[A2k] TWN Info: North pursues soft law¹ on client-attorney privilege, South says No¹
sangeeta at twnetwork.org
Fri Jan 31 15:49:39 PST 2014
>>TWN Info Service on Intellectual Property Issues (Jan14/08)
>>31 January 2014
>>Third World Network
>>Please find below a news report on discussions that took place on
>>client-attorney privilege in WIPO.
>>Third World Network
>>WIPO: North pursues soft law¹ on client-attorney privilege, South says
>>Geneva, 31 Jan (Alexandra Bhattacharya) -- Developing countries are
>>resisting calls by developed countries for the WIPO Standing Committee
>>the Law of Patents to develop non-binding standards on confidentiality
>>communications between patent attorneys and their clients.
>>This came during the discussion on Wednesday on the agenda item of
>>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
>>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
>>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
>>[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.
>>best mode of working the invention, prior art) from patent offices and
>>[It is also an issue within the purview of private law and the
>>of professional services and hence outside the mandate of WIPO.
>>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
>>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
>>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
>>The WIPO Secretariat also presented a study (SCP/20/9) on laws,
>>and experiences relating to client-attorney privilege based on
>>received from Member States. This compilation has been prepared by
>>primarily drawing on previous documents on this issue that were
>>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
>>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
>>communications between clients and patent advisors (SCP/18/6).]
>>According to some observers, the Secretariat¹s 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
>>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
>>significant problems with abuse of the current level of privilege,
>>strong professional codes of conduct in industrialised countries.
>>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
>>of the disclosure requirement. In this context, it rejected any attempt
>>Algeria, on behalf of the African Group, said that the Group had been
>>clear on ³landing zones² 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 ³soft law approach² it would not be necessary
>>amend national legislation and thus should be acceptable to all WIPO
>>Japan, on behalf of Group B, stressed that there was need for solutions
>>the global level, and the SCP was the right place to deal with this
>>adding that a soft law approach was the minimum solution and would
>>predictability and transparency.
>>It also proposed that the Secretariat¹s document SCP/20/9 be put on the
>>WIPO website and for a seminar to be held for countriesto share their
>>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 B¹s proposal, said that the discussion on
>>client-attorney privilege was ³important and timely² 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
>>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
>>be submitted in writing.
>>The Third World Network, an observer in the SCP, said that one of the
>>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
>>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
>>Informal consultations to ascertain the future work of the SCP including
>>on client-attorney privilege are on-going.
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