1. AIPLA Corporate Breakfast Session, October 23, 2014 PRIVILEGE IN (PARTS OF) EUROPE THOMAS BECHER (TBecher@HoffmannEitle.com)

2. Washington DC, October 23, 2014 CONTENTS 2 I. The Jurisdictions (to be presented) II.Overview (to be presented) III.More Detail (for future reference)

3. Washington DC, October 23, 2014 3 I. The Jurisdictions

4. Washington DC, October 23, 2014 EUROPE – THE JURISDICTIONS WE WILL COVER 4 FR DE IT ES UK CH BE NL

5. Washington DC, October 23, 2014 EUROPE – THE DIVIDING LINE 5

6. Washington DC, October 23, 2014 6 II.Overview

7. Washington DC, October 23, 2014 SOME GENERAL COMMENTS  There is a dividing line not only in the law, but also in the minds.  Awareness of privilege issues is generally present in the UK, but generally low on the continent.  Be aware of the exact professional background of your European counterpart:  Attorney-at-law/Lawyer, (Registered) Patent Attorney, (Registered) Patent Agent  Steve’s best practice tips will assist throughout Europe.  Keep legal advice and business advice separate.  Mark documents as and when needed.  Limit the list of recipients for, and the re-distribution of, your communications. 7 GENERAL

8. Washington DC, October 23, 2014 ON THE CLOSER SIDE OF THE DIVIDING LINE  UK approach broadly similar to US approach  Attorney/client privilege in the US is similar to legal advice privilege in the UK  Work product doctrine in the US is similar to litigation privilege in the UK  However, there are important differences  With regard to communications with third parties  With regard to disclosure of documents to third parties  With regard to the definition of the “client”. 8 THE UK – OVERVIEW

9. Washington DC, October 23, 2014 ON THE FARTHER SIDE OF THE DIVIDING LINE  Continental approach drastically different from US approach  Generally, there is no compulsory disclosure, so that there is also no privilege.  Obligation to maintain professional secrecy instead.  A difference was made between outside and in-house counsel (see ECJ Cases C-550/07 Akzo Nobel Chemicals et al. v. Commission of the European Communities and 155/79 AM & S Europe Ltd v. Commission of the European Communities).  From AM & S: legal advice must be requested and given for the purposes of the client’s rights of defense, by an independent lawyer.  From Akzo Nobel: The employment contract for in-house counsel may result in a lack of independence relative to employer; if in-house counsel also acts in another function, such as a competition law coordinator, commercial policy of employer and counsel will influence one another. 9 THE CONTINENT

10. Washington DC, October 23, 2014 10 EUROPE IN OVERVIEW SECRECY OBLIGATION / PRIVILEGE Outside Counsel (S.O. / Priv.)In-house (S.O. / Priv.) BEL: yes / yes; PA: yes ## / noL: yes / depends; PA: yes ## / no CHL: yes / --; PA: yes / --L: no / --; PA: no / -- DEL: yes / --; PA: yes / --L: no (likely) / --; PA: yes / -- ESL: yes* / --; PA: yes* / -- FRL: yes / --; RPA: no** / --L: no / --; RPA: no / -- ITL: yes # / --; PA: yes # / --L: no / --; PA: yes # / -- NLL: yes / --; PA: yes / -- UKBroadly similar to US – watch out for “client” & 3 rd party involvement L: Lawyer; PA: Patent Attorney/Agent; RPA: Registered Patent Agent *: client may lift secrecy obligation # : judge may overturn secrecy obligation **: legislation pending ## : cannot be invoked against court order

11. Washington DC, October 23, 2014 11 III.More Detail

12. Washington DC, October 23, 2014 LEGAL ADVICE PRIVILEGE (  ATTORNEY/CLIENT)  Does protect confidential communications between the lawyer and the client that are brought into existence for a primary purpose of giving or receiving legal advice.  “Legal advice” is construed broadly to include strategic and tactical matters in a legal context – “what should prudently and sensibly be done”.  “Legal advice” does not include business advice.  Privilege attaches to the document, so legal advice and e.g. business advice should not be mixed in the same document.  Does not protect communications between the client and third parties, even where the communications are for the purpose of giving or receiving legal advice. 12 THE UK – MORE DETAIL

13. Washington DC, October 23, 2014 LITIGATION PRIVILEGE (  WORK PRODUCT D.)  Protects confidential communications between the lawyer and the client, or with third parties, that are brought into existence for a primary purpose relating to existing or reasonably contemplated litigation.  The test of purpose is one of dominance, and not of exclusivity.  Further, the litigation must be more than a mere possibility; a general apprehension of future litigation is not enough.  The litigation giving rise to the privilege is not restricted to UK proceedings, and may be foreign proceedings. 13 THE UK – MORE DETAIL

14. Washington DC, October 23, 2014 WHO IS THE CLIENT?  In a large organisation, which individuals?  In the UK, the client is the group of employees tasked with communicating with external lawyers.  Other employees of the client are “third parties” for the purposes of privilege, so disclosures to them needs to be made without waiving privilege.  Even, for example, reporting to the Board of Directors should be done in confidence, either by individual indication or by standing instructions with in-house counsel. 14 THE UK – MORE DETAIL

