Privilege

Refers to the confidential nature of the advice of a lawyer or patent agent. Legal advice, and the right to obtain it, is protected in most countries by making lawyer client communications confidential (known as Attorney-Client Privilege or Legal Professional Privilege). Also usually covered by privilege is the work of a lawyer for a client and the lawyer’s thought processes (known as work product privilege). Generally lawyers cannot be compelled to disclose privileged communications and are in most circumstances professionally prohibited from disclosing it without the client’s consent, while clients cannot be compelled to disclose such communications with their counsel.

Selective waiver of privilege is usually not allowed, that is to say a client voluntarily cannot disclose some of its lawyer’s advice, but conceal other information.  To give an example, if someone says “my lawyer told me to do it” as a defence, they may have to disclose all the advice the lawyer or lawyers gave (this is known as the ‘bubble bursting theory.’)  The exception in the U.S., usually subject to agreement, is the disclosure of Non-Liability Opinions.  However, to prevent contrived opinions and opinion shopping, it is usual to require a party relying on such an opinion to disclose all the materials the opinion writer relied upon and all opinions obtained.

Since the privilege rules are stronger and more extensive than in a typical Non-Disclosure Agreement, it is often regarded as unwise to require one’s own lawyer to sign an NDA or confidentiality agreement, as this may be regarded as detracting from, limiting, or otherwise reducing the scope of the lawyer’s professional obligations.

When two parties are on the same side of a legal dispute or court case and wish to cooperate with one another, especially in the United States, it is wise to execute a Joint Defense Agreement or JDA (also known as a Common Interest Agreement) before they start exchanging information. There are a number of exceptions to privilege including:

  • a lawyer may usually disclose privileged information in order to defend himself or herself from claims by the client (i.e., in response to suggestions of malpractice or poor representation);
  • where the lawyer is providing purely commercial advice (i.e., acting as a businessman), rather than legal advice, the communication is usually not privileged;
  • the co-conspirator rule, i.e., where a lawyer is a co-conspirator in a criminal or illegal action with the client, privilege usually does not attach; and
  • where the existence of a legal opinion is used to limit liability (e.g., a non-infringement opinion), privilege in the opinion will usually need to be waived, along with any related communications with the opinion writer.

Not all legal personel necessary or uniformly enjoy privilege in their own right.  For example in-house counsel privilege may be limited in general, or in particular areas, such as in the EU with respect to competition investigations.  Patent agents do not necessarily enjoy privilege in all jurisdictions, and privilege in some jurisdictions may sometime apply only to independent (i.e., self employed) patent agents and not to in-house patent agents.  Finally, as a general rule, if a lawyer or other legal professional does not enjoy privilege in their home jurisdicution, they usually cannot claim it in another.  Usually a lawyer needs to hold a current license or practicing certificate to enjoy privilege.