May/June 2016
IP Litigator
By Jennifer H. Roscetti; Leythem A. Wall; Erin M. Sommers, Ph.D.
In today’s global economy, securing protection for and enforcing intellectual property rights reaches far beyond any one country’s border. As a result, innovators—no matter where they are—want certainty that their communications with IP practitioners in other countries are privileged and will be protected from discovery, especially when entrenched in U.S. patent litigation. Yet despite an overwhelming worldwide interest to harmonize the application of privilege to communications between clients and their IP practitioners, such communications are not automatically immune from discovery in U.S. federal courts. The recent Federal Circuit decision In re Queen’s University at Kingston, however, coupled with Rule 153 of the European Patent Convention (EPC) and proposed Rules of Procedure 287 and 288 for the Unified Patent Court (UPC) may offer compelling support to uniformly protect confidential, European legal communications from discovery without radically changing how U.S. federal courts have analyzed questions of foreign privilege in the past.
"The most well-known and carefully guarded privilege is the attorney-client privilege."1 It exists to "encourage full and frank communication" between counselor and client and "thereby promote broader public interests in the observance of law and administration of justice."2 The attorney-client privilege applies
(1) Where legal advice is sought (2) from a professional legal advisor in his capacity as such, (3) the communication relating to that purpose, (4) made in confidence (5) by the client [or attorney], (6) are at his instance permanently protected (7) from disclosure by himself or the legal advisor, (8) except if the privilege is waived.3
Regarding patent law, the Federal Circuit has stated that "[a] client has a reasonable expectation that all communications relating to 'obtaining legal advice on patentability and legal services in preparing a patent application' will be kept privileged."4 This is uncontroversial when it pertains to communications between a U.S. attorney admitted to practice law and a client. But until recently, U.S. district courts were split on whether communications between U.S. patent agents—non-lawyer professionals registered to prosecute patents before the U.S. Patent and Trademark Office (USPTO)—and their clients were privileged and immune from discovery.5 The Court in In re Queen’s University recently resolved that split, recognizing an independent U.S. patent agent-client privilege.6
While it appears that U.S. patent practitioner-client communications may be uniformly protected from discovery in litigation, identical protection for foreign patent practitioner-client communications is not a guarantee. To date, different district courts apply slightly different analyses that can lead to anomalous results. For example, in the 1970s case, Duplan Corp. v. Deering Milliken, Inc., the district court for the district of South Carolina interpreted the French Penal Code and held that communications from French patent agents were privileged.7 Over 20 years later, however, another district court interpreted the same French Penal Code and concluded that French patent agent communications were not privileged.8 This disconnect results from a highly fact-specific, two-part analysis used by U.S. district courts to determine whether foreign patent practitioner-client communications are privileged.
Choice of Law
Federal Rule of Evidence 501 governs privilege and provides that principles of common law apply to a claim of privilege.9 Analysis of the appropriate common law first requires considering "'choice of law' questions."10 A majority of courts apply the "touch base" test to determine whether the communication involves or "touches base" with U.S. or foreign law.11 In general, courts will "defer to the law of the country that has the 'predominant' or 'the most direct and compelling interest' in whether the challenged communications should remain confidential."12 The jurisdiction with the "most direct and compelling interest" is either "'the place where the allegedly privileged relationship was entered into' or 'the place in which that relationship was centered at the time communication was sent.'"13 U.S. law typically applies to communications concerning 'legal proceedings in the United States' or 'advice regarding American law,' whereas foreign privilege law typically governs communications relating to 'foreign legal proceeding[s] or foreign law.'"14 In the area of patent law, agent-client communications relating to the prosecution of foreign patent applications or legal advice on substantive foreign patent law typically are governed by the "'law of the foreign country in which the patent application is filed.'"15
Are the Communications Privileged?
