Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Expansion of privilege in India called for

The issue of protecting confidential client-IP advisor communications from forced disclosure on a global scale is complicated

In a panel discussion yesterday, Steven Garland of Smart & Biggar/Fetherstonhaugh said in reality there is a lack of coverage domestically in certain countries and a lack of coverage in cross-border scenarios. He said the solution may come from WIPO’s Standing Committee on the Law of Patents and a Group B+ proposed multilateral agreement.

Talking about India, Anand and Anand’s Pravin Anand said it is unfortunate that patent agents are not covered by privilege. “The need for privilege for intellectual property advisors stems from the fact there is increasing trade in IP rights and lawyers increasingly need technical advisers. Therefore the public interest dictates that what is available for lawyers should be available to patent agents,” he said.

Privilege issues throw up problems for multijurisdictional litigation. Anand noted that in Eli Lilly v Pfizer in Australia and Canada there was no privilege for communication with patent advisors. “This has led to forum shopping,” he said.

Reasons for the Indian government’s opposition to expansion of privilege include: it will keep out prior art leading to defective patents; privilege norms need to be set on socio-economic conditions; information can be protected through non-disclosure agreements; respecting the privileges of other countries violates India’s sovereignty; and TRIPS and the Paris Convention do not mandate such an expansion. Anand disagreed with these, noting among other things that making disclosure of prior art required by law would stop privilege being a problem and expanding privilege law would help India.

“There has been some effort since 2003 to try to change the law, to expand the definition of legal practitioner,” Anand said. He added there may be more hope with the new Indian government.

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making