by Dennis Crouch
A bedrock of U.S. legal practice is attorney-client privilege that allows a party to keep certain communications secret. This is an important exception to the broad discovery that is ordinarily permitted in U.S. civil litigation.
In U.S. patent prosecution, a number of privilege issues have arisen – particularly when the communication is not between a client and a U.S. attorney, but rather with a non-lawyer patent agent or a non-U.S. legal service provider.
The USPTO is considering whether to provide a set of best practices as advice to U.S. courts. Taking the first step in that direction, the USPTO has published a Federal Register notice asking for comment on the following questions:
Whether and to what extent U.S. courts should recognize privilege for communications between foreign patent practitioners and their clients; the extent to which communications between U.S. patent applicants and their non-attorney U.S. patent agents should be privileged in U.S. courts; and whether and to what extent communications between U.S. patent practitioners and their clients should receive privilege in foreign jurisdictions.
A Roundtable will be held on February 18, 2015 and written comments can be submitted to ACPrivilege@uspto.gov by February 25, 2015.
LINK: http://www.gpo.gov/fdsys/pkg/FR-2015-01-26/pdf/2015-01241.pdf
Quoting from the Federal Register:
“whether and to what extent communications between U.S. patent practitioners and their clients should receive privilege in foreign jurisdictions.”
Is there any foreign jurisdiction where this is a hot topic? I mean, the world divides into common law and civil law jurisdictions. Civil law has no discovery whereas specialist patent courts in English common law jurisdictions work it out as they go along, case by occasional case, don’t they?
Here is an excerpt from the Federal Register notice:
“Currently, there is little consistency in whether the innovators’ communications with their patent practitioners will be recognized as privileged by courts.”
This statement misses the mark, because it focuses on outcome, rather than on process. Consistency of outcome is not the goal in this context.
As long as there is consistency in adherence to the legal principles involved in any particular jurisdiction, the outcome–whatever it is–will be the correct one.
BTW yes, I do understand the importance and intricacy of this issue. I would argue that every patent applicant has a home jurisdiction, in which an appropriate attorney can be engaged, and that all other patent professionals used should be subordinate to that master contract for legal services.
That is the kernel that should form the basis of any international harmonization effort.
You speak as if from an age when people “believed” ends never justify the means, that principles define the justice of outcome. Such an age has mostly passed away… That said, what people “believe” has nothing to do with truth.
Adherence to legal principle is the standard by which the correctness of the outcomes are to be judged…
to hear such a truth spoken so directly here… is shocking… and very heartening.
Thank you for that!
You speak as if from an age when people “believed” ends never justify the means, that principles define the justice of outcome. Such an age has mostly passed away…
Do you have any evidence for the existence of such an “age” or its passing?
It sounds, frankly, like something you dreamt up after digesting an overload of cable TV and/or AM radio.
to hear such a truth spoken so directly here… is shocking…
Sounds like you’re trolling the blog. Get a life, maybe?
Your disapproval, MM, with my comment is duly noted.
Your personal attack, I believe, runs afoul of Dennis’ attempt to make this site respectful and polite as per the “Moving Toward a Better Patently-O Ecosphere” post of September 10, 2014
link to patentlyo.com
If my comments could objectively be construed as offensive, only the class of persons who believed themselves to be “unprincipled” could be expected to take any offence.
As such, know that I was not attacking you personally, and moreover that such would in fact be an impossibility.
The communications should be as privileged as those between clients and U.S. attorneys. A US patent agent is hired as a confidential counsel.
The situation is even more clear (IMO) for e.g. European attorneys: these “non-attorney’s” typically take years of university study, sit rigorous exams, have to interpret the law and are recognized to appear before courts in e.g. Europe. Clients treat them the same way as attorneys.
The fact that they would not be recognized as “attorneys” in the USA is irrelevant. Most foreign lawyers are not recognized as attorneys in the USA. Even within the USA you are restricted according to your bar membership. If I talk to a client in Maryland is that not privileged because I am only a member of DC and California bars? Of course not.
Any time I read a statement as unequivocal and simplistic as this, I start licking my chops.
The comment entirely ignores inconvenient realities, foremost among them the reasonableness of the reliance.
For instance, is it reasonable for a client seeking legal advice on Maryland state law, to seek that advice from an attorney not licensed in Maryland? The answer would of course be fact-specific, and would depend on both representations made by counsel as to competence, and on actual evidence of competence; however, a whole gamut of situations is easily envisioned in which the reliance would be unreasonable.
The same concept applies when advice is sought from foreign attorneys. All sorts of facts could militate in favor of reasonableness, for instance if the attorney is licensed in the other jurisdiction as a foreign legal expert.
Of course the nature of the advice sought is also relevant–for instance, a US client could seek advice from a european patent attorney on EPO prosecution, but would such advice constitute “legal” advice for the purposes of US A/C privilege?