Once a court has determined which law to apply, the court must then consider whether that law recognizes an attorney-client or other evidentiary privilege that protects foreign patent agent-client communications from discovery during litigation. The party invoking the foreign privilege has the burden to establish that under the foreign jurisdiction’s law the communication should be protected from discovery.16 Courts typically construe such a privilege narrowly, and all "'doubts should be resolved in favor of disclosure.'"17
While many European jurisdictions require patent professionals to maintain client communications in confidence, not all protect those communications from discovery as does the absolute attorney-client privilege afforded in the United States.18 For example, as highlighted by the Duplan and Bristol-Myers Squibb cases, French patent agents must maintain the secrecy of client confidences.19 However, if disclosure of those communications is required during a French judicial process, the French Penal Code exempts patent agents from any liability associated with such disclosure.20 The Bristol-Myers Squibb court contrasted that situation to the absolute immunity for attorney-client communications in the United States and held that French patent agents' communications were not privileged.21
Similarly, foreign law may not supply either the substantive or procedural law needed to protect foreign patent agent-client communications. For example, in In re Rivastigmine Patent Litigation, the district court concluded that Swiss law did not provide privilege protection for Swiss in-house patent attorneys and agents.22 Although the court noted that a law analogous to U.S. privilege law was likely unnecessary given the limited role of discovery in Swiss litigation, the court nonetheless refused to "imply privilege from discovery procedures where none exists."23 As clearly is demonstrated by these cases, different US district courts coupled with different foreign laws lead to different outcomes for IP practitioner-client communications in U.S. litigation.
While certain foreign patent practitioner-client communications are robustly protected no matter the court or two-part test adopted,24 communications in other jurisdictions do not fair as well.25 The irony, of course, is that in the latter jurisdictions, discovery analogous to the U.S. system does not exist, and it is unlikely that confidential IP practitioner-client communications would be required to be produced.26 Nevertheless, given the potential for disparate treatment depending on which foreign jurisdiction is at issue, IP stakeholders from around the world have demonstrated overwhelming support for universal protection of IP practitioner-client communications.
Back in 2008, the World Intellectual Property Organization’s (WIPO) Standing Committee on the Law of Patents (SPC) met to consider, among other topics, the issue of attorney-client privilege. Following the meeting, the Secretariat issued a preliminary study, acknowledging the unequal global treatment of privilege and the effects of such disparity on IP stakeholders.27 The SPC noted that a lack of uniform privilege discourages frank discussions between IP practitioners and their clients and may lead to waiver of privilege depending on how communications are treated in different jurisdictions, even if such communications would otherwise be protected from discovery.28 The SPC recommended various options for addressing the issue, including "a minimum standard privilege applicable to communications with IP advisers" that could be adopted by member states.29
WIPO’s Group B+ has extended the work of the SPC.30 The Group B+ committee composed of all members of WIPO’s Group B, EU member states, the European Commission, EPOrg member states, the European Patent Office (EPO), and South Korea was formed "to promote and facilitate progress on key issues under consideration" at WIPO.31 One such issue is attorney-client privilege. In October 2015 at a Plenary session, Group B+ reaffirmed its commitment to supporting improvements of the global patent system.32 At that meeting, various international stakeholders presented comments on the issue as well as progress made on the topic in various jurisdictions. While delegates from Spain and Canada both announced recent changes to their national laws, "which would provide privilege for communications with patent agents," and other delegates announced similar national efforts, "cross-border uncertainty was the main concern."33 Group B+ agreed to continue to work on harmonization efforts, issuing a questionnaire regarding "cross-border aspects of client/patent attorney privilege."34 Those efforts are on-going.
