A guide to the UPC and the UP - Flipbook - Page 480
specifically stated, the privilege also extends to documents produced by trainee lawyers and
patent attorneys, paralegals and legal secretaries employed and supervised by the lawyer
or patent attorney.
23-24 Privilege not only prevents any documents or records from being disclosed, 40 but also prevents
the lawyer or patent attorney and their client from being questioned or examined about the
contents or nature of their communications. 41 Since privilege is a right granted to protect the
interests of the client, it is only the client who can expressly waive this right. 42 A lawyer or
patent attorney can only waive privilege in such communications with the agreement of their
client.
Litigation Privilege
23-25 Confidential communications of a lawyer or patent attorney instructed by a client in a
professional capacity with a third party for the purposes of obtaining information or evidence of
any nature for the purpose of or for use in any litigation is covered by litigation privilege in the
same way and to the same extent as provided for in relation to attorney-client privilege. 43 Such
communications by a client are similarly privileged irrespective of whether those
communications are instigated by an in-house lawyer or patent attorney. The communications
in question can be for the purpose of obtaining information or evidence for any legal
proceedings, not just those of the Court, but also for proceedings before the EPO.
The protected communications can be made during the course of proceedings or in
contemplation of such proceedings before they have commenced.
23-26 The same broad definitions of lawyer and patent attorney used in relation to attorney-client
privilege also apply to litigation privilege, the definition also extending to in-house lawyers
and patent attorneys acting in a professional capacity. 44
Additional Privileges and Immunities for Representatives
23-27 In the exclusive interests of the proper conduct of proceedings, r.289 RoP grants certain
privileges and immunities to authorised representatives themselves. Thus, papers and
documents in the possession of a representative relating to the proceedings before the Court
are exempt from search and seizure. 45 Furthermore, any allegedly infringing product or device
relating to the proceedings is exempt from both search and seizure when brought to the Court
for the purpose of the proceedings. 46 In the event of a conflict with the authorities, such as
customs or the police, the authorities may seal the papers, documents or allegedly infringing
product or device and immediately forward them to the Court where they will be kept for
inspection in the presence of the Registrar and of the person concerned. This means that
during a seizure order, if the defendant’s representative takes any products or documents
into his possession and claims that they are intended for the purpose of Court proceedings,
those documents and/or products can be sealed and sent to the Court. It seems that the Court
has exclusive jurisdiction to decide what should happen with the seized products or documents.
If a product or device has been seized because of its allegedly infringing nature but is claimed
40
41
42
43
44
45
46
Specific reference is made to rr.287 and 288 RoP in rr.190 and 191 RoP in relation to orders to produce evidence and orders
to communicate information. In contrast, there is no specific mention of the rules relating to privilege in relation to orders to
preserve evidence (saisies) and orders for inspection, although r.196(1) RoP para.2 refers to such orders being “subject to
appropriate terms of non-disclosure” which might possibly cover privilege in addition to confidential information. Whether it
does or not, the rules on privilege will apply.
r.287(4) RoP.
r.287(5) RoP.
r.288 RoP.
See paragraphs 23-20 to 23-22.
r.289(2)(a) RoP.
r.289(2)(b) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 470