Reasonableness takes into account many contextual factors, a big one being the range of options available to, or known by, a client. This is of particular interest in this area, as there are both patent agents and patent attorneys, which are two distinct legal classes of patent practitioner. Attorneys are a subset of the agent set, and have all the legal abilities of agents, but the reverse is not true. Is it reasonable for a client to seek the advice of an agent on a matter concerning constitutional, administrative law, or statutory interpretation law, any of which can and do bear on patent practice, in view of the fact that an agent is not licensed to proffer advice in such areas, and in view of the fact that patent attorneys are available to assist in such matters?
The situation with a searcher is helpfully analogous. Privilege should attach if an agent is lawfully acting as a subordinate of an attorney, which is an easy enough scenario to construct. When agents represent clients directly, whether or not privilege should attach should be intensively fact-driven, the same as with any other individual. Among relevant facts would be prior legal licensure, precise scope and nature of advice sought, etc.
Statements about foreign attorneys like “The fact that they would not be recognized as “attorneys” in the USA is irrelevant.” are less than unhelpful, and are factually incorrect.
Well, yes, of course. Yes, the determination can be complex. And that is the problem: clients want to be able to talk to people without fear that they are going to lose confidentiality. The current system needs some clarification.
Part of the problem in getting clarification is that there appears to be a persistent view that reduces A/C privilege to whether the counsellor is a lawyer: which begs the question of what is a lawyer.
While such a view may be persistent, it is hardly dominant.
The inherent complexity of the determination is not the problem–the problem is the potential satisfaction with the lack of character of some clients. Situations in which clients want it all, but don’t want to give enough to get it, need to be addressed.
While there is a spectrum of patent clients, they broadly fall into 1 of 2 classes: sole inventors, and businesses.
As patenting is commercially important to a commercial entity, businesses involved in patenting should be expected to be legally sophisticated, and to be capable of understanding the relevant issues–for while possibly complex, the privilege determination is not particularly difficult. If they “want to be able to talk to people without fear that they are going to lose confidentiality”, they should structure their dealings to ensure such an outcome.
Sole inventors, depending on the individual, are often, and are expected to be, less legally sophisticated–however this fact does not change the nature of the issue, it merely highlights the obligation of those providing services to assist the client in their legal education and ultimate decision-making.
And therein lies the rub: all those independently providing patent services should be able to provide such assistance, and if they cannot, then they have no business providing said services other than under the direction of one who can.
Regarding the provision of assistance on the issue of privilege, licensure as an attorney is not the sine qua non; what is important is the ability to give helpful, complete, and defensible advice, consistently. As I said, although potentially complex, the issue is not particularly difficult, and the seeking of and reliance upon assistance from other than a currently-licensed attorney on the privilege issue could be reasonable.
At this point, public policy concerns such as consumer protection come into play, and society can make a coarse determination on behalf of clients as to those patent service providers from whom the solicitation of assistance on issues such as privilege would be prima facie reasonable. Enter the requirement for licensure as an attorney to provide assistance and advice on legal issues such as privilege.
Non-attorney practitioners should know enough to know that they aren’t qualified to render assistance and advice on matters of privilege, and should therefore be expected to, at a minimum, direct all clients in advance to an attorney to resolve such issues before offering to provide representation–and not necessarily to a patent attorney.
Privilege is an absolutely critical part of the patent game. As a condition of licensure to practice before the USPTO, any non-attorney patent practitioner who offers to perform services that would likely raise issues of privilege should be expected to pre-emptively direct a potential client to an attorney to determine, based upon how and in which jurisdiction(s) the non-attorney practitioner structures and delivers his or her services, and upon in which jurisdiction(s) and contexts the issue is likely to arise, the likely existence and scope of the privilege.
The basis for all this is found in 37 CFR Part 11, Subpart B, for instance 37 CFR 11.5(b)(1): “Practice before the Office in patent matters includes, but is not limited to…giving advice to a client in contemplation of filing a patent application or other document with the Office…” If the practitioner is a licensed attorney, the advice related to privilege should be substantive; if the practitioner is not a licensed attorney, the advice should be to seek the advice of one qualified to give it–namely, an attorney.
(in my opinion)
I had a longer and more nuanced comment that got lost in the ether, so here is a shorter one.
Yes, AC priv is complex and there are solutions. I think that there should be simpler solutions.
Business people want to know if they can get confidential advice directly from their counsellors. They lack the time and inclination for nuanced legal explanations and certainly don’t want to set up complicated chains of legal relationships. Its harder explaining things to European companies who come from a legal culture where is the is no such thing as discovery.
“Businesses”, roughly, want it all, and for as little as possible.
However, in a civilized society, when they want to avail themselves of a system that was set up for their benefit and of which they voluntarily avail themselves, they have to pay the freight.
If they want to know if they can get confidential advice, they can pay to find out, or they can find an answer themselves, if they don’t want to pay.
Regarding your desire for “simpler solutions”, I would ask you what it is about the current solutions that is repugnantly complex to you (or economically inefficient, if you prefer).
I would enjoy reading your longer and more nuanced comment.
It seems to me that communications with both patent agents and foreign patent practitioners should be just as privileged as those with a US attorney, so long as the communications involve legal advice and so long as the client reasonably believes the agent or foreign patent practitioner to be qualified/competent to provide the legal advice. As anon suggests, privilege is something that belongs to the client – its purpose is to facilitate the provision of competent advice, not to promote the exclusivity of the various state bars.