The USPTO also has taken a strong interest in this international issue. In late 2014, the USPTO launched an outreach initiative to seek input from IP stakeholders. In January 2015, the USPTO issued a Federal Register notice convening a roundtable discussion and invited public comments.35 Nineteen parties submitted written comments, including from domestic and international IP groups, as well as from individuals and companies engaged in global IP. As a result of that roundtable, the USPTO issued a summary document, identifying the policy issues created as a result of inconsistent application of privilege among different jurisdictions.36 Those stakeholders identified nine potential issues ranging from economic concerns to uncertainty for stakeholders to forum shopping and unfairly limiting patent agents' practices.37 That group proposed several solutions including U.S. federal legislation, rule changes, and/or international agreement.38 To date, Congress has not addressed this issue nor does any international treaty regulate the issue of privilege.39
The reality of a uniform, global solution may remain elusive. But here in the United States, the Federal Circuit’s recent In re Queen’s University decision strengthened protection for IP practitioner-client communications. There, the Federal Circuit recognized a U.S. patent agent privilege covering client communications with non-attorney patent agents in the course of agents’ authorized practice before the USPTO.40
During discovery in a patent infringement suit, Queen’s University asserted privilege over communications with its U.S. patent agents.41 Queen’s University’s opponent moved to compel the production of those documents, and the district court for the Eastern District of Texas granted the motion.42 The district court reasoned that because the U.S. patent agents were not attorneys, the communications were not protected by the attorney-client privilege and that no separate patent agent privileged existed.43 Queen’s University petitioned the Federal Circuit for a writ of mandamus directing the district court to withdraw its order compelling the production of the patent agent-client communications.44
The Federal Circuit granted Queen’s University’s petition and held that several factors outweighed the presumption against the recognition of new privileges. The Court reasoned that the privilege should be recognized in part because: (1) patent agents hold unique roles whose activities the Supreme Court has construed as constituting the practice of law; (2) Congress has authorized that practice; and (3) current realities of patent litigation support a patent agent-client privilege.45 That privilege, however, extends only to communications reasonably necessary and incident to prosecuting patents before the USPTO.46
Prior to this decision, there was a clear split among U.S. district courts as to whether U.S. patent agents' communications with their clients should be protected under the attorney-client privilege.47 Having resolved the split and identifying an independent patent agent-client privilege, this decision may pave a way for U.S. district court’s to recognize a foreign IP practitioner-client privilege. For example, the Federal Circuit relied on the "unique roles of patent agents" and Supreme Court precedent indicating that "patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself."48 IP stakeholders have similarly recognized that non-attorney IP practitioners provide legal advice and have practices akin to attorneys.49 In particular, WIPO acknowledged that patent law "is a unique field where legal understanding and technical/scientific understanding go hand in hand."50 Because not all attorneys have the requisite technology background, a separate profession for patent agents or IP advisers has arisen.51 Those practitioners "give advice and [ ] assist inventors and applicants to obtain and maintain patents."52 They also may assist a patentee "to maintain and enforce his right." Such tasks appear to be within the ambit of the practice of law that the Supreme Court specifically recognized and the Federal Circuit used as a basis to support a separate patent agent-client privilege.53
In addition, the Federal Circuit also relied on Congress' authorization of patent agents to practice before the USPTO. By analogy, European IP professionals are authorized to practice either before the EPO or within their own countries. Such professionals often are required to submit to extensive examinations to become registered European patent attorneys or patent agents in their native countries.54 Both the EPO and European countries have formal registration processes, and registered practitioners must comply with ethical obligations.55 Such requirements are comparable to those that the Federal Circuit cited in support of its patent agent-client privilege.56
Perhaps, the most compelling reason to recognize a European IP practitioner-client privilege based on In re Queen’s University is the Federal Circuit’s recognition that "[a] client has a reasonable expectation that all communications relating to 'obtaining legal advice on patentability and legal services in preparing a patent application' will be kept privileged."57 In the increasingly global landscape of IP protection, stakeholders consistently have recognized the need to be able to have frank discussions with their IP professionals to secure strong IP protection and effectively enforce those IP rights.58 To allow a U.S. patent agent-client privilege but not a similar European IP practitioner-client privilege undermines a global client’s ability to freely share information to secure strong European IP rights from the very practitioners who are best suited to assist in obtaining those rights. Thus, U.S. district courts could find a European IP practitioner-client privilege based on the same policy considerations undergirding the Federal Circuit’s analysis in In re Queen’s University.
