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AIPLA President’s blog: Keeping secrets, well, secret

Jeffrey I. D. Lewis

As I have mentioned in prior postings, one of my tasks this year as AIPLA President is to represent U.S. intellectual property interests around the world. (By the way, I learned that people in some South American countries pronounce our country’s U.S.A. initials as a word, such as asking “Are you from Ooh-SAh?”) There are a number of issues that keep coming up in discussion, but the one I’d like to focus on today is “patent attorneys” and privilege.

Some of you may be asking why I put patent attorneys in quotes. The simple answer is that I did so because it means different things in different countries. We in Ooh-sah (see how much easier that is to say than the letters U.S.A.?) use the term to mean an attorney at law who also is admitted to practice before the U.S. Patent & Trademark Office, that is to say a patent agent who is an attorney at law. In many if not most other countries, however, the term is synonymous with a U.S.A. patent agent, i.e., a registered patent professional in that country who is NOT an attorney at law.

Of necessity, patent attorneys in those countries have limits on what they can and cannot do for clients, but those limits are not necessarily narrow. For instance, I am just leaving Israel where I led AIPLA’s IP in Israel Committee delegation, and I learned that an Israeli patent attorney can take a matter all the way to the Israeli Supreme Court even though that person is not an attorney at law.

As a US patent litigator, this issue becomes particularly confusing in the area of attorney-client privilege. Because privilege most often arises in the discovery context, and because the U.S. is one of the major countries (if not the primary country) for discovery, this sometimes is described as a U.S.-only-problem. (And courts in the U.S. have not handled the issue well or consistently, thereby causing further confusion.) However, it is clearly broader than just an American issue. Practitioners around the world have expressed concern and frustration about how to protect client confidences and communications relating to obtaining patents.

Some of the effects are naturally narrow, like how to deal with confidences during litigation. But they become broader too, ranging from the costs associated with patent prosecution (if an attorney at law must also be involved to protect confidences) to the availability of trained assistance for a client.

In an effort to standardize the issues across continents, AIPLA is co-sponsoring an international colloquium together with FICPI and AIPPI (recall that the US National Group of AIPPI is part of AIPLA). The attendees at this colloquium primarily will be representatives from various governments to work on an international privilege consensus or at least start to frame out a structure for international accord. Two confirmed attendees from the U.S., by the way, are Chief Judge Randall Rader of the Federal Circuit and USPTO General Counsel Bernard Knight.

Jeffrey ID LewisThis topic came to mind today for a few reasons. First, we have been discussing the issue with the Israeli Patent Commissioner and the head of IP Policy at the Israeli Ministry of Justice. Second, I will be meeting up with the IP in Europe Committee for a series of similar meetings with government officials from the UK, France, the Netherlands and Germany, and expect that this issue will be on the agenda for those meetings as well. And finally, as I was going to Ben Gurion Airport outside Tel Aviv this morning, I saw a sign with the Talmudic quote stating that, while you might not be able to finish a project, you also cannot avoid working on it.

I must admit that I pushed for the conference because I see privilege issues, or more appropriately the issues relating to the protection of client confidences, as an important problem requiring international resolution. And while I do not expect the problem to be resolved before my term of office ends in October, I did want to start the process along. I do hope that this colloquium will do just that.

Thanks for reading,



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