Gordon Harris: Okay. Let's get underway. Good day to you, wherever in the world you may be watching this event and belatedly, Happy World Intellectual Property Day for yesterday to you. My name is Gordon Harris and I will be your moderator today. In this series of webinars, Looking at the Life Cycle of a Smart Idea, we're covering every angle, wide or narrow. Today we're going to be delving into a detailed but crucially important area of IP and litigation. We're going to look at the issue of privilege. The question of what documents can be protected from disclosure to other parties in litigation by virtue of the their status as professional advice for otherwise. We'll be looking at when privilege arises and the consequences of not having it or, possibly worse still, losing it. The disclosure of documents in litigation is something that is largely, though not exclusively, a phenomenon of common law jurisdictions. However, that does not mean that there are not implications and equivalent issues in civil law countries. Our panel today contains representatives from both sides of that divide, with an emphasis on common law rules, and we have a guest speaker from the jurisdiction with the most wide ranging document discovery regime, the USA. So we're going to be starting by setting the scene, providing a useful reminder of what documents can be the subject of privilege, covering the position from the common law perspective and from the civil code perspective. I will then outline a scenario and that will become more relevant as we go around our panel asking what the position is in all their local jurisdictions. So first of all, without further ado, let's allow the panel to introduce themselves. First up from Canada, Michael.
Michael Crichton: Hello. My name is Michael Crichton. I'm a partner in Gowling WLG Ottawa, Canada office. My practice is focused primarily on patent litigation. I also represent clients and trade secret and copyright infringement matters.
Gordon: Thank you very much indeed and now our guest speaker from the USA, Hongsun.
Hongsun Yoon: Good morning. My name is Hongsun Yoon. I'm in-house counsel for LG Electronics USA. My primary roles are in patent litigation and patent licencing matters.
Gordon: Thanks very much. Now let's get over the Atlantic to the UK and Huw Evans.
Huw Evans: Well it's good afternoon for me. I'm Huw Evans and a partner based in our London office. Now I have the pleasure of heading up our UK patent litigation practice, which as the title suggests means I spend a good chunk of my life doing patent litigation.
Gordon: Moving a little further over the Channel this time to Paris. Deborah.
Deborah Fournet: Hi. My name is Deborah Fournet. I'm a counsel within the litigation team of Gowling WLG Paris office.
Gordon: Thanks very much. We will continue our Eastward progress and land this time in Dubai with Jon Parker.
Jon Parker: Hello. My name is Jon Parker. I'm a partner in Gowling WLG Dubai office where I head the IP department for the Middle East and North Africa. We handle contentious and non-contentious intellectual property proceedings in the UAE and throughout the Middle East region.
Gordon: Thanks very much and finally, all the way to China, where we have Ivy waiting for us. Ivy.
Ivy Liang: Hi. Good day all. I'm Ivy Liang. Before joining Gowling I used to be an IP judge in China and have worked in the judiciary for more than 16 years. I'm now handling IP and postponement matters and based in Guangzhou, China.
Gordon: Right. Thanks very much indeed. So there we have it. A truly international panel from all around the world. Thank you very much indeed to you all. Huw, would you start by providing us with a short reminder of what we mean by privilege and what is the position from the common law perspective?
Huw: Okay, thank you, Gordon. As you said a feature of litigation in common law jurisdictions, both civil and criminal, is that parties are obliged to disclose to each other documents that they have or control, which may be relevant to an issue in the case. Now documents here is given a very broad definition which include electronic documents. Even a text or SMS but these days we are most often concerned with emails. Now, the boards determining whether something is relevant is not will vary country by country but in general a document would need to be disclosed if say it either harms or helps a party's case. The process under which copies of relevant documents are produced is commonly known as discovery but in the UK these days we now call it disclosure. The purpose behind discovery or disclosure is one of fairness, and to avoid trial by ambush, and the process itself takes different forms in different jurisdictions and can itself lead to satellite litigation determining issues of what should or should not be disclosed. One often hears of this, particularly say in the US, and also in the US the discovery process there is often accompanied by deposition. So it tends to be much more involved. I know Hongsun is going to touch on some of the aspects of the US later on. Now while the discovery process itself has its footing based in fairness it would seem pretty unfair if a party had to disclose its legal advice. This gives rise to the concept of privilege, where certain documents will be privileged from production. In this regard we commonly think of privilege being principally afforded to confidential communications between a lawyer and their clients and privilege here is something which belongs to the client. When speaking of privilege we are generally referring to two types of privilege. Legal advice privilege and litigation privilege but there is a third form of privilege and this is settlement privilege. Now settlement privilege relates to communications and documents exchanged during party settlement negotiations and the existence of privilege here is to help promote good faith and open negotiations between the parties, hoping to lead to settlement. The privilege applies regardless of whether a settlement is actually reached. The privilege here is for the benefit of both parties and cannot be waived by either one of them unilaterally and prevents one party relying on an evidence, factual admissions, which were made during the negotiations. I'm not going to say anything more on settlement privilege now. It is not going to be the focus of the discussion this afternoon.
