Privilege Issues to Consider When
Interacting With Foreign Clients & Counsel
May 10, 2017
Leo Lam & Jay Rapaport
Attorney-Client Privileged │ A orney Work Product
Overview
• Attorney-client communications in the U.S. are generally privileged.
• Foreign countries often have different privilege rules.
• Privilege issues can be complicated when foreign implications arise.
-- Foreign entities (attorneys, parties, documents)
-- Foreign jurisdictions (or legal rights)
• Three main questions:
(1) What law applies?
(2) Does foreign law recognize privilege?
(3) What are best practices to minimize risk?
Attorney-Client Privileged │ A orney Work Product
Privilege law in U.S. proceedings
• Discovery in federal court is broad.
• Proportionality standards in Rule 15 remain largely untested.
• Main limit on discovery is privilege.
Attorney-Client Privileged │ A orney Work Product
Privilege claims under federal law
•
Three main types of privilege:
(1) Attorney-client
(2) Patent agent privilege
(3) Work product
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Attorney-client privilege
• Oldest common-law privilege
• Encourage frank communication between attorneys and clients
• Different formulations, but common elements:
(1) Communication
(2) Between privileged persons
(3) In confidence
(4) To obtain or provide legal assistance to client
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Patent-agent privilege
• Until recently, lower courts were divided on protections for
communications with non-attorney patent agents.
• Federal Circuit recognized a patent agent privilege just last year in In re
Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).
• Privilege covers communications made “in furtherance” of acts
constituting practice before PTO.
• Scope of privilege thus turns on PTO regulations.
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Work-product immunity
• Material prepared in anticipation of litigation or trial
• Qualified privilege: can be overcome on showing of substantial need
• Court must protect against disclosure of mental impressions,
conclusions, opinions, and legal theories
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Privilege claims involving foreign law
• Determining applicable privilege law in run-of-the-mill IP dispute is
generally simple.
• Most privilege claims are controlled by federal common law as
developed by regional circuit or Federal Circuit.
• But privilege analysis is more complex when case involves foreign
parties, documents, or legal rights.
Attorney-Client Privileged │ A orney Work Product
Determining the applicable law
• Touch base test: any communications “touching base with the United
States will be governed by the federal discovery rules while any
communications related to matters solely involving [a foreign country]
will be governed by the applicable foreign statute”
• Direct and compelling interest test: choice-of-law contacts analysis,
focusing on factors such as “the substance of the communication,”
“where the relationship was centered at the time of the
communication,” and “the needs of the international system”
• Comity plus function test: does foreign law extend privilege to patent
agents and, if so, what capacity was patent agent acting in?
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Foreign treatment of privilege
• Different treatment of in-house counsel
• Patent agents versus attorneys
• Privilege versus professional secrecy
• Scope of discovery
• EU Unified Patent Court
Attorney-Client Privileged │ A orney Work Product
Best-practice recommendations
• Educate foreign clients, attorneys, and in-house counsel about U.S.
discovery and privilege rules.
• Educate yourself about relevant foreign privilege and professional
secrecy laws; retain foreign counsel or experts
• Consider contractual choice-of-law and forum-selection clauses.
• Develop protocols adapted to foreign privilege laws.
• When in doubt, pick up the phone.
Thank you!
Privileged & Confidential Attorney Work Product
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