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Friday, 13 June 2008

Attorney-client privilege and ethics: can you help?

IPKat team blogger Jeremy is suddenly finding that he is having to learn a lot about the privileged status of communications made between attorneys and their clients, in terms of both the law and the ethical considerations. This is because the International Trademark Association (INTA) is examining the parameters of this topic as a subject for the professors' panel at next year's 131st Meeting in Seattle.

Right: er, not THAT sort of privilege ...

Jeremy has learned that there is a great deal of trademark-specific (or at least IP-specific) law and practice in this area in the United States, but he has little familiarity with it in other jurisdictions and would welcome any guidance. So, if you are from outside the US and

(i) are interested in this subject and would be prepared to answer his questions, or (ii) are an academic who is currently doing research in this area, or is seriously contemplating doing so, or
(iii) can suggest any useful reading materials, case law etc,

please email Jeremy here, heading your email 'Privilege'. He will be delighted to hear from you.

6 comments:

Anonymous said...

Dear Jeremy,

There is a new development in this regard under the revised EPC. The new EPC contains a new Article 134a which for the first time, explicitly provides for the European Patent Institute (or the "Institute of Professional Representatives" as it is referred to in Article 134a). This is the governing body of the European patent profession (the equivalent the CIPA for British patent agents).

New Article 134a(1)(d) explicitly provides for confidentiality ("privilege from disclosure") for communications between a professional representative (EPA) and his client or any other person. The regulatory part of the EPC contains further new provisions in Rule 153, which also govern this subject. Rule 153, gives examples of the types of information which are so priveleged - most notably any initial assessment of the patentability of the invention given to client by the agent (since as you well know the despite the representative's best efforts, the client may still decide to go ahead with a patent filing, even when he has been advised that his chances are slim). However, in this case, this opinion will not prejudice his chances of success, since it will not enter the public arena and cannot be made available to the EPO or anyone else without the client's permission.

I imagine that further case law on these new statutory and regulatory provisions will emerge from the EPO Disciplinary Board of Appeal.

I hope this information was useful to you.

Mad_as_a_hatter

Jeremy said...

This is really helpful -- though it seems to me that I've got to learn a lot more about the attorney-client relationship in terms of non-office activities, eg infringement actions, licensing, due diligence issues. I had no idea this subject was so big, because it so rarely seems to get litigated or hit the headlines.

Jeremy said...

Not that I'm pedantic, but I've received several different spellings of the "p" word so far. It's P-R-I-V-I-L-E-G-E (I bet Dolly Parton could make a great song out of that!)

The correct spelling is important if you're using a search engine, since your results depend on which version you prefer.

Anonymous said...

Hello Jeremy,

Happy to help. As an aside -my favourite spelling song was D-I-V-O-R-C-E by the Big Yin himself (Billy Connolly).

Apologies for the unintentional typos. I have also done my fair share of online searching and am aware of the importance of spelling - even the differences between US and UK English cause problems.

Best regards,

Mad_as_a_hatter

MaxDrei said...

Good idea for a Paper Jeremy. The civil (Roman) law part of the world hasn't the foggiest idea what is meant by the concept of "privilege". The equitable common law idea, that you actually have to tell the other side even the stuff that hurts your case (unless one can exercise one's right to "privilege"), is beyond comprehension. Every lawyer, except those practising in the English common law part of the world, is thinking about the dodgy stuff in the cupboard "That's for me to know and you to find out, if you can, haha". Best tackle that black hole first, before you address "privilege".

Dave Musker said...

There is a good set of papers from a recent AIPPI/WIPO conference on privilege for patent attornseys here:

http://www.wipo.int/meetings/en/2008/aippi_ipap_ge/program.html

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