So coming back to legal advice privilege and litigation privilege. Legal advice privilege applies to confidential communications between the lawyer and a client, made for the dominant purpose of giving or receiving legal advice. It will also apply to the preparatory materials in respect of this advice. But there must be a lawyer and a client present in the communications. So we need to know what we mean by a lawyer. We will come back to that later and in particular we'll be wanting to look at the extent to which this can include both external and in-house lawyers, or foreign lawyers or even patent attorneys. For now though I just want to laydown a marker. That it's very important that one needs to consider who meets the criteria of lawyer. Of course we also need to know who meets the criteria of who a client is. Here generally a client will be individuals who are authorized to give instructions or receive advice from a lawyer. So in a nutshell that's legal advice privilege.
Litigation privilege. Now this will capture legal advice for the litigation but also applies to confidential communications between a client or lawyer on the one hand and a third party on the other hand. Where those communications are created for the dominant purpose of the litigation in process or in reasonable contemplation. For both types of privilege the dominant purpose is critical but because litigation privilege can cover client communications with third parties, including non-lawyers, it has the potential to protect wider categories of documents than just legal advice privilege on its own. Litigation privilege, as to the legal advice privilege, but the distinction between the two types can be important since very often we find that parties often take less care with communications before litigation is contemplated. In reality the fact is once the litigation is contemplated lawyers are invariably involved and the lawyers, if doing their job properly, will put in place protocols to ensure privilege is obtained where appropriate on new documents created and maintained in relation to this past privilege documents. For this afternoon though we'll be focusing on the legal advice given at the earliest stage. When the litigations have not been in place or the protocols and it is relation to this where we see issues commonly arise when the litigation then starts.
Gordon: Thanks very much indeed, Huw. We're going to take it as read that Canada and the USA, as common law countries, operate on a broadly similar basis to that. So now I'd like to hear from a civil code perspective. Deborah, in France do we have any concept of discovery or disclosure and to what extent communications with lawyers protected from production in the course of litigation?
Deborah: Thank you, Gordon. While in France there is no discovery as such. I mean, there is no obligation for parties to a law suit to communicate all documents relevant to the case to the other party and to the court. I would say that communication by the party is guided by their own interests. In some cases, a party can be forced to disclose a document, but it is if the opposing party obtains an order from the court to that end. Let's say that I have been sued by my competitor. I have no obligation to disclose a document which is prejudicial to my case. But if the plaintiff knows that I am in possession of this document it can request the court to order me to disclose it. However, any document which is a correspondence between a lawyer and his client is privileged. French law protects communication between a lawyer and his client as well as communication between lawyers. To make it short, attorney/client privilege only applies to private practitioner who are registered to the Bar. Here people who have to ... before the court. Communication with in-house are not privileged but I guess we'll address that later. What I need to say is that when the privilege applies, communication are fully protected from production in litigation and disclosure to third parties and the privilege applies to all documents and communication exchange between the lawyer and his clients, regardless of the medium, whether it's physical or electronic. You should also know that it applies to advice or defense in all proceeding whether civil, administrative, commercial or criminal.
Gordon: Thanks very much indeed, Deborah. That's very comprehensive. Right, off to the UAE now. Jon, what is the position in the Middle East?
