DATE: november 6, 2013
Standing Committee on the Law of Patents
Geneva, January 27 to 31, 2014
confidentiality of communications between clients and their
patent advisors: compilation of LawS, Practices and other information
Document prepared by the Secretariat
TABLE OF CONTENTS
EXECUTIVE SUMMARY 4
client-patent advisoR priviledge – Background 9
CLIENT-ATTORNEY PRIVILEGE AND PROFESSIONAL SECRECY OBLIGATION 9
CLIENT- PATENT ADVISOR RELATIONSHIP AND CONFIDENTIALITY 10
International legal framework 13
PARIS CONVENTION 13
TRIPS AGREEMENT 14
GENERAL AGREEMENT ON TRADE IN SERVICES (GATS) 16
Summary of national laws and practices 17
ORIGIN AND SCOPE 17
APPROACHES TO CROSS-BORDER ASPECTS 20
DISCUSSION OF THE RELEVANT ISSUES 21
RATIONALE FOR CLIENT-PATENT ADVISOR PRIVILEGE 21
COMMON LAW APPROACH TO THE CLIENT-PATENT ADVISOR PRIVILEGE 26
CIVIL LAW APPROACH TO THE PATENT ADVISOR PROFESSIONAL SECRECY OBLIGATION 27
CROSS BORDER ASPECTS 28
POSSIBLE REMEDIES IDENTIFIED ON THE CROSS-BORDER ASPECTS 29
RULES CONCERNING THE RECOGNITION OF FOREIGN PATENT ADVISOR PRIVILEGE 31
CHOICE OF LAW RULES 34
PRACTICAL APPROACHES 35
Annex I: BRIEF SUMMARY OF related SCP DOCUMENTS 1
Annex II: Work undertaken by International Non-Governmental Organizations 1
Annex III: COMPILATION OF NATIONAL LAWS AND PRACTICES 1
1. ARGENTINA 1
2. AUSTRALIA 1
3. BRAZIL 5
4. BULGARIA 8
5. CANADA 9
6. CHILE 9
7. COSTA RICA 9
8. CYPRUS 10
9. DENMARK 10
10. FINLAND 10
11. FRANCE 10
12. GEORGIA 11
13. GERMANY 11
14. Hong kong, China 13
15. HUNGARY 14
16. INDIA 15
17. ISRAEL 15
18. JAPAN 15
19. KYRGYZSTAN 19
20. LITHUANIA 19
21. MALAYSIA 20
22. MEXICO 23
23. MONACO 23
24. NEW ZEALAND 24
25. NORWAY 27
26. PERU 27
27. POLAND 27
28. PORTUGAL 27
29. REPUBLIC OF MOLDOVA 28
30. REPUBLIC OF KOREA 28
31. ROMANIA 29
32. RUSSIAN FEDERATION 29
33. SOUTH AFRICA 33
34. SWEDEN 35
35. SWITZERLAND 36
36. THAILAND 39
37. TURKEY 41
38. UKRAINE 41
39. UNITED KINGDOM 41
40. UNITED REPUBLIC OF TANZANIA 45
41. UNITED STATES OF AMERICA 46
42. ZAMBIA 53
43. EUROPEAN PATENT CONVENTION 53
44. EUROPEAN UNION – AGREEMENT ON THE UNITARY PATENT COURT 54
45. EURASIAN PATENT CONVENTION 55
1 Pursuant to the decision of the Standing Committee of the Law of Patents (SCP) at its nineteenth session held from February 25 to 28, 2013, in Geneva, the present document is a compilation of laws and practices on, and a summary of information received from
Member States on experiences relating to, the issue of confidentiality of communications between clients and their patent advisors. The document primarily draws on information contained in the documents which had been submitted to the previous sessions of the SCP (See Annex I). The compilation of information does not imply any recommendation or guide for Member States to adopt any particular mechanism contained in this document.
2 Background: It is often the case that an applicant mandates a local patent advisor in his country of origin to assist filing, preparing and prosecuting a patent application according to the national rules and practices. In the course of protecting his invention at the international level, the applicant further files corresponding patent applications abroad by engaging foreign patent advisors in different overseas countries. In some of those overseas countries, in particular in common law countries, courts may order, in the course of “discovery” proceedings during patent litigation, the forcible disclosure of confidential documents between the applicant and his patent advisor, including that of his local patent advisor in his country of origin. While the applicant might be protected by the rules and practices on the confidentiality of communications between him and his patent advisor in his country of origin, such confidentiality relationship might not be recognized and protected in foreign countries, even if the client engages different local patent advisors abroad and even if his patent advisor in the country of origin does not provide any services abroad.
