Patent & Trade Mark Attorney
Privilege
Competition Law
Association
Nicholas Fox
29 April 2013
© Simmons & Simmons LLP 2013. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.
Overview
 Historical background
 Scope of patent and trade mark attorney advice privilege
 Patent and trade mark attorney litigation privilege
 The European dimension
 Wider global view
© Simmons & Simmons LLP 2013. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.
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Historical background
 Moseley v The Victoria Rubber Co (1886) 3 RPC 351
 Civil Evidence Act 1968 s 15
 Patents Act 1977 s 104
 Dormeuil Trade Mark [1983] RPC 131
 Wilden Pump Engineering Co v Fusfeld [1985] FSR 159
© Simmons & Simmons LLP 2013. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.
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Patent attorney advice privilege – CDPA 1988 s280
280.— Privilege for communications with patent agents.
(1) This section applies to communications as to any matter relating to the protection of any
invention, design, technical information or trade mark, or as to any matter involving
passing off, and documents, material or information relating to any matter mentioned in
paragraph (a).
(2) Where a patent attorney acts for a client in relation to a matter mentioned in subsection (1), any
communication, document, material or information to which this section applies is privileged
from disclosure in like manner as if the patent attorney had at all material times been acting as
the client's solicitor.
(3) In subsection (2) “patent attorney” means —
(a) a registered patent attorney or a person who is on the European list,
(b) a partnership entitled to describe itself as a firm of patent attorneys or as a firm carrying on
the business of a European patent attorney, or
(ba) an unincorporated body (other than a partnership) entitled to describe itself as a patent
attorney, or
(c) a body corporate entitled to describe itself as a patent attorney or as a company carrying on
the business of a European patent attorney
© Simmons & Simmons LLP 2013. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.
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Trade mark attorney advice privilege – TMA 1994 s87
87.— Privilege for communications with registered trade mark agents.
(1) This section applies to– communications as to any matter relating to the protection of any
design or trade mark, or as to any matter involving passing off, and documents, material or
information relating to any matter mentioned in paragraph (a).
(2) Where a trade mark attorney acts for a client in relation to a matter mentioned in subsection (1),
any communication, document, material or information to which this section applies is privileged
from disclosure in like manner as if the trade mark attorney had at all material times been acting
as the client's solicitor.
(3) In subsection (2) “trade mark attorney” means —
(a) a registered trade mark attorney , or
(b) a partnership entitled to describe itself as a firm of registered trade mark attorneys, or
(c) any other unincorporated body or a body corporate entitled to describe itself as a registered
trade mark attorney.
© Simmons & Simmons LLP 2013. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.
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Litigation privilege
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IP attorneys litigation and advocacy rights
Intellectual Property Litigation Certificate
 A right to conduct appeals from and/or apply for judicial review in the
High Court of decisions of the Patent Office and other IP tribunals
 A right to conduct litigation in the Patents County Court; and any County
Court when the court is hearing a matter where Part 63 of the Civil
Procedure Rules apply
 A right of audience to appear before the Patents County Court and the
High Court on appeal from the decisions of the Patent Office and other
IP tribunals
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IP attorneys litigation and advocacy rights
Higher Courts Litigation Certificate
 A right of audience to appear before any County Court when the court is
hearing a matter where Part 63 of the Civil Procedure Rules apply
 A right to conduct litigation and a right of audience to appear in case
management conferences and in interim proceedings before the Patents
Court and any other Court of the High Court when the court is hearing a
matter where Part 63 of the Civil Procedure Rules apply.
Higher Courts Advocacy Certificate
 A right of audience before the High Court, the Court of Appeal and the
Supreme Court in proceedings which may be conducted by an attorney
holding a Higher Courts Litigation Certificate.
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Litigation privilege – LSA 2007 s190
190. — Legal professional privilege.
(1) Subsection (2) applies where an individual (“P”) who is not a barrister or
solicitor– provides advocacy services as an authorised person in
relation to the exercise of rights of audience, provides litigation services
as an authorised person in relation to the conduct of litigation,…
(2) Any communication, document, material or information relating to the
provision of the services in question is privileged from disclosure in like
manner as if P had at all material times been acting as P's client's
solicitor.
.
© Simmons & Simmons LLP 2013. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.
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The European Dimension
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European Patent Convention
Rule. 153. - Attorney-client evidentiary privilege
1) Where advice is sought from a professional representative in his capacity as
such, all communications between the professional representative and his
client or any other person, relating to that purpose and falling Article of the
Regulation on discipline for professional representatives, are permanently
privileged from disclosure in proceedings before the European Patent Office,
unless such privilege is expressly waived by the client.
Rule 153
Art.in133,
134, 134a
2)Attorney-client
Such privilege
from disclosure
shall apply,
particular,
to any communication
evidentiary
privilege[111]
or document relating to:
a) the assessment of the patentability of an invention;
b) the preparation or prosecution of a European patent application;
c) any opinion relating to the validity, scope of protection or infringement of a
European patent or a European patent application.
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Unified Patent Court
Rule 287 - Attorney-client privilege
1. Where a client seeks advice from a lawyer he has instructed in a
professional capacity, then any confidential communication (whether
written or oral) between them relating to the seeking or the provision of
that advice is permanently privileged from disclosure, whether in court
or arbitration proceedings of any nature or in the face of any
compulsory information gathering powers of any body.
2. This privilege applies to communications between a client and a lawyer
employed by the client and instructed to act in a professional capacity
and a client and a patent attorney or agent (including a patent attorney
or agent employed by the client) who is instructed in his professional
capacity to advise on patent matters;
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Unified Patent Court
3. This privilege extends to the work product of the lawyer or patent
attorney or agent (including communications between lawyers and/or
patent attorneys or agents employed in the same firm or entity or
between lawyers and/or patent attorneys or agents employed by the
same client) and to any record of a privileged communication.
4. This privilege prevents the lawyer or patent attorney or agent and his
client from being questioned or examined about the contents or nature
of their communications;
5. This privilege may be expressly waived by the client.
6. The expressions "patent attorney" and "patent agent" shall bear the
meanings given to them by the law of the contracting state to the
Agreement in which the individual practises
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Unified Patent Court
Rule 288 - Litigation privilege
1. Where a client, or a lawyer or patent attorney or agent instructed by a
client in a professional capacity, communicates confidentially with a
third party for the purposes of obtaining information or evidence of any
nature for the purpose of or for use in any proceedings reasonably
anticipated or pending before the Court, such communications shall be
permanently privileged from disclosure in the same way and to the
same extent as provided for in Rule 287.
.
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Conclusions
Wider Global View
 US discovery v UK disclosure
 National regulations
 Impact of the enforcement regulation
 WIPO initiatives
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simmons-simmons.com
elexica.com
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