Jon: Thank you, Gordon, Well generally the position here is very similar to the French system that we just heard described by Deborah, in that there is no disclosure, but there are very strong confidentiality provisions regarding correspondence between lawyer and client. This covers all correspondence, and not just legal advice, but any correspondence between the client and the lawyer. Disclosure by an attorney is only permissible in very limited circumstances, without the express permission of the client. So the confidentiality rests with the client. That said, there are two common law based legal jurisdictions within the UAE, both of which are free zones. The Dubai International Financial Center and the Abu Dhabi global markets. These have their own court systems which stem from common law. Again, these have the same confidentiality provisions as the Federal law so all correspondence between a lawyer and the client is confidential, irrespective of whether it's containing legal advice or not. But there are privilege provisions. So in both systems it is possible for a rights holder, or the client, to be able to refuse to allow disclosure of certain documents. It's likely that the courts will rely on English law when considering privilege. As I touched on earlier, both systems are effectively based around English law. These two free zones are both taking significant steps in pushing the UAEs innovation program and trying to attract companies in particular who operate in FINTECH or in or around crypto assets, which is building fast, a regime that's building fast here. So for companies, particularly operating in those areas who would be setting up an ADGM or DIFC, it's something to be aware of as the risk of disclosure and privilege which may differ slightly to the onshore Federal courts position. So in summary, in the UAE there are very broad confidentiality protections to client communications but there are these two legal jurisdictions where disclosure can be sought, but the entity can refuse to disclose any such documents, if it so wishes.
Gordon: Thanks very much indeed, Jon. That is very interesting indeed. Now, let's look at China. Ivy, I think you might have our first big surprise of the day waiting for us.
Ivy: Thanks, Gordon. I do have a surprise for all. So speaking of discovery, it might be a surprise to many that in China there indeed exists some rules close to the concept of discovery in the common law jurisdictions. For example, China civil procedure law provides that when a documentary evidence is known to be under the control of the other party, the party who bears the burden of truth, can apply for the court's order for requiring the other party to disclose and submit the evidence to the courts. These rules are more similar to the discovery mentioned by Huw earlier, but the power for granting such order of evidence disclosure is vested in the courts. In other words, the court has full discretion to refuse the application for disclosure of the evidence if the court considers that this evidence is irrelevant to the case. For privilege, it may be a relatively unfamiliar concept to lawyers and companies in China. Chinese law do not provide any gateway for the parties and lawyers to legally exclude relevant evidence on the grounds of legal advice privilege and litigation privilege. For example, when the court order of evidence disclosure is in place, parties in litigation cannot invoke the privilege to exclude the power of the court to get access to confidential communications between lawyers and clients. With that said, the China's lawyer's law indeed provides that attorneys must protect the confidentiality of their client's private information and if they are aware of any of their clients trade secrets, they must also protect them. So at face value, an attorney in China is accountable for protecting the client's information, however, the fact is that the civil and administrative and criminal procedural laws do not exempt attorneys from being forced to disclose the information in a judicial action. So a court can order an attorney to testify about client's private information or trade secrets in a judicial proceeding. So in a nutshell from the litigation perspective, like the UAE and in France, we do not have a discovery in China but some rules similar to discovery. Although some laws provide for the duty of confidentiality for lawyers, the fact is that for a long time there has been no equivalent concept of privilege in Chinese laws, and the confidential communications between lawyers and clients and just very limited privilege in practice.
Gordon: Thanks very much indeed, Ivy, and that's a very interesting angle in one of the fastest growing litigation jurisdictions in the world, and interesting to hear the nuanced differences across so many jurisdictions there and you begin to get a picture of some of the issues that might arise in multi-national litigation, where privilege may exist in some places but not others. We'll come back to that later. So with that background, let's now put this into the context of scenario to see how the practice in a different jurisdiction might apply. So imagine a startup company. Let's just call it X, which for now we will say is based in the United Kingdom. Company X conducts research into new and improved silicon compounds for multiple uses in the technology sector, such as mobile phone screens and medical devices. This is a very crowded field. Jackson, the company's in-house patent attorney, who is a qualified European patent attorney, is very busy looking into freedom to operate issues, the patentability of the research that is going on in the company. He's pretty much one man in-house legal team. He's often called upon to answer legal questions from the rest of the company. Company X has also been negotiating licencing deals, both for technology in and technology out, and Jackson has been advising the business on the licencing process and for documents required. So let me first of all pick this up with Huw. It seems that Jackson is giving a lot of legal advice to his employer, Company X. Say one of X's patents is subsequently challenged or X is sued for infringement in a case where Jackson has given freedom to operate advice, or even one of the licencing deals has gone wrong. Will his communications, within the company, be privileged from production in a subsequent UK litigation?
