A key committee focused on patent law at the World Intellectual Property Organization in seeking to establish its new work programme last week discussed a proposal to better protect the confidentiality of information passed between patent advisers and their clients. But the meeting ended in no decision, and the issue is expected to come up again when the patent committee next meets in October 2010.

The WIPO Standing Committee on the Law of Patents met from 25-29 January. The WIPO secretariat prepared a document, SCP/14/2, for the meeting, building on a previous document, SCP/13/4, that contained a preliminary study on the issue.

WIPO’s latest document provided information and analysis on client-attorney privilege and professional secrecy obligations in a range of countries: Australia, Brazil, Germany, Japan, Malaysia, New Zealand, Russia, South Africa, Switzerland, Thailand, United Kingdom and United States. The document found numerous differences, including a range of differences in public interest considerations even among countries with similar legal systems, it said.

Advice shared between professionals – like lawyers – and their clients, such as about new technologies, is typically protected from disclosure. But this protection does not often extend to advisers who are not practicing lawyers. An argument in favour of such protection is that “such privilege could encourage open and frank discussions and communications between patent advisers and clients,” WIPO said in its report.

In addition, there is “uncertainty” about treatment of confidential information across countries. WIPO found in a study that great legal certainty at the international level may improve the quality of advice given. But WIPO and proponents insisted they are not seeking harmonisation of national laws on the issue.

An objective of the patent system is to promote the dissemination of technological knowledge, WIPO notes, adding that “all information disclosed in patent applications prepared by patent advisers will be made available to the public at the time when the patent applications are published or patents are granted.” But some see prior knowledge of disclosure as defeating the purpose of the client-attorney privilege, it said.

WIPO distinguished between sharing of information about how an invention works and its advantages from, say, advice pertaining to the legal scope of protection, which it said “may be subject to disclosure.”

But developing countries are concerned about possible negative effects of strengthening these protections internationally. The Third World Network last week raised concerns about stronger protection of shared information. They said a fundamental principle of patent law is disclosure, and failure to disclose information is grounds for refusing or revoking a patent.

“Extension of client attorney privilege to patent advisers goes against this fundamental principle of disclosure,” they said in a statement to the committee. “Extension of the client-attorney privilege or the professional privilege to cover patent adviser would incapacitate the patent offices and courts in developing countries from safeguarding public interest following the granting patents.” It also might undermine flexibilities given to developing countries under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), they added.

Client-Attorney Treaty?

The International Chamber of Commerce has called for an international instrument at WIPO on client-attorney privilege in intellectual property matters. ICC said in a submission to the earlier WIPO paper (SCP/13/4) that courts in common-law countries such as the UK or US make an exception to discovery for communications between clients and local attorneys. But the privilege does not clearly apply to communications across borders, and “this is a major problem for litigants in intellectual property disputes because of their unusually international character and because of the close similarity between intellectual property laws of different countries.”

In 2008, WIPO cosponsored an event on this subject with International Association for the Protection of Intellectual Property (French acronym AIPPI), which strongly favours the extension of protection to non-lawyers.

Jochen Buehling and Michael Dowling of AIPPI held a side event to the SCP meeting on 27 January that addressed many of the question surrounding the issue. They circulated “working guidelines” to help protect clients from forcible disclosure of their IP professional advice. The guidelines suggest that local qualification be sufficient to apply protection across borders, so that someone qualified in their own country would be protected abroad.

AIPPI is working on behalf of its clients who expressed concern about the issue in a survey.

Switzerland told the WIPO committee meeting that it passed a new law that will extend professional secrecy laws to non-lawyers working on patents. The law, passed in March 2009 and entering into effect in January 2011, will guarantee the secrecy obligation for patent attorneys in two ways, the Swiss delegate said.

For the SCP, Switzerland said more information on how confidentiality of communications of patent advisers and their clients in one country is recognised in different jurisdictions would be of interest to all member states. It recommended the WIPO secretariat prepare a questionnaire for governments on the issue.

This echoed a suggestion made by WIPO in its report.

Note that the term “patent adviser” is used by WIPO to designate someone who provides advice on patents and is not a lawyer. The terms “patent agent” or “patent attorney” are used interchangeably with patent adviser in some countries.

Developing Country Concerns

It is unclear whether developing countries took a strong position on the client-attorney issue last week. But the Third World Network raised other concerns. For instance, they said, “Patent specification is a public document and therefore any related records, which are used for the preparation of the patent specification should also be available to public scrutiny in order to find verify the truth about the claims made in the specifications.”

“Considering the public policy concerns emerging out of patent law,” they said, “it is important to maintain absolute transparency around the granting of patents and litigation around patent.”

Third World Network said there is documentation of misuse of client-attorney privilege by corporate clients, such as by tobacco companies to “commission studies through attorneys and hush up studies in case of adverse content against the industry.”

It also can be used for “evergreening” of existing patents, they said, citing a case involving Nobelpharma, in which the inventors gave their Swedish patent agent a draft patent application, which included a citation to a book written by the inventor which described use of the invention more than two years earlier. The patent agent deleted all reference to the book, but the court found the deletion “gave the jury reasonable ground to find intent to defraud by the patentees,” they said.

“If this communication with the patent agent had been privileged,” it said, “the patent office and courts would never have known about this.”