Loose Lips may Prejudice Patents The German and European View

1. Loose Lips may Prejudice PatentsThe German (and European) View Christof Keussen

2. The Status of a German Patent Attorney The German Patent Attorney (Patentanwalt) is a Collaborator in the Administration of Justice (Organ der Rechtspflege). He is: Member of the German Patent Bar Can represent clients before the Federal Patent Court Can represent clients before the Federal High Court in Patent Revocation Proceedings Has the right to speak in IP cases before other Courts In House Patent Attorneys may opt for the Bar membership. However, they may not act for their employer in their capacity as a Patent Attorney.

3. The Status of a German Patent Attorney The rules of professional ethics and discipline are very similar for a German Patent Attorney and an Attorney at Law. The Patent Attorney must keep in confidentiality everything entrusted to him in his professional capacity has the right to refuse testimony concerning such confidential facts in both criminal proceedings (�53 StPO), and civil proceedings (�383 ZPO) Breach of confidentiality is a criminal offense (�203 StGB) The purpose of these provisions is to encourage a free flow of information between the Patent Attorney and the client. All such information is privileged. The German Patent Attorney has full lawyer status.

4. The Status of a European Patent Attorney The European Patent Attorney is a member of the Institute of Professional Representatives before the European Patent Office (epi). He has the right to represent clients before the EPO has the obligation to maintain professional secrecy does not have the right to refuse testimony (but see amendments in the EPC 2000 discussed below) breach of confidentiality is no criminal offense, but epi can take disciplinary measures No full lawyer status Status of national Patent Attorneys or Agents in other European countries varies

5. The Status of a European Patent Attorney New Rule 101a EPC 2000 (expected to enter into force in approx. 2 � 3 years) (1) 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 under Article 2 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.(2) Such privilege from disclosure shall apply, in particular, to any communication or document relating to:(a) the assessment of the patentability of an invention;(b) the preparation or prosecution of a European patent application;(c) any opinion relating to the validity, scope of protection or infringement of a European patent or a European patent application.

6. Patent Prosecution in Germany and Europe No discovery or disclosure of facts in patent prosecution and opposition before the GPTO or EPO No duty to disclose prior art or any other facts to the GPTO or EPO New Rule 89a of EPC 2000 will authorize EPO to request information on prior art taken into consideration in parallel applications in other jurisdictions Failure to comply will lead to a lapse of the application Incomplete compliance will not be a ground for revocation after grant

7. Patent Litigation in Europe A EP-patent still has to be litigated on the national level For EP patents Art. 69 EPC is binding for all EPC states and says that the scope of a patent is determined by the claims interpreted according to the description and drawings (but not the file history) The granted patent is a self contained entity No prosecution history estoppel, scope is determined from the patent specification and the prior art cited in this specification only Introduction of a prosecution history estoppel was discussed and dismissed when revising the EPC (EPC 2000)

8. Patent Litigation in Germany Taking of evidence No disclosure/discovery available Difficult to enforce process patents A recent decision of the Bundesgerichtshof (Faxkarte) essentially �anticipated� Art. 6(1) of Directive 2004/48/EC:A party which has presented reasonably available evidence sufficient to support its claims, and has, in substantiating those claims, specified evidence which lies in the control of the opposing party, the court may order that such evidence be presented by the defendant, subject to the protection of confidential information. Attorney Client Privilege applies, Patent Attorney can refuse testimony

9. The German Patent Attorney in U.S. Proceedings U.S. Courts have acknowledged Attorney Client privilege for communications between German Patent Attorneys and parties to a U.S. patent litigation (Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd., 1996 U.S. Dist. LEXIS 19274 (N.D. Ill. 1996) German Patent Attorneys were found to be involved in the substantive lawyering process and to be the functional equivalent to attorneys Privilege was extended to In House Patent Attorneys not being members of the bar and to Patent Attorney trainees Advice: Clearly mark confidential communication with a German Patent Attorney as such to avoid doubt

10. Practical Advice Clearly mark confidential communication with a German Patent Attorney as such to avoid doubt Most German Patent Attorneys are also qualified as European Patent Attorney Their national professional obligations apply in addition to epi obligations when handling European patent applications Privilege derived from the national status is maintained when giving advice on European patents The German Patent Bar on request issues a letter explaining the status of a German Patent Attorney in the German legal system

11. Summary Communication with a German Patent Attorney is privileged to the same extent as with a lawyer Currently no privilege for European Patent Attorneys No discovery/disclosure in German and European patent prosecution (no relevance of privilege) No discovery/disclosure in German patent litigation No file history estoppel in German patent litigation Privilege of German Patent Attorneys has been acknowledged by U.S. courts