Huw: Thanks, Gordon. Well, I'm going to give you a lawyer's answer first and that's a sort of yes and no. But if we look at all the issues that you mentioned upon which Jackson is giving legal advice, it, if those were in communications from the lawyer then we would say they most likely going to be afforded legal advice privilege. Now I say this based on an assumption those communications would have been confidential and also for the dominant purpose of giving legal advice. The first problem we have here is that Jackson will not be considered by the English courts to be a lawyer. The courts have made it very clear that the term lawyer will be construed narrowly, however, fortunately for us the story does not end there and by statutes certain communications between a patent attorney and their client may attract legal advice privilege. The minimum provision here is section 280 of our Copyright Designs and Patents Act. But under those provisions not all patent agents are the same and the provision will only benefit UK patent attorneys and European patent attorneys. So here it sounds like we're okay with Jackson. But the type of legal advice covered is limited and must only be for any matter relating to the protection of any invention. Now, quite plainly this is going to cover the advice in relation to the prosecution of X's own patents and inventions, but it's not all together clear how far that concept of protection of any invention goes. It may not cover, for example, advice relating to trade secrets, licencing of say know-how, or even perhaps freedom to operate analysis. Michael's going to pick up on this in a bit where there has been some judicial guidance in Canada in relation to the meaning of similar language they have in their statutes. Now, in relation to Company X, plainly we're going to want to argue that the protection of any invention should cover Jackson's own freedom to operate work because, in essence, it is in relation to the exploitation of X's own innovations with regard to another competing invention and it would also seem pretty unfair if communications would not get privilege, particularly bearing in mind patent attorneys are going to be very familiar with the law on validity and infringement. Within the UK patent attorneys have to pass separate examinations on validity and infringement so very they're going to be more qualified than many non-specialist lawyers. So, to date though I would just add a couple of things, is that Jackson's advice has been without the thought of actual litigation. Now if there had been litigation underway, and Jackson's work was in relation to that, then that work may well have got litigation privilege. I would also add that under our Legal Services Act, certain UK patent attorneys automatically get litigation privilege for their advice in relation to the litigation, if they are providing litigation services. But for that they do also need to obtain a further qualification giving them a litigation certificate.
Gordon: Thanks very much indeed, Huw. Okay, just before you go, what if Jackson had been a UK solicitor?
Huw: A UK solicitor is a lawyer and so that would mean that the communications would have privilege, again on the basis that the dominant purpose was for legal advice and they were confidential. I would add though that it makes no difference to the English court whether the lawyer was in-house or external. So it doesn't matter that Jackson would have been in-house. Indeed, also the definition of a lawyer is enough to cover a foreign lawyer as well. All that's necessary is that the lawyer is a qualified lawyer. The can be contrasted with the definition of a patent attorney which is expressly limited to a UK patent attorney or a European patent attorney. Although as I explained, once litigation is underway the communications from the patent attorney may be covered by litigation privilege.
Gordon: Thanks very much indeed. Now, let's go off to Canada. Michael, take that scenario and now assume that Company X is in Canada, and that Jackson is a Canadian patent agent. Would the same rules apply?
Michael: From the perspective of Canada, the situation that Huw has described in the UK has some similarities to the situation in Canada. So assuming Jackson is a non-lawyer Canadian patent agent, then client/agent communications are privileged provided they meet two statutory requirements. First, they must be confidential and second, they must be made for the purpose of seeking or giving advice in relation to the protection of an invention. Now, these statutory requirements are relatively new so we have very little case law interpreting them. In fact, we really only have one case and that one case dealt with a narrow situation, whether certain technology a client was exploring was covered by third party patents. The court ultimately concluded that advice regarding whether something is covered by a third party patent is essentially an infringement opinion. This is in contract to advice for the protection of an invention and, as a result, the advice in that case did not enjoy client/agent privilege. Returning to Jackson's situation, in Canada there is a real risk that a non-lawyer patent agent his freedom to operate communications may be found to not be privileged, based on the current state of the law in Canada. As for things like licencing advice or other types of advice, we've yet to receive any guidance from our courts. So depending on the facts of a case, privilege could potentially be argued but it could also be a challenging argument in non-specific circumstances. A final quick point I'll just make is that in Canada many patent agents are also lawyers. In the case of Canadian patent agent lawyers, there will certainly be lawyer/client privilege with respect to all confidential communications that involve legal advice. So I would say that the takeaway for Canada is that if you involve a lawyer, your scope of privilege protection will be broader.