Even absent the Federal Circuit’s nod to protection for registered U.S. patent practitioners, however, two European regulations may provide for a European IP practitioner-client privilege under the traditional two-part analysis.
Rule 153 of the EPC
The EPC was revised to provide for privileged communications between IP professionals and their clients. The French version, which entered into force on April 1, 2009, states:
(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 European59
This rule covers both independent patent practitioners and in-house IP professionals registered to practice before the EPO.60 Rule 153 seeks to immunize communications between IP professionals and their clients from discovery before the EPO, unless such privilege is expressly waived by the client. This mirrors the U.S. attorney-client privilege, where the client—and not the attorney—holds the privilege and can waive it.61 This rule encompasses communications that relate to the assessment of patentability of an invention, the preparation and prosecution of a European patent application, and any opinion relating to the validity, scope of protection, or infringement of a European patent or patent application.
In fact, Rule 153(1) draws its language from the definition of the evidentiary privilege in U.S. law as cited from Wigmore’s evidence in Bristol-Myers Squibb.62
Article 2 of the Regulation on discipline for professional representatives63 recites: "Professional secrecy. A professional representative shall be bound not to disclose information accepted by him in confidence in exercise of his duties, unless he is released from this obligation."
Again, this has been added to align more closely with the U.S. requirement that such communications should be of a confidential nature. The wording of the provisions makes it clear that only such communications subject to the representatives' obligation of secrecy are covered by the evidentiary privilege. It also should be noted that the list of documents in Rule 153(2) that are covered by the privilege is non-exhaustive.
Under the typical two-part analysis, Rule 153 EPC may likely provide protection for IP practitioner communications from discovery in the United States. Specifically, when considering the choice of law prong, a district court may likely find that EPO regulations govern in situations where the communications relate to the filing and prosecution of European patent applications. Applying that law, a district court may then conclude that not only do EPO regulations contain a disciplinary rule of secrecy, Rule 153 EPC also creates an evidentiary privilege similar to the U.S. attorney-client privilege. As a result, relying on Rule 153 EPC, a district court may conclude that EPO patent practitioner-client communications should be exempt from discovery in the United States.
These authors assert that Bristol-Myers Squibb may have come out differently had Rule 153 EPC been in force. There, the district court refused to rely on EPO regulations to establish an evidentiary privilege where French law did not.64 While that district court noted that EPO regulations required patent practitioners to maintain their client’s communications in confidence at the time, there was no provision that made those communications immune from discovery.65 Indeed, the EPO regulations contemplated that an EPO professional may be "'released from this obligation'" of secrecy.66 With the enactment of Rule 153 EPC, however, there is now a specific provision that creates an evidentiary privilege, and district courts should likewise honor the efforts of European IP stakeholders to protect their confidential communications with their IP professionals.
UPC Proposed Rules of Procedure 287 and 288
The Unified Patent Court (UPC), a system designed for centralized enforcement of a patent granted by the EPO, is imminent. With it comes various regulations, including Rules of Procedure 287 and 288 directed to attorney-client privilege and litigation privilege, respectively. Rule 287 states:
1. Where a client seeks advice from a lawyer or a patent attorney he has instructed in a professional capacity, whether in connection with proceedings before the Court or otherwise, then any confidential communication (whether written or oral) between them relating to the seeking or the provision of that advice is privileged from disclosure, whilst it remains confidential, in any proceedings before the Court or in arbitration or mediation proceedings before the Centre.
2. This privilege applies also to communications between a client and a lawyer or patent attorney employed by the client and instructed to act in a professional capacity, whether in connection with proceedings before the Court or otherwise.
3. This privilege extends to the work product of the lawyer or patent attorney (including communications between lawyers and/or patent attorneys employed in the same firm or entity or between lawyers and/or patent attorneys employed by the same client) and to any record of a privileged communication.
