TWN
Info Service on Intellectual Property Issues (Jan14/09)
31 January 2014
Third World Network
Please
find below a news report on discussions that took place on client-attorney
privilege in WIPO.
Regards
Sangeeta Shashikant
Third World Network
WIPO: North pursues ‘soft law’ on client-attorney privilege, South
says ‘no’
Geneva, 31 Jan (Alexandra Bhattacharya) -- Developing countries are
resisting calls by developed countries for the WIPO Standing Committee
on the Law of Patents to develop non-binding standards on confidentiality
of communications between patent attorneys and their clients.
This came during the discussion on Wednesday on the agenda item of
client-attorney privilege.
The 20th session of the WIPO Standing Committee on the Law of Patents
(SCP) is meeting in Geneva from 27-31 January 2014.
Group B (composed of developed countries) has been persistently pushing
this topic forward in the SCP since the 12th SCP session (23-27 June
2008).
Group B contends that it is necessary for WIPO Member States to have
similar standards for client-attorney privilege and accordingly are
pushing for non-binding rules on the same at the international level.
[Client-attorney privilege concerns confidentiality of communications
between clients and their patent attorneys. A patent attorney is an
attorney who has the specialised qualifications necessary for representing
clients in obtaining patents and acting in all matters and procedures
relating to patent law and practice. The term includes those that
do not have legal qualifications (e.g. patent agents, advisors, in-house
attorneys).
[Client-attorney privilege accords patent attorneys the right to resist
requests from relevant authorities (e.g. courts, arbitration proceedings
and administrative bodies) to disclose advice rendered to their clients
(e.g. with regard to drafting of patent applications). However, this
privilege can adversely compromise transparency in the administration
of patents as confidentiality facilitates withholding of information
(e.g. on best mode of working the invention, prior art) from patent
offices and courts.]
[It is also an issue within the purview of private law and the regulation
of professional services and hence outside the mandate of WIPO. Moreover,
in many countries the law of privileges is a subject of the law of
evidence and not a substantive patent law issue.]
According to some sources, Group B is pushing this agenda on behalf
of the interests of international associations of patent attorneys
such as the International Federation of Intellectual Property Attorneys
(FICPI), the International Association for the Protection of Intellectual
Property (AIPPI), etc. These associations are not only demanding client-attorney
privilege at the national level but also at the international level
to ensure immunity for communications between a client and a foreign-based
patent attorney.
During the 20th SCP session, Group B members stressed on the need
for non-binding rules, as well as made oral proposals for further
studies, seminars and updating of the WIPO website on the issue of
client-attorney privilege.
The WIPO Secretariat also presented a study (SCP/20/9) on laws, practices
and experiences relating to client-attorney privilege based on information
received from Member States. This compilation has been prepared by
primarily drawing on previous documents on this issue that were discussed
in the past SCP sessions.
[Since the initiation of discussion on client-attorney privilege in
the SCP, the Secretariat has prepared the following: a preliminarystudy
(SCP/13/4) which was discussed and revised at the 13th, 14th and 15th
sessions of the SCP (SCP/14/2); a study on Confidentiality of Communications
between Clients and their Patent Advisors (SCP/16/4 Rev.); and an
information document on national and regional practices dealing with
cross-border aspects of confidentiality of communications between
clients and patent advisors, problems in relation to this issue, and
remedies available in countries and regions to solve these problems
(SCP/17/5), which was expanded to explain approaches to cross-border
issues and possible remedies identified in the area of confidentiality
of communications between clients and patent advisors (SCP/18/6).]
According to some observers, the Secretariat’s studies lack an objective
analysis and suffers from severe shortcomings. They fail to adequately
explore the adverse implications of having uniform legal standards
on client-attorney privilege including the consequences of such privileges
on transparency of the patent system, and consequently on the quality
of patents being granted.
Currently, said these observers, there is considerabledivergence of
judicial opinion, even in countries where client-attorney privilege
is recognised, regarding the extent and scope of the privilege and
there are significant problems with abuse of the current level of
privilege, despite strong professional codes of conduct in industrialised
countries. However, the analysis and suggestions contained in the
studies do not take this into account substantially.
DISCUSSION IN THE SCP ON CLIENT-ATTORNEY PRIVILEGE
India noted that the issue was of a substantive nature. It added that
harmonisation of client- attorney privileges would imply the harmonisation
of the disclosure requirement. In this context, it rejected any attempt
at cross-borderharmonisation.
Algeria, on behalf of the African Group, said that the Group had been
clear on “landing zones” and could not accept any work on guidelines,
whether in a hard or soft law approach. It added that it was up to
each country to decide on the issue, as it was very much a national
issue.
Pakistan said that the issue was marked by a widespread difference
in opinion, adding that it was further complicated as it fell within
the purview of private law.
Kenya said that it was still not convinced of the need for discussion
on the topic, noting that Kenyan law did not allow the practice of
foreign agents, and that a local agent needs to be appointed under
Kenyan law.
Belarus, on behalf of the Central European and Baltic States (CEBs),
supported the development of non-binding principles or guidelines
on the topic, adding that with a “soft law approach” it would not
be necessary to amend national legislation and thus should be acceptable
to all WIPO Member States.
Japan, on behalf of Group B, stressed that there was need for solutions
at the global level, and the SCP was the right place to deal with
this issue, adding that a soft law approach was the minimum solution
and would enhance predictability and transparency.
It also proposed that the Secretariat’s document SCP/20/9 be put on
the WIPO website and for a seminar to be held for countriesto share
their practical experiences.
Australia proposed a further study to look at the difficulties that
may apply with regard to client-attorney privilege and that the Secretariat
assist Member States to gather information to find out which elements
in national laws prevent reciprocal treatment of client-attorney privilege.
Canada called for a study on the practical problems encountered by
countries on this issue and how national legislation could be changed.
Switzerland supported a soft-law approach that defines general key
terms and minimum standards for client-attorney privilege.
The US, supporting Group B’s proposal, said that the discussion on
client-attorney privilege was “important and timely” considering the
number of patents filed in multiple jurisdictions.
Greece, on behalf of the EU, said that it remained convinced that
there was a need for convergence of client-attorney privilege norms
and that it would be beneficial for users of the patent system, adding
that the time was right to consider a concrete mechanism and a soft
law approach.
Algeria, on behalf of the Africa Group, requested for all the proposals
to be submitted in writing.
The Third World Network, an observer in the SCP, said that one of
the key reasons for granting patents was to facilitate the disclosure
of the invention in the public domain. Therefore, there should not
be any legal protection which would protect against full disclosure.
Client-attorney privilege will provide legal protection to patent
advisors, allowing them to refuse full disclosure to patent offices.
On the contrary, it added, there should be legal requirements on patent
attorneys to reveal all communications with regard to the patent application
to ensure that only patents of the highest standard are granted.
Informal consultations to ascertain the future work of the SCP including
on client-attorney privilege are on-going.