Gordon: Thanks very much indeed. Now, Michael I asked you to take the scenario and assume that everyone was based in Canada. Can we just go back to the original scenario here where Company X is actually in the UK and Jackson is a European patent attorney. If there was subsequently patent litigation in Canada, where the communications between Jackson and his internal client were relevant, would these benefit from privilege?
Michael: The short answer is basically yes. Canadian law does recognize and uphold patent agent privilege with respect to foreign patent agents communications, provided that two conditions are met. First, the communication between the foreign patent agent and their client must be privileged under the laws of their home country and, second, the communication must also be one that would meet the threshold for patent agent privilege in Canada, under the standard that I just described a moment ago. That is the communication must be confidential and related to the protection of an invention. So these two conditions are applicable for any foreign patent agent to be privileged in Canada. So they could be a foreign patent agent in the UK, France, China or elsewhere.
Gordon: Excellent, and last question for you, what if Jackson had been a UK solicitor? Would the position in Canada be any different?
Michael: Well if Jackson were a UK solicitor, he should have a relatively easy time with the upholding of solicitor/client privilege in Canada. Canadian courts will generally not analyze UK or other foreign law to determine whether a foreign lawyer's communications are protected by privilege in that foreign jurisdiction. Instead, Canadian courts will generally uphold claims of privilege between foreign lawyers and their clients, but I will say this, the communications must involve actual lawyers. There have been some instances in Canada where privilege was asserted but the court rejected the assertion where the foreign communication did not involve, or was not supervised, by an actual lawyer.
Gordon: Thanks very much indeed. Right. Now, let us turn to the country where the consequences of lost privilege are probably the most serious because of the wide ranging disclosure obligations, and that's the USA. If we go back to the scenario now and let us consider that Company X is a US company and that Jackson is a US patent agent or attorney. Hongsun, what is the position?
Hongsun: I'd like to quickly revisit terminology. Jackson in our example is what we in the United States would call a patent agent or a registered patent agent. What this means is that he's taken a patent exam and he is authorized to practice before the United States Patent and Trademark Office. But it's important to recognize that a patent agent is not a lawyer or an attorney. So in the United States, communications between a registered patent agent and a client are privileged, so long as traditional privilege factors are met, and so long as a communications are reasonably necessary and incident to prosecuting patent applications, or participating in other proceedings before the US PTO. This privilege is recognized by the United States Court of Appeals for the Federal Circuit, which is the appellate court in the US that handles all patent cases. So if we turn back to the scenario, Company X is in a lot of trouble. Company X had Jackson doing a lot of things that are not necessary and incident to activities before the US PTO. So for those communications that are unrelated to US PTO proceedings, there is no privilege protection.
Gordon: Thanks very much. Now what if Company X was not actually based in the US and Jackson was a non-US either lawyer or patent attorney, then what?
Hongsun: This is a trickier situation in the US. The analysis is going to be very fact intensive and, quite frankly, the result could vary depending on which court you are before. But generally speaking, a court's going to look at whether the country that's most relevant to the communications treats the communications as privileged or not. Another part of the analysis will be to look at whether or not the communications are of the type that would normally be protected here in the United States. So this means that if the foreign country would attach privilege to those communications then it's more likely that a US court will as well, and if the communications are the type that the US court would normally recognize as privileged, then you're in good shape. So if the foreign country does not treat the communications as privileged, then the party asserting privilege is going to have a real uphill battle.
Gordon: Okay. So, Jackson's had various nationalities and sometimes been a lawyer or a patent attorney or agent, but up to know has always been in-house. Could each of you just answer me, in turn, whether it makes any difference that Jackson was in the house or was an external advisor? Huw, do you want to go first?