4. This privilege prevents the lawyer or patent attorney 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. For the purpose of Rules 287 and 288:
(a) the expression "lawyer" shall mean a person as defined in Rule 286.1 and any other person who is qualified to practise as a lawyer and to give legal advice under the law of the state where he practises and who is professionally instructed to give such advice.
(b) the expression "patent attorney" shall include a person who is recognised as eligible to give advice under the law of the state where he practises in relation to the protection of any invention or to the prosecution or litigation of any patent or patent application and is professionally consulted to give such advice.
7. The expression "patent attorney" shall also include a professional representative before the European Patent Office pursuant to Article 134 (1) EPC.
Rule 288 states:
Where a client, or a lawyer or patent attorney as specified in Rule 287.1, .2, .6 and .7 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, including proceedings before the European Patent Office, such communications shall be privileged from disclosure in the same way and to the same extent as provided for in Rule 287.
These Rules of Procedure were adopted by the UPC Preparatory Committee in October of last year.67 The privilege provisions are wide-reaching and apply to communications between a client and a lawyer employed by the client and instructed to act in a professional capacity, as well as between a client and a patent attorney (agent), including an in-house patent attorney. It also extends to the work product of lawyers and patent attorneys.
Throughout the drafting and consultation process stakeholders recommended that in the interest of certainty these rules should clarify that they can apply to advice from lawyers or patent attorneys (i.e., European IP practitioners).68 Further, this should be regardless of where the advice is given, in writing or orally, and regardless of the jurisdictional qualification of the lawyer or patent attorney, whether before the UPC "or otherwise."69 Consequently, the definition of lawyer and patent attorney opens up the ability for lawyers and patent attorneys outside the European Union, including in the United States, to claim privilege and not just in respect of proceedings before the UPC.
Further, Rule 288 provides a litigation privilege, similar to the work-product protection in the United States for documents prepared for litigation, including EPO oppositions.
Here again, these rules were included as part of the institution of the UPC to ensure that IP stakeholders can openly provide information to their patent practitioners in order to obtain solid legal advice from both lawyers and other IP practitioners, including European patent attorneys.
Just like Rule 153 EPC may provide protection for European IP practitioners' communications, Rules 287 and 288 may have a similar effect. Under any choice of law analysis of communications relating to European practice, a district court may likely consider Rules 287 and 288 to be applicable. In fact, Rule 287 generally encompasses not only communications relating to practice before the EPO and UPC, it also broadly encompasses other types of communications.70 In addition, these rules clearly describe an evidentiary privilege analogous to the U.S.'s attorney-client privilege. Thus, regardless whether a particular European country has a substantive or procedural law that creates an evidentiary privilege, proposed Rules 287 and 288 may suffice to protect such communications from disclosure in the United States because they cover lawyers in the traditional sense,71 patent attorneys "recognized as eligible to give advice under the law of the state where he practices,"72 and European patent attorneys registered to practice before the EPO.73 With such sweeping coverage, these authors assert that the French patent agent communications in Bristol-Myers Squibb and the in-house Swiss practitioner communications in In re Rivastigmine Patent Litigation may have been afforded protection in the United States had Rules 287 and 288 been in force at the time.
The Federal Circuit’s recent In re Queen’s University decision evinces a shift towards broader protection for IP practitioner-client communications. There the Federal Circuit noted that although not dispositive or "even legally persuasive," IP stakeholders' concerns regarding privilege are consistent with the independent US patent agent privilege it found.74 With the policy considerations driving that opinion, as well as Rule 153 EPC and the proposed UPC Rules of Procedure 287 and 288, IP stakeholders hold the tools to assert that European IP practitioner-client communications should be protected from discovery in U.S. litigation.
Endnotes
1 In re Queen’s Univ. at Kingston, No. 2015-145, 2016 WL 860311, at *5 (Fed. Cir. Mar. 7, 2016).
2 Upjohn Co. v. United States, 449 U.S. 383, 389 (1981).
3 8 John Henry Wigmore, Evidence in Trials at Common Law § 2292, at 554 (John T. McNaughton rev. ed. 1961).
