A guide to the UPC and the UP - Flipbook - Page 479
proceedings before the Patent Mediation and Arbitration Centre 30 without the consent of the
party whose privilege it is. 31 The advice may be with regard to proceedings before the Court,
but it is not limited to that. For example, advice given by a patent attorney on the drafting and
prosecution of a patent application which later becomes the subject of litigation before the
Court should also be covered.
23-19 By making it clear that the lawyer or patent attorney must have been “instructed to act in a
professional capacity”, r.287(1) RoP suggests that the lawyer or patent attorney must have taken
an active role in the creation or exchange of legally privileged confidential information and it
will not be sufficient merely to copy the lawyer or patent attorney on communications in order
to render the information in them privileged.
23-20 For both attorney-client privilege and litigation privilege, the privilege is not limited to the advice
of lawyers and patent attorneys qualified to represent clients before the Court, 32 but rather it
deliberately extends to all qualified lawyers and patent attorneys including “anybody and
everybody who is relied upon as a patent attorney wherever”. 33 A lawyer is therefore defined
for this purpose as including:
“any … person who is qualified to practise as a lawyer and to give legal advice under the law
of the state where he practices and who is professionally instructed to give such advice” 34
and a patent attorney is one who is either:
– An EPA listed on the EPO register; 35 or
– A person recognised as eligible to give advice under the law of the state where they practice
in relation to the protection of any invention or to the prosecution or litigation of any patent
or patent application and is professionally consulted to give such advice. 36
23-21 Therefore, for example, the files of a US patent attorney who drafted the PCT-application that
eventually results in a European patent which is the subject of proceedings before the Court
should also be covered.
23-22 R.287(2) RoP clarifies that the advice and communications of in-house lawyers and patent
attorneys employed by the client and instructed to act in a professional capacity also attract
attorney-client privilege. 37 This is an important clarification, as the CJEU denied legal privilege
to in-house lawyers in competition law investigations in its judgment in Akzo Nobel v European
Commission. 38 Importantly, the communications of in-house lawyers and patent attorneys will
only attract privilege if they are made in their professional capacity. Any such communications
made in a commercial as opposed to legal professional capacity will not be so privileged.
Furthermore, it should be noted that Akzo Nobel will continue to apply to proceedings before
the Commission and national courts.
23-23 The privilege extends to the work product of the lawyer or patent attorney
(including communications between lawyers and/or patent attorneys employed in the same
firm or entity or between lawyers and patent attorneys employed by the same client) and to any
record of a privileged communication. 39 It is therefore not only the lawyer or patent attorney
whose files are privileged, but also those of the client who received the advice. Although not
30
31
32
33
34
35
36
37
38
39
See chapter 22 (Settlement and the Patent Mediation and Arbitration Centre).
art.48(5) UPCA and r.287(5) RoP.
See paragraph 23-01.
“Unified Patent Court, Oral Hearing on the Rules of Procedure, 26 November 2014, Academy of European Law, Trier,
Germany”, p.484.
r.287(6)(a) RoP.
r.287(7) RoP.
r.287(6)(b) RoP.
And also litigation privilege. See paragraphs 23-25 and 23-26.
(C-550/07), [2010] ECR I-08301.
r.287(3) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 469