Huw: Yeah, sure. As mentioned already that it is a pretty big no for us. It doesn't make any difference. Lawyer communications, in the English courts, are treated the same whether they're in-house or external. We don't look to see whether or not they would have got privilege in their local jurisdiction. We're looking at the same whether they're in-house or external. The same goes for foreign attorneys, save for one possible issue, and that is our law which extends privilege to UK and European patent attorneys makes it very clear that it extends to those UK patent attorneys, and there is a potential point that if the patent attorney is not in a law firm but in-house, then it may be that trainee patent attorneys in the department may not get the privilege that is afforded to the qualified attorney. So really, in that sort of instance, it'd be much better if the communication in the in-house situation is coming from somebody who's actually qualified as opposed to not qualified.
Gordon: Thanks very much indeed. Hongsun.
Hongsun: In the US privilege law does not treat in-house lawyers or in-house patent agents any differently than outside lawyers or outside patent agents.
Gordon: Tremendously straight-forward. Thanks very much indeed. Michael, from Canada.
Michael: It's the same situation in Canada. In Canada, legally, an in-house lawyer or patent agent is treated no differently than an outsider lawyer, patent agent. I will just say quickly from a practical standpoint, an in-house lawyer or patent agent needs to be mindful that where the dominant purpose of their advice is business advice, as opposed to legal advice, or as opposed to protection of an invention advice. It's possible in those situations that privilege would not apply.
Gordon: Right. Thanks very much indeed. Okay, so far we've looked from the perspective of the common law. So now let's go off to civil code jurisdictions and let's assume Company X is based in France, or the UAE or China, and Jackson is a locally qualified patent attorney or lawyer, what then? Let's start in France with Deborah.
Deborah: I would say that in France the main point of discussion is to know whether or not we're talking about a qualified lawyer. We touched that before but everything is basically a question of statute and definition. In-house counsel in France are not considered as qualified lawyer. So they are not subject to privilege and their communication are not protected. I would say that patent attorneys are sort of hybrid status and the statute of the member of the Bar, the qualified attorneys, and their in-house counsel. If the patent attorney fall within the category of professional advising on industrial property, then they must observe a professional secrecy which basically extends to all documents in the client files. In conclusion, in your example, if Jackson is a member of the Bar or French patent attorney he will benefit from the privilege. If Jackson is an in-house, he will not benefit from the privilege. If I may, Gordon, I would like to add a point here in relation to the Unified Patent Court, which of course covers France, and we do expect to be representing clients in this court. The rule for the UPC do very much have a UK influence within them. Disclosure of full evidence documents can be ordered but it does have to be argued for. What I want to say is that it remains to be seen how that plays out, of course, but privilege will be given to confidential communications between a client and his lawyer and patent attorney. So it is important and that could be good news. The rules are not qualified as to where that lawyer or patent attorney is qualified. They just need to be qualified under the law of the State in which they practice. They do not need to have rights of audience in the UPC. Also, the privilege extends to both external and in-house lawyers and patent attorney.
Gordon: Right. Thanks very much and thank you for bringing up the UPC. Anyone familiar with this program will know that the last webinar in this series was about the impending Unified Patents Court later this year and there's an interesting little twist in the context of privilege and disclosure. Thanks very much indeed for that. Right. Jon, what is the position in the UAE?
Jon: Thanks, Gordon. The lawyer/client confidentiality privilege was touched on earlier here, only apply in certain circumstances. So they apply to practicing lawyers in the UAE, legal advisors of any nationality practicing in the UAE, licenced law firms here or any representative of the party before an accredited arbitration tribunal taking place in the UAE. As such the confidentiality provisions would not extend to in-house counsel nor, similar to what we've heard in other countries, IP agents who themselves are not practicing legal advisors in the UAE, or are not based within UAE law firms. For in-house lawyers, where legal advice is being provided to the business, it would be good practice to mark the legal advice as being confidential and also control who will receive and have sight of that advice in order to try and maintain the confidentiality. Similarly, for rights holders working with IP agents who are not lawyers or not a UAE law firm, then they do need to be careful because if they aren't registered as a legal consultant with say the Dubai Legal Affairs Department, then care must be taken as to the legal confidentiality provisions on the client and agent correspondence, because under local law the confidentiality would no longer apply between a non-law firm/non-lawyer IP agent and the actual rights holder. In relation to Jackson, as a overseas in-house lawyer working in the UAE, he would not benefit from the client/lawyer confidentiality protection.
