It is widely recognized that protecting the confidentiality of professional advice from patent advisors* to their clients promotes frank and open communications necessary to high quality advice. Consequently, most countries, under both civil law and common law traditions, ensure confidentiality of such advice either through contractual arrangements between patent advisors and their clients, codes of conduct set by professional associations, or pursuant to laws or regulations. In some common law countries, the confidentiality of communications between the client and patent advisor is protected by a specific “privilege” against discovery, while in some civil law countries, a patent advisor might be entitled to the right to refuse to testify in court on a matter falling under the professional secrecy obligation.
As patent protection is increasingly international, cross-border issues of confidentiality of communications between clients and their patent advisors arise, raising the question of whether and to what extent confidentiality of communications between a client and his patent advisor should be maintained in court proceedings in other jurisdictions and how the confidentiality could be preserved beyond national borders. The SCP has been working on this issue, focusing on cross-border aspects of confidentiality of communications between clients and patent advisors.
*The term “patent advisor” is a general term, describing a person who is a professional representative for the purposes of patent-related matters, such as a “patent attorney” or “patent agent”. Depending on the national law, such advisor may be a qualified lawyer or non-lawyer.
SCP Working documents on the topic
- Report on the International Patent System (SCP/12/3 Rev.2)
- The Client-Attorney Privilege (SCP/13/4)
- The Client-Patent Advisor Privilege (SCP/14/2)
- Confidentiality of Communications between Clients and their Patent Advisors (SCP/16/4 Rev.)
- Information on Cross-border Aspects of Confidentiality of Communications Between Clients and Patent Advisors (SCP/17/5)
- Approaches and Possible Remedies to Cross-border Aspects of Confidentiality of Communications between Clients and Patent Advisors (SCP/18/6)
- Confidentiality of Communications between Clients and their Patent Advisors: Compilation of Laws, Practices and other Information (SCP/20/9)
- Summary of Document SCP/20/9 – Confidentiality of Communications between Clients and their Patent Advisors: Compilation of Laws, Practices and other Information (SCP/20/9 SUMMARY)
- Seminar on the Confidentiality of Advice from Patent Advisors (SCP/21). Presentations are available at SCP/21 under "Other Related Documents"
- Compilation of Court Cases With Respect to Client-Patent Advisor Privilege (SCP/25/4)
Other related information
- Conference on Client Privilege in Intellectual Property Professional Advice (organized by the World Intellectual Property Organization (WIPO) in cooperation with the International Association for the Protection of Intellectual Property (AIPPI), May 22 and 23, 2008, Geneva.)