15. Washington DC, October 23, 2014 WHO IS THE LAWYER (ATTORNEY)?  Outside:  Solicitors and barristers, and equivalent foreign lawyers.  Registered UK and European Patent Attorneys, but only in matters relating to the protection of an invention, design, technical information, or trade mark, or in relation to passing off.  In-house:  Employed solicitors or patent attorneys of the party, but only in so far as they are acting as a legal adviser and not, e.g. in an executive, managerial or business advisory capacity.  Foreign Counsel:  Legal Advice Privilege:Legally qualified foreign lawyers, or legally qualified employees, where the necessary relationship of lawyer and client exists.  Litigation Privilege: when litigation is contemplated or in progress, any third party, to the extent that the communication is created for the dominant purpose of the litigation. 15 THE UK – MORE DETAIL

16. Washington DC, October 23, 2014 THIRD PARTY INVOLVEMENT / WAIVER  Privilege is not automatically waived by disclosure to third parties.  Documents relating to the obtaining of legal advice or to actual or contemplated litigation should be marked and not redistributed.  If disclosures are made confidentially to a third party, who retains an obligation of confidence, privilege can be maintained (Kovel letters will likely work).  If disclosures are made confidentially internally, provided an obligation of confidence exists, privilege can be maintained.  However, wilful or negligent disclosure to any third party will amount to a waiver of privilege.  Communication of privileged documents publicly, or even to non-clients within an organisation, or referred to in open court, can result in inadvertent waiver of privilege. 16 THE UK – MORE DETAIL

17. Washington DC, October 23, 2014 DEPENDS ON THE PROFESSIONAL  Belgium distinguishes between Privilege and Secrecy Obligations.  Outside Attorney (avocat) – Privileged and secrecy obligation.  In-house Attorney (juriste d’entreprise) – Privilege depends, but secrecy obligation exists.  Patent Agent (outside or in-house) – no privilege, but secrecy obligation exists.  Secrecy obligation cannot be invoked against a court order. 17 BE = BELGIUM

18. Washington DC, October 23, 2014 DEPENDS ON THE PROFESSIONAL  No “privilege”, but professional secrecy obligation instead (same in the following countries).  Outside Counsel:  Both attorneys-at-law and patent attorneys (as of July 2011) have a secrecy obligation permitting to refuse production of documents or testimony.  In-house Counsel:  In-house not considered to be an attorney, secrecy obligation will likely not apply.  Draft legislation intending to introduce a professional secrecy for in-house counsel was explicitly turned down. 18 CH = SWITZERLAND

19. Washington DC, October 23, 2014 DEPENDS ON THE PROFESSIONAL  Three types of typical “IP professions”.  German Attorney-at-law, German “Patentanwalt” and European Patent attorney (both in-house or outside)  No decision from German courts (yet?) specifying that the Akzo Nobel decision applies to antitrust investigations only.  Thus, in-house can likely not refuse testimony and will have to produce documents.  Outside counsel of both German professions have full secrecy obligation.  EP qualification? Not clear. 19 DE = GERMANY

20. Washington DC, October 23, 2014 DEPENDS ON THE PROFESSIONAL  Any “non-professional” content (business) does not fall under the professional secrecy obligation.  For patent agents, technological content does.  In-house and outside counsel, attorney at law and registered patent attorneys, enjoy the same rights.  Client may lift the secrecy obligation.  Searches of law offices, as per court order, are to be overseen by the dean of the respective bar so that professional secrecy is maintained. 20 ES = SPAIN

21. Washington DC, October 23, 2014 DEPENDS ON THE PROFESSIONAL  Outside Counsel:  Lawyers (avocat à la cour, avocat au barreau) have full obligation to maintain professional secrecy, even contrary to a court order.  Registered patent agents do not have a fully equivalent status, reform is in the making; still, as of Feb 2004, Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer Inc., 188 F.R.D. 189, 200 (S.D.N.Y. 1999) ought to no longer apply.  Non-registered patent agents will likely still have to produce documents (see Commissariat a L‘Energie Atomique v. Samsung Elec. Co., 245 F.R.D. 177 (D. Del. 2007)).  In-house Counsel:  Akzo Nobel decision has not (yet?) been addressed for IP.  In-house not considered to be an attorney, secrecy obligation will likely not apply. 21 FR = FRANCE

22. Washington DC, October 23, 2014 DEPENDS ON THE PROFESSIONAL  Patent attorneys have a full professional secrecy obligation, both as in-house and outside counsel.  Attorneys-at-law/lawyers acting as outside counsel do as well.  In-house attorneys-at-law/lawyers do not fall under the statute for professional secrecy (art. 3(3) R.D., n.1578 of November 1933 – some railway and telecom companies excepted).  The secrecy obligation can be overturned by a magistrate (judge). 22 IT = ITALY

23. Washington DC, October 23, 2014 FULL PROFESSIONAL SECRECY OBLIGATION  The Supreme Court (see LJN BY6101, 12/02667 of March 15, 2013) declined to follow the ECJ findings in Akzo Nobel for all possible cases.  It limited the applicability of Akzo Nobel to antitrust investigations.  It upheld the validity of in-house legal privilege in the context of national legal proceedings.  Absolute secrecy obligation for In-house and Outside Counsel, patent agent or attorney-at-law/lawyer. 23 NL = THE NETHERLANDS

24. Washington DC, October 23, 2014 THANK YOU FOR YOUR ATTENTION WWW.HOFFMANNEITLE.COM 24