Gordon: Thanks very much indeed. Okay, finally, China. Ivy.
Ivy: Thanks, Gordon. In China Jackson will not stand a chance to be considered as a lawyer by the Chinese courts because the system is quite different here, as the in-house legal advisors are only considered to be very common, ordinary employees working in the legal departments of the companies. Also, Chinese law does not protect the attorney/client privilege of foreign lawyers practicing under foreign laws in China. Under Chinese law all parties with the knowledge necessary to decide case are obligated to provide information in court and international conflict of law principles established at the courts with jurisdiction over a case where established procedure rules for that case. That's to say, foreign lawyers practicing in China must comply with the Chinese laws and they must testify in a court and cannot be exempt from testifying based on a claim of privilege under non-Chinese laws.
Gordon: Thanks very much indeed. That's great. Again, indicative there of such nuances and differences in the rules across the different jurisdictions. So we've looked at how and when privilege arises in various jurisdictions today but of course the converse can be where the real challenge arises and that what happens when privilege is lost and how that can be avoided. Hongsun, in the USA what are the sort of circumstances where privilege can be lost?
Hongsun: I think there are three types of situations where privilege is often lost. The first one is actually when there's no privilege to begin with. This is a situation where lawyers are communicating on business matters. We're often brought in on business transactions and that involves a mix of legal and business. I think clients can often mistakenly think that the entirety of their communications are going to be privileged and that's just not the case. If it's legal then privilege should attach but if it's business then there is no privilege. The second situation that we often see in the United States is just with email. It's not unusual to find an email that contains a legitimate privilege communication but then that email gets forwarded around, other topics creep in that are unrelated to the earlier privilege communication. Someone forgets and then other people are added in. Maybe the email gets shared externally to a business partner because you're just unaware of the flow of communication. So I tend to be a stickler for how email is used and I discourage forwarding around emails or adding people to them. The third one is just how clients will often talk about advice that they may have received from a lawyer. Clients need to make sure that they don't start a sentence with, "Well, my lawyer says," or, "my lawyer tells me," because at that point you're losing the confidentiality which is a tenet afford the attorney/client privilege.
Gordon: Right. That's really interesting and practical stuff there. Thanks very much. Guys, what about some horror stories where privilege is not protected advice given or has been lost in the context of litigation? How bad can it get? Huw, do you want to go first with this?
Huw: Okay. Well, Gordon, it might not be so bad for the UK actually. So if we consider a scenario where Jackson goes and freedom to operate advice on a third party patent and they've opined an infringed patent, for whatever reason that advice didn't have privileges appropriate, it's doubtful that this document would ever really see the light of day in a UK patent infringement case against X. I say this since unless there was some actual dispute as to whether a particular act was occurring in the UK, disclosure of documents as to whether the defendant's product or process has the elements of the relevant patent claim, is normally covered off by the giving of a product and process description. So the so-called PPD, in which the defendant provides a written description of the accused product or process in sufficient detail to enable the court to reach a view of infringement. The other thing to bear in mind is the court is moving away from the wide ranging disclosure to a more focused approach relating to categories. So such communications may not be caught by the categories upon which disclosure is to be given in the first place. Now of course in licencing or say FRAND issues, the risk of Jackson's advice on topics being disclosed is much higher.
Gordon: Right. Thanks very much. So the risk of losing privilege in the UK is mitigated by the limitations on the range of actual disclosure. That obviously is not the case in the USA. Hongsun, what news from there?
Hongsun: Mine isn't a horror story but obviously disclosed privilege communication can absolutely sink your case if you're on the wrong side of this. You've got to keep in mind, in the United States, most of our trials are before a jury. The technical issues are often incredibly hard to understand and, quite frankly, it's not reasonable for a non-technical person to understand the technical issues, particularly in the short amount of time given for trial. So juries do what you would expect them to do. They focus on issues they're familiar with. Fairness, justice, right and wrong and juries also understand that lawyers are supposed to be experts on legal issues. So if there is a waived privilege communication that paints a client in a bad light, you're going to have a very, very hard time overcoming this. The reason you don't see a lot of horror stories is because when you have these waiver situations your case is in trouble and you find a way to settle. The other thing is with willful infringement here in the United States. If the jury thinks that you've disregarded legal advice and continue infringing, that really opens you up to willful infringement and that can mean three times the amount of damages. So a lot of bad things can happen with waivers.