4 Queen’s Univ., 2016 WL 860311, at *9 (quoting In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 806 (Fed. Cir. 2000)).
5 Id. at *3 n.1.
6 Id. at *13.
7 Duplan Corp. v. Deering Milliken Inc., 397 F. Supp. 1146, 1170 (D.S.C. 1974) ("Doctors, surgeons and other health officers, as well as chemists, midwives and all other persons who are depositories, by their condition or profession or by temporary or permanent duties, of secrets which are entrusted to them, who, except in cases where the law obliges or authorizes them to be informers, shall have revealed such secrets, shall be punished by imprisonment of one month to six months and by a fine of 500 to 3,000 francs.").
8 Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 188 F.R.D. 189, 200 (S.D.N.Y. 1999) (considering additional article of French Penal Code to conclude that French patent agent confidentiality requirement is not an evidentiary privilege).
9 Fed. R. Evid. 501; Astra Aktiebolag v. Andrx Pharm., Inc., 208 F.R.D. 92, 97 (S.D.N.Y.2002).
10 Astra, 208 F.R.D. at 97.
11 See Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 514, 520-522 (S.D.N.Y. 1992); Astra, 208 F.R.D. at 98; Gucci Am., Inc. v. Guess?, Inc., 271 F.R.D. 58, 64-65 (S.D.N.Y. 2010).
12 Cadence Pharm., Inc. v. Fresenius Kabi USA, LLC, 996 F. Supp. 2d 1015, 1019 (S.D. Cal. 2014) (citing Astra, 208 F.R.D. at 98 (citing Golden Trade, 143 F.R.D. at 522).
13 Astra, 208 F.R.D. at 98 (citations omitted).
14 Cadence Pharm., 996 F. Supp. 2d at 1019 (quoting Gucci, 271 F.R.D. at 65).
15 Golden Trade, 143 F.R.D. at 520-521 (citations omitted).
16 See id. at 523–524.
17 Cadence Pharm., 996 F. Supp. 2d at 1019-1020 (citing McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 256 (N.D. Ill. 2000)).
18 World Intellectual Property Organization Standing Committee on the Law of Patents, The Client-Attorney Privilege, SCP/13/4, ¶ 29 (Feb. 25, 2009); see also id. ¶ 59.
19 Bristol-Myers Squibb, 188 F.R.D. at 200 ("French industrial property counsel, like an attorney in the United States, has an obligation to keep secret confidential communications entrusted to him by his client."); Duplan, 397 F. Supp. at 1170 (finding Article 378 of the French Penal Code requires French patent agents to "preserve the secrecy of certain confidential communications from clients").
20 Bristol-Myers Squibb, 188 F.R.D. at 200.
21 Id.
22 In re Rivastigmine Patent Litig., 239 F.R.D. 351, 359 (S.D.N.Y. 2006).
23 Id.
24 Cadence Pharm., 996 F. Supp. 2d at 1025; Golden Trade, 143 F.R.D. at 524; Softview Computer Prods. Corp. v. Haworth, Inc., No. 97 CIV. 8815 KMWHBP, 2000 WL 351411, at *10 (S.D.N.Y. Mar. 31, 2000); Santrade, Ltd. v. Gen. Elec. Co., 150 F.R.D. 539, 546 (E.D.N.C. 1993); Astra, 208 F.R.D. at 100.
25 In re Rivastigmine Patent Litig., 239 F.R.D. at 359; Bristol-Myers Squibb, 188 F.R.D. at 200.
26 Rivastigmine, 239 F.R.D. at 359.
27 WIPO, supra n.18.
28 Id. ¶ 5.
29 Id. ¶ 65; see also id. ¶¶ 62-64.
30 Group B+, European Patent Office, https://www.epo.org/news-issues/issues/harmonisation/group-b-plus.html (last visited Apr. 26, 2016).