3 In general, when a client seeks an opinion from a qualified lawyer, communications between the lawyer and his client are accorded the “privilege” of not being required to be disclosed in a court of law or those communications are protected from public disclosure by a secrecy obligation. The purpose of establishing such a privilege or secrecy obligation is to encourage those who seek advice and those who provide advice to be fully transparent and honest in the process. Those who seek advice should provide the advisor with all the information that could be relevant to obtain the best advice, including the aspects which may run counter to his position. On the other hand, the advisor should be able to be completely frank. Therefore, in order to ensure a high quality of legal advice, the exchange of instructions and advice should not be restricted due to the fear of disclosure of their communications.
4 In general, patent attorneys are not only technical experts and only file patent applications, but also provide legal advice related to patent prosecution and litigation. With the understanding that clients should be able to have frank and open communication with their patent attorneys, some countries extend the legal professional privilege to patent attorneys who are not qualified lawyers. However, some other countries do not provide for such an extension or do not have any specific rules on that issue. Even if the patent attorney’s privilege exists, the scope of communications covered by the privilege and the extent of privilege that overseas patent attorneys enjoy are different from one country to another. Consequently, although the confidentiality of communications between patent advisors and their clients may be maintained in their home country, there is a risk of forcible disclosure of such communications in another jurisdiction during the discovery or similar proceedings.
5 International framework: The issue of client-patent advisor privilege is not expressly regulated by any international intellectual property (IP) treaty. However, the provisions of the Paris Convention for the Protection of Industrial Property (Paris Convention), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and the General Agreement on Trade in Services (GATS) of the World Trade Organization (WTO) have some relevance to the issue at stake. With regard to the Paris Convention, the issue of client-patent advisor privilege appears to fall under the permissible exceptions to the general rule of the national treatment, although the Paris Convention does not prevent its Contracting Parties from according the same treatment between national and foreign patent advisors. The TRIPS Agreement, similar to the Paris Convention, does not directly refer to the issue of client-patent advisor privilege, but contains both rules on the production of evidence, which lies in the control of the opposing party, and on the protection of confidential information (see Article 43). The issues of client-patent advisor privilege in connection with judicial proceedings appear to be outside the scope of GATS.
6 Different approaches at the national level: Annex III provides a compilation of national laws and practices regarding the scope of client–attorney privilege and its applicability to patent advisors in 41 countries (including both common law countries and civil law countries) and three regional frameworks. On the national aspects of the preservation of confidentiality of communications with patent advisors, it reviewed the national laws with respect to the following elements: (i) the origin of the privilege and/or secrecy obligation; (ii) professionals bound by the privilege and/or secrecy; (iii) the scope of the privilege/secrecy obligation; (iv) exceptions and limitations to the privilege/secrecy obligation; (v) penalties for breach of secrecy; and (vi) qualifications of patent advisors. Further, in connection with civil court proceedings, the information as to how such professional secrecy obligation interacts with a duty to testify or to produce documents is also provided, where available. On the cross-border aspects, information regarding the recognition of confidentiality of communications with foreign patent advisors was gathered.
7 Most countries impose confidentiality obligations on patent advisors either under national legislations or under codes of conduct set by professional associations or pursuant to governmental regulations. In general, the duty of confidentiality requires patent advisors not to disclose any information in relation to their advice obtained in the course of exercising their professional duties. However, there are a few countries where such obligation does not exist. For the issue of client-patent attorney privilege, it is important to take into account the particularities of court proceedings in common law and civil law countries.
8 In common law countries, the issues at stake inherently relate to a specific privilege in court proceedings with regard to discovery.
Some common law countries recognize privilege in respect of communications between non lawyer patent advisors and their clients, similar to the client attorney privilege.
However, in some other common law countries, communications between
non-lawyer patent advisors and their clients are not privileged.
9 In civil law countries, the issue is addressed by a professional secrecy obligation generally contained in civil codes and criminal codes.
