A guide to the UPC and the UP - Flipbook - Page 478
Removal from Register
23-14 A lawyer may apply to remove their name from the register of representatives if they retire or
cease to satisfy r.286 RoP for any reason. 23 An application may also be made by a
representative on behalf of one who has died. 24 There is no need for such a rule for patent
attorneys (but see r.16 EPLC for provisions dealing with removal from the Register). 25
Legal Privilege
23-15 Art.48(5) UPCA provides that representatives of the parties shall enjoy the rights and
immunities necessary for the independent exercise of their duties, including the privilege
from disclosure, in proceedings before the Court in respect of communications between a
representative and the party or any other person under the conditions laid down in the RoP.
The rules on legal privilege are found in rr.287 to 289 RoP. There are two types of privilege
recognised by the RoP: attorney-client privilege 26 and litigation privilege. 27 The rules on privilege
only apply to proceedings before the Court or in arbitration or mediation proceedings before
the Patent Mediation and Arbitration Centre; national courts will continue to apply their existing
rules on privilege.
23-16 The protection for documents and communications of the sort referred to in rr.287 and
288 RoP in the courts of the Contracting Member States varies widely. The common law
countries already have the concept of privilege because their discovery processes require it.
However, the civil law countries have varying forms of a concept of confidentiality and
protection from involuntary disclosure and testimony. The rules on privilege relating to the
Court are therefore the first practical example of supranational harmonisation in this area and
are the result of a project fostered by AIPPI, AIPLA and FICPI to establish an international treaty
to protect IP advisors’ legal privilege in proceedings abroad, which is also the subject of debate
within the WIPO meetings of the Group B+ countries. 28
23-17 It should be noted that there is a difference between the protection afforded to confidential
information and privileged information. Whether and how the Court protects confidential
information in relation to orders to produce evidence, orders to preserve evidence (saisies)
and orders for inspection is a matter of discretion. 29 In contrast, whether a document is
privileged from disclosure is a matter of law.
Attorney–client Privilege
23-18 The attorney-client privilege of r.287 RoP covers any confidential communication
(whether written or oral) relating to the seeking or provision of advice between a lawyer
or patent attorney instructed in a professional capacity and their client. Such communication
is protected from disclosure in proceedings before the Court or in arbitration or mediation
23
24
25
26
27
28
29
See paragraphs 23-06 and 23-07.
r.294 RoP.
See paragraph A23-25.
r.287 RoP.
r.288 RoP.
A colloquium organised by AIPPI, FICPI and AIPLA, held in Paris in June 2013 aimed to develop a model framework for the
international protection of confidentiality in IP professional advice. The draft treaty provided that “a communication made for
the purpose of, or in relation to, an intellectual property advisor providing advice” on or relating to intellectual property rights
to a client, shall be confidential to the client, and shall be protected from disclosure to third parties, unless it is or has been
made public with the authority of that client. Group B+ is an informal group of countries and intergovernmental organisations
established to progress key patent reform issues including harmonisation of cross-border aspects of client / patent
attorney privilege.
For example, art.58 UPCA states that “the Court may order that the collection and use of evidence in proceedings before it be
restricted or prohibited or that access to such evidence be restricted to specific persons”. See also arts 59 and 60 UPCA in
relation to protecting confidential information in relation to orders to produce evidence, saisies and orders for inspection.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 468