31 Id.
32 Group B+ Statement, European Patent Office, http://documents.epo.org/projects/babylon/eponet.nsf/0/9EF8B11CA78E51E8C1257E6D005706F4/$File/group_b+_statement_october_2015_en.pdf (last visited Apr. 26, 2016).
33 Group B+ Plenary, Meeting Report, B+/PL/11/20, ¶¶ 5, 6 (Oct. 6, 2015).
34 Group B+ Statement, supra n.32; Questionnaire Regarding Cross-Border Aspects of Client/ Patent Attorney Privilege, http://documents.epo.org/projects/babylon/eponet.nsf/0/9EF8B11CA78E51E8C1257E6D005706F4/$File/group_b+_CAP_Questionnaire_en.pdf (last visited Apr. 26, 2016).
35 Notice of Roundtable and Request for Comments on Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients, 80 Fed. Reg. 3953 (Jan. 26, 2015).
36 Summary of Roundtable and Written Comments: Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients, United States Patent and Trademark Office, http://www.uspto.gov/sites/default/files/documents/Summary%20of%20Privileged%20Communication%20Roundtable.pdf (last visited Apr. 26, 2016).
37 Id. at 4-12.
38 Id. at 8-10.
39 WIPO, supra n.18, ¶ 16.
40 Queen’s Univ., 2016 WL 860311, at *13.
41 Id. at *1.
42 Id.
43 Id.
44 Id.
45 Id. at *6.
46 Id. at *12.
47 Id. at *3 n.1.
48 Id. at *6-7.
49 WIPO, supra n.18, ¶¶ 46-53.
50 Id. ¶ 47.
51 Id.
52 Id.
53 Compare id., with Queen’s Univ., 2016 WL 860311, at *6 (quoting Sperry v. State of Fla. ex rel. Florida Bar, 373 U.S. 379, 383 (1963)).
54 Regulation on the European qualifying examination for professional representatives-Official Journal EPO 2/2014, http://www.epo.org/law-practice/legal-texts/official-journal/2014/etc/se2/2014-se2.pdf.
55 See, e.g., European Patent Institute "The Patent Profession in the EPC Contracting States," compare with Queen’s Univ., 2016 WL 860311, at *7.
56 Queen’s Univ., 2016 WL 860311, at *8-9, *11.
57 Id. at *9 (quoting In re Spalding, 203 F.3d at 806).
58 WIPO, supra n.18, ¶ 5; Summary of Roundtable and Written Comments, supra n.36 at 5.
59 Rule 153 EPC (2009).
60 WIPO, supra n.18 at ¶ 52.
61 In re Grand Jury Proceedings #5 Empanelled Jan. 28, 2004, 401 F.3d 247, 250 (4th Cir. 2005).
62 Basic Proposal for the Revision of the European Patent Convention (MR/2/00), Oct. 13, 2000, Munich, p.191.
63 Regulation on discipline for professional representatives (OJ EPO 1978, 91, OJ EPO 2008, 14), http://www.epo.org/law-practice/legal-texts/officialjournal/2014/etc/se1/p123.html.
64 Bristol-Myers Squibb, 188 F.R.D. at 201.
65 Id.
66 Id.
67 See https://www.unified-patent-court.org/news/unified-patent-court-rules-procedure (last visited Apr. 27, 2016).
68 UPC Rules of Procedure 16th Draft digest, https://www.unified-patent-court.org/sites/default/files/rop-digest.pdf.
69 UPC Rules of Procedure 17th Draft digest, https://www.unified-patent-court.org/sites/default/files/Digest_Legal_Group_17th_Draft_RoP.PDF.
70 Rules 287(1), 287(2) (applying to communications "whether in connection with proceedings before the Court or otherwise")(emphasis added).
71 Rule 287(6)(a).
72 Rule 287(6)(b).
73 Rule 287(7).
74 Queen’s Univ., 2016 WL 860311, at *9 n.4.
Reprinted with permission from the IP Litigator, published by Wolters Kluwer. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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