In some civil law countries, the right to refuse to testify in court on a matter covered by the professional secrecy obligation and/or to produce documents that contain information covered by the professional secrecy obligation is not applicable to non-lawyer patent advisors.
However, in some civil law countries, in principle, communications with
non-lawyer patent advisors are also protected from disclosure during court procedures.
Some of the civil law countries that protect the confidentiality of communications with non-lawyer patent advisors have reformed their law of evidence or IP law to expressly state the right to refuse both testimony and production of documents.
10 Approaches to cross-border aspects: Most countries do not provide specific laws and rules dealing with cross-border aspects of the confidentiality of communications between clients and foreign patent advisors.
Among the countries where the confidentiality of communications with national patent advisors is granted at the national level, there are some where the confidentiality of communications with foreign patent advisors is not recognized due to the fact that, for example, they are not registered under the respective national law or are not admitted to the bar.
However, in a few countries, communications with foreign patent advisors, even if they are non lawyers, are also protected from forcible disclosure.
In most civil law countries, there is no practical experience with cross border aspects of confidentiality of communications between clients and patent advisors, since there are no or very limited pre trial discovery proceedings which might force disclosure of confidential information. However, the patent advisors in those civil law countries could be subject to a cross-border discovery in some common law countries, even if the protection of confidentiality is provided by their home country. Some civil law countries have explicitly established the privilege or secrecy obligation of non lawyer patent advisors by statute in order to facilitate the recognition of the privilege in the courts of certain common law countries.
11 Issues addressed at the national and international levels: Based on the information gathered in Annex III and the discussions held at the SCP, the document contains further elaboration on a number of pertinent issues relating to the preservation of confidentiality of patent advisors’ communications. It reviews the rationale for the client-patent advisor privilege and, in particular, its effects on the administration of justice, the public and private interests behind the regulation and the issue of development.
12 In relation to the cross border aspects, the following issues have been addressed: (i) loss of confidentiality in foreign countries due to non-recognition of confidentiality of communications with non-lawyer patent advisors; (ii) legal uncertainty as to the recognition of foreign privileges and secrecy obligations; and (iii) the lack of comprehensive legal and practical measures to avoid forcible disclosure of confidential communications in a cross-border context. While it is not realistic to seek a uniform rule involving fundamental changes in national judicial systems, the legal uncertainty surrounding the treatment of confidential communications between patent advisors and their clients could affect the quality of the patent system at the international level.
13 Possible remedies for cross-border aspects: One type of possible remedies for cross border aspects consists in extending, through national laws, the legal professional privilege provided in relation to communications between national patent advisors and their clients to communications with certain foreign patent advisors, including patent advisors from both civil law and common law countries (an approach found in the laws of Australia and New Zealand). This approach would allow countries to maintain their flexibilities in terms of substantive law on privilege or professional secrecy obligation, but the asymmetry of the cross-border protection of confidential IP advice would remain.
14 Another approach might be to seek a minimum standard or convergence of substantive national rules on privilege among countries. On the one hand, if a common set of substantive rules will be applied to both national and foreign patent advisors in all countries, the confidentiality of IP advice would be recognized beyond their national borders. On the other hand, considering the current differences with respect to national laws in this area, countries may need some flexibilities, should they implement an international standard.
15 Another possible mechanism is to recognize the privilege existing in other countries as part of the choice of law rules, and grant the same privilege for the purpose of court procedures in one’s own country if such communications would have been privileged in the foreign law of the country concerned (an approach taken in the United States of America). In civil law countries, clarifying the secrecy obligation of patent advisors by their national legislations could facilitate the recognition of confidentiality through the application of the choice of law rule to a certain extent (an approach found in the laws of France, Japan and Switzerland and the European Patent Convention (EPC)). On the one hand, the application of the choice of law rule does not require amendments of substantive domestic rules on privilege. On the other hand, even if a common choice of law rule were to be established, it would not be able to fully avoid forcible disclosure of confidential IP advice.
16 Further, one non-governmental organization proposed to establish an international framework that extends the recognition of privilege to foreign patent advisors who are designated by the respective foreign authorities.
17 In the absence of an international legal framework that effectively recognizes confidentiality of IP advice at the global level, a number of practical remedies, such as cooperation with lawyers and increased use of oral communications, have been sought by practitioners in order to avoid forcible disclosure of confidential IP advice at the national and international levels.