Regarding searching, those who think that the documents produced by patent searches are ever covered by attorney-client privilege are mistaken. They might be covered by the attorney work product doctrine, but that comes with a quite different set of rules and conditions.
There are a number of credible and important reasons to allow for secrecy and to protect secrecy regarding business operations. However, in the context of civil litigation the rule is that we require those deep secrets to be turned over (when sufficiently related to the issues). Thus, parties disclose important trade secrets, business strategies, and sensitive employee information, etc. Courts attempt to limit adverse impacts of the disclosures through protective orders and sealed records. However, the disclosures themselves are still required.
The one major exception to this is for attorney-client privilege. And, any proposals to expand the privilege need to be situated within this broader realization that a tremendous amount of sensitive and otherwise confidential information comes out in the litigation.
Dennis: A/C privilege is not only important in the context of litigation.
A U.S. lawyer can cite privilege in refusing to share the contents of documents or computer files with any agent of the state, and require that the state review the documents in a way that does not disrupt A/C priv. Foreign patent “lawyers” have told me that they will not travel to the USA with confidential information because they believe that the U.S. government will not respect A/C priv.
I do not know how credible are these fears, but they come from highly respected and influential European patent attorneys. At the least, the fear of forced disclosure undermining client representation, which is the reason we have A/C priv.
Thanks Simon.
There are two great papers that cover the history of this issue, one of which proposes to answer the question. That one is 13 Tex. Intell. Prop. L.J. 279
link to tiplj.org FOR A UNIFORM FEDERAL COMMON LAW OF ATTORNEY-CLIENT PRIVILEGE FOR
COMMUNICATIONS WITH U.S. AND FOREIGN PATENT PRACTITIONERS
James N. Willia. The other is by your own David Hrick: Patent Agents: The Person You are; link to papers.ssrn.com
Another factor, of course is that we all have a duty of candor and disclosure to the USPTO that may limit the scope of what can be under privilege. And CRF 1.105 says an examiner can ask for information including “ii) Search: Whether a search of the prior art was made, and if so, what was searched.”
Similar to patent searchers, how about draftsmen?
Should we also include patent searchers engaged by the practitioner in these discussions? If so, and assuming everyone agrees privilege isn’t waived by providing searchers enough details to receive a meaningful search, how is a foreign attorney engaged by the practitioner any different?
Ordinarily in U.S. law, a client’s communication with a searcher would not be privileged unless serving as a subordinate to an attorney.
That ends that discussion pretty quickly. I’m rather embarrassed.
So, taking it the other way, would it serve the policy behind the privilege to extend it to practitioner/searcher communications? In other words, would better searches result if the communications were privileged, resulting in (presumably) better quality applications?
Not likely, given the existing duty to disclose knowledge known to anyone related to the application.
When would a patent searcher not be subordinate to an attorney? Genuinely curious. (Guessing: Maybe when the searcher directly communicates with the inventor to save attorney time? This is how it usually works in-house. Outside searchers have an attorney intermediary 99% of the time.)
Maybe I don’t know what subordinate means in this conversation. (Luckily ignorance is curable…)
Not to veer completely off topic, but this lack of privilege re: searcher communications is a very good reason we should never provide claim charts or anything resembling a claim chart. I get asked for them quite frequently and I don’t think it’s in anyone’s interest to have a non-attorney creating them. Stick to facts and 100% non-characterizing notes.
So many of my clients do their own searches or limit my ability to order one that I haven’t really thought much about how much information is the correct amount to provide a searcher. I suppose there is very little risk of anything prejudicial to the client being conveyed to the searcher. The claims haven’t been drafted yet, the prior art is largely unknown, and the communications from the client at that point mostly would focus on the narrower view of the invention inventors typically develop.
On further reflection, my line of questioning was probably ill-conceived.
No, I don’t think its ill conceived at all. Rather, I think that there are many clients who would believe that their searches are protected by the privilege. And, I would suspect – as DIP suggests – that some courts would stretch the meaning of ‘attorney supervision’ to make this result happen.
Given the fact that prior to any search ever commissioned, a known duty that preempts the results of the search exists, I struggle to see the logic that would be involved to eliminate that pre-existing duty.
This is an interesting issue for U.S. lawyers who typically look to be exclusively protective w/r/t privilege in a way that ensures the continued relevance of the profession. However, of late, the major U.S. intellectual property law associations have begun fully integrating both foreign lawyers and U.S. patent agents into their ranks. Thus, it will be interesting to see whether there remains any opposition to expanding the scope of privilege.
[…] Foreign Agent-Client Privilege? […]
Should the discussion be colored by the fact that it is the client that holds the privilege?
Yes of course.
I suspect that the analysis will involve the same sorts of over arching issues surrounding privilege generally.
Why attorney-client privilege exists in the first place and to what extent other kinds of privilege and quasi-privilege are respected (depending on the nature of the rights involved and the relationship at issue) will likely form a background, while the court will try to apply the actual matters and relationships at issue on that background to determine what (if any) privilege is to be given in respect of Patent Agent only or Foreign attorney, communications.
Comments are closed.