Academic journal article Santa Clara High Technology Law Journal

The Effect of International Comity on the Application of the Attorney-Client Privilege and Foreign Privilege Laws in U.S. Patent Litigation

Academic journal article Santa Clara High Technology Law Journal

The Effect of International Comity on the Application of the Attorney-Client Privilege and Foreign Privilege Laws in U.S. Patent Litigation

Article excerpt

Abstract

The attorney-client privilege is a testimonial privilege that allows clients to refuse to disclose, and to prevent others from disclosing, confidential communications with their attorneys that are made for the purpose of obtaining or providing legal advice. Both the Supreme Court and the Federal Circuit have ruled that the privilege applies in the context of patent prosecution. However, U.S. attorneys face considerable uncertainty when asserting the attorney-client privilege to protect confidential communications between clients and their foreign patent agents and attorneys. This uncertainty arises because U.S. courts largely decide privilege disputes pertaining to foreign patent prosecution by applying the law of the nation in which the foreign patent application was filed.

Following a brief introduction in Section I, Section II reviews the trend of applying the attorney-client privilege more broadly to attorney-client communications with U.S. patent attorneys and patent agents. Section III addresses the principles governing the assertion of the privilege to protect communications made in the course of foreign patent prosecution. Section IV concludes by explaining how the practitioner may benefit from recognizing the uncertainty that applying foreign privilege in this area of law may cause.

I. INTRODUCTION

The attorney-client privilege is a testimonial privilege that allows clients to refuse to disclose, and to prevent others from disclosing, confidential communications with their attorneys that are made for the purpose of obtaining or providing legal advice. (1) The privilege has long been a pillar of the United States legal system (2) and is widely viewed as necessary to promote full and frank discussions between attorneys and their clients. (3) In order to fulfill the purpose of furthering such candid communications, courts seek to apply the privilege with predictability, so that the attorney and client know which of their communications are protected and, conversely, which may be subject to compelled disclosure. (4)

In contrast with other areas of law, courts were slow to apply the attorney-client privilege to confidential communications between patent attorneys and their clients. Historically, the attorney-client privilege simply did not apply to patent prosecution because courts did not generally consider such work to be legal in nature. (5) The Supreme Court finally recognized in 1963 that preparing and prosecuting patent applications constitutes the practice of law, (6) thereby opening the door to the protection of confidential communications with patent attorneys under the attorney-client privilege. The Supreme Court's decision did not, however, immediately lead to the broad application of the privilege to patent prosecution, and years of debate ensued as to whether the privilege should protect communications with patent attorneys. (7) Knogo Corp. v. United States, (8) an influential decision issued in 1980, and In re Spalding Sports Worldwide, Inc., (9) a Federal Circuit decision that adopted much of Knogo's reasoning, largely settled this issue in favor of applying the privilege in the context of patent prosecution. Patent attorneys and their clients may now be reasonably confident that their confidential communications exchanged in furtherance of obtaining patent rights in the United States Patent and Trademark Office ("USPTO") may be protected by the attorney-client privilege.

U.S. practitioners, however, face considerable uncertainty when asserting the attorney-client privilege to protect confidential communications between clients and their foreign patent agents and attorneys. (10) This uncertainty arises because, as a matter of international comity, U.S. courts largely decide privilege disputes pertaining to foreign patent prosecution by applying the law of the nation in which the foreign patent application was filed. (11) Naturally, applying a patchwork of foreign privilege law leads to varying results in cases involving U. …

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