Are your confidential documents confidential?

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Changes to Australian patent law in April will extend the client-patent attorney privilege regime, but in many cases the answer will still be ‘no’, as Stuart Irvine and James Cherry explain.

In April 2013 Australian patent law will change to more closely align patent attorney privilege with legal professional privilege. While this is a welcome change, and will hopefully rectify certain flaws of the current patent attorney privilege regime, claims of privilege are not impenetrable and there are circumstances where a competitor will be granted access to confidential documents.

The main purpose of this note is to alert readers to this possibility. While access to documents will not, of course, always be granted, working under the worst-case scenario that any documents generated could become accessible to a competitor is prudent. This can include documents such as notes made by an expert witness, notes made by patent attorneys or solicitors when dealing with expert witnesses, draft patent specifications, search results, and so forth.

The issues surrounding when privilege exists, and how privilege can be lost, are numerous, complex, and beyond the scope of this article.

The Risk

Australian law provides mechanisms (such as discovery and notices to produce documents) for one party to seek access to documents created by or in the possession of another party. To prevent such access being granted, a party can assert that the sought documents are privileged. Even privileged documents must be disclosed, however, if that privilege has been expressly or impliedly waived. At a very high level, privilege can be asserted on the basis that a document is confidential and was created for the dominant purpose of:

• a legal practitioner communicating legal advice to a client;
• a registered patent attorney providing intellectual property advice to a client; or
• providing a client with professional legal services relating to an Australian or overseas proceeding.

The concept of privilege will be familiar to many overseas practitioners – particularly US and UK lawyers and patent attorneys – but it is important to stress that questions of when privilege exists, and when privilege will be deemed to have been waived, may be answered differently in Australia compared to other jurisdictions. Two recent decisions of the Australian Federal Court serve as reminders that one should not automatically assume that privilege will act to prevent access to documents generated in the course of working with expert witnesses. In one of these decisions the Court acknowledged that not all documents generated by an expert would be privileged, and in the other the Court granted access to private notes taken by an expert when observing an experiment.

Where materials are generated in the course of working with an expert (whether for preparing postfiling data or evidence for use in contentious matters), the general position is:

• if an expert report is filed, the act of filing and relying upon the expert report may result in privilege being waived in any materials used by the expert to form their opinion. Such materials may include, for example, notes taken by patent attorneys/solicitors in expert meetings and draft expert reports.
• irrespective of whether an expert report or affidavit is filed, materials unilaterally generated by an expert (eg, working notes or the expert’s own drafts), and which are not in the nature of communications, may not attract privilege at all.

Optiver

In Optiver Australia Pty Ltd v Tibra Trading Pty Ltd (No 5), Tibra subpoenaed working notes from several of Optiver’s experts. The experts in question had not sworn any affidavits/reports in the dispute, which could lead one to reasonably expect that such notes would be privileged.

Although Optiver led general evidence that the experts’ notes were privileged, no specific evidence as to the nature of particular documents or document categories was provided. Absent specific evidence as to the precise nature of individual documents, the Court was unable to determine the purpose(s) of the documents sought and consequently refused to set the subpoenas aside.

The Court reiterated that the crucial issue in question was:

“… whether the dominant purpose that brings a document into existence is for communication to a lawyer for the purpose of legal advice or use in legal proceedings.”

With this in mind the Court accepted that many of the subpoenaed documents were likely to be privileged, but recognized that this was not axiomatic – citing established common law that:

1) documents generated unilaterally by an expert witness, such as working notes, field notes, and the witness’s own drafts of their report, do not attract privilege because they are not in the nature of, and would not expose, communications; and
2) privilege cannot be maintained in documents used by an expert to form an opinion or write a report irrespective of how the expert came by those documents.

Optiver was given an opportunity to put on further evidence in support of its privilege claims in relation to the subpoenaed documents. Optiver subsequently did so, and in the circumstances of the case the Court was satisfied that this further evidence was adequate to establish privilege in the subpoenaed documents. Where evidence from an expert is filed, therefore, access to materials (such as draft expert reports and notes taken in the course of interviews in order to produce such drafts) may be sought on the basis that they were influential in the formation of the opinion put….click here to subscribe and read the whole article

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Stuart Irvine, Senior Associate, Freehills Patent Attorneys

Stuart is a patent attorney and solicitor, and works across a diverse range of intellectual property matters. He has an in depth knowledge of both patents and registered designs, and is experienced in drafting, filing, and prosecuting patent and design applications in Australia and internationally. Stuart advises on complex validity and infringement matters, and works closely with clients in the strategic management of their intellectual property portfolios. Stuart takes pride in adopting a practical approach, always looking to the broader context of a scenario to ensure the best possible solution is developed.

James Cherry, Partner, Freehills Patent Attorneys

James advises owners of rights on how to best protect and extract value from their intellectual property and how to manage issues arising from relevant intellectual property of competitors. James has actively assisted both small and large organisations in their licensing, patent strategy and technology transfer negotiations worldwide for over 20 years. For Australian clients, international management of intellectual property rights is of paramount importance. James advises on strategic creation, management and exploitation of intellectual property rights worldwide.