-US privilege law would be inconsistent with important policies in US law (VLT Corp.) Choice of Law Determination

12. Example (Astra Aktiebolag v. Andrx Pharm.): Communications were protected by German attorney-client privilege Choice of Law Determination

13. Example (Astra Aktiebolag v. Andrx Pharm.): Choice of Law Determination

14. Example (Astra Aktiebolag v. Andrx Pharm.): Court found Korean law was applicable under the Touch Base test – no comparable privilege in Korea existed However, the court still found privilege applied for comity and public policy reasons because the communications would not have been discoverable in Korea Choice of Law Determination

15. Harmonization Attempt AIPLA – AIPPI - FICPI PRIVILEGE COLLOQUIUM IN PARIS 26-28 June 2013 • Basis: protection of confidentiality of IP advice is being debated in various fora, including WIPO and as a part of the implementation of Europe’s Unitary Patent system • Resulted in Joint proposal

16. Harmonization Attempt AIPLA – AIPPI – FICPI Joint Proposal “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”

17. Harmonization Attempts AIPLA – AIPPI – FICPI Joint Proposal Recognizes specific jurisdictional limitations, exceptions and variations on the scope or effect provided that: “individually and in overall effect do not negate or substantially reduce the objective effect … having due regard to the need to support the public and private interests [of the proposal] to which the effect of the [proposal] is intended to support, and the need which clients have for the protection to apply with certainty”

18. Astra Aktiebolag v. Andrx Pharmaceuticals Inc., 208 F.R.D. 92 (S.D.N.Y. 2002) Colton v. United States, 306 F.2d 633 (2d Cir. 1962) Duplan Corp. v. Deering Milliken Inc., 397 F. Supp. 1146 (D.S.C. 1974) Genentech Inc. v. U.S. Intl. Trade Comm., 122 F.3d 1409 (Fed. Cir. 1997) Golden Trade S.r.L. v. Lee Apparel Co., 143 F.R.D. 514 (S.D.N.Y. 1992) Gucci America Inc. v. Guess Inc., 271 F.R.D. 58 (S.D.N.Y. 2010) In re Spalding Sports Worldwide Inc., 203 F.3d 800 (Fed. Cir. 2000) Martin Marietta Materials Inc. v. Bedfor Reinforced Plastics Inc., 227 F.R.D. 382 (W.D. Pa. 2005) McCook Metals LLC v. Alcoa Inc., 192 F.R.D. 242 (N.D. Ill. 2000) Therasense Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) Upjohn Co. v. United States, 449 U.S. 383 (1981) VLT Corp. v. Unitrode Corp., 194 F.R.D. 8 (D. Mass. 2000) https://www.aippi.org/?sel=publications&sub=onlinePub&cf=colloquium References

19. Questions? Raymond E. Farrell www.cdfslaw.com +1 (631) 501-5700 rfarrell@cdfslaw.com