Gordon: Yeah, triple damages is a real sort of ... that hangs over the head of litigants in the USA, isn't' it, and it can be very serious indeed. Thanks. Michael.
Michael: I can't say I've personally encountered any horror stories but I've definitely seen some skirmishes in Canadian litigation regarding disclosure of borderline privilege documents. So just in one example, I've seen a situation come before a judge in Canada where the judge ruled that certain communications must be disclosed because their dominant purpose was business advice. So because in-house counsel may sometimes get involved in things like IP purchase or licencing valuations, they should be mindful that those types of communications may not enjoy the protection of privilege and ultimately it's going to come down to whether there was a legal advice aspect to the communication.
Gordon: Right. Thanks very much indeed. Deborah, Jon, Ivy, anything to add? Start with Deborah.
Deborah: I have no recollection of horror stories and I would just add that I fully agree with what was said before, especially what Hongsun raised in connection with the circulation of email, when you lose track of original content and author. If a chain of emails is unfortunately disclosed to the court, of course the court would have to ignore the part which is discussion between party and lawyer in the ruling. But when you're ignoring this chain of email in the ruling, they would have seen it, and being humans who knows whether they would be able to rule as if they had not seen it. So it's a chance you don't want to take. Returning to what Michael said before, we do not have distinction between legal and business advice in France. All communication with lawyers are protected. That is why I would say that being diligent needs to involving an attorney, a member of the Bar, in the discussion phase. You could think of another option which would be to sign a NDA to protect discussion, for example, but it better contain some very strong sanction in case of violation. As you all know, an obligation without a sanction is basically without effect in the sense that it is not enforceable.
Gordon: Thanks very much indeed and that's certainly true, isn't it? Jon, over to you.
Jon: Thanks, Gordon. I'm not aware of an IP related horror stories to date but what we are finding is the UAE is fast moving towards an innovation economy and patents in particular are the fastest growing area of IP here. So I fully expect that this is an area where we start seeing issues arising in the near future as the patent framework here grows and litigation starts arising. The DIFC, is one of the free zones I mentioned earlier, has already adopted its own IP laws and with the increasing innovation around FINTECH and crypto assets. I suspect we'll see IP cases becoming before those courts before too long, either at the ADGM or the DIFC. So these common law jurisdictions in the UAE that I touched on a little earlier. So I suspect in the very near future the question of privilege and confidentiality will start being raised in more and more cases here.
Gordon: Thanks very much indeed. We're all learning a lot today about law. I'm also learning that if you're asked a bunch of lawyers to tell you a horror story about something very quickly they'll tell you that it never happened to them. Right. One last chance to see whether there have been any horror stories. Ivy.
Ivy: Yeah, this is not a personal experience but I am aware that there is some foreign case law showing that what happens in China might not just stop in China. That's to say the confidential documents produced in China are not likely to become quickly out of the light and the Chinese companies involved in foreign proceedings might become ... to these closed documents. For example, I'm aware that in the US court case in 2013, ... Family versus Bank of China. The US court opined that because half of the members of the Bank of China's legal department were not registered lawyers, and because the legal department did not specify what kind of communications were made by registered lawyers, so these communications were not protected by privilege and should be disclosed to the courts. On the other hand, I think Hongsun also touched on that, for those documents to which Chinese law should apply, the courts still compelled Bank of China to provide those documents on the ground that there's no attorney/client privilege under Chinese law. So it is totally a very lessons learned and I share the ... with Hongsun that clients running this and this across the borders should be extremely careful with email exchanges and forwarding. They should use proper subjects for emails that restrict the scope of email recipients and, more importantly, get an international team like us involved. To quickly understand the different requirements for privilege and how to protect it in various jurisdictions.
Gordon: Thanks very much indeed, Ivy. Now one of the things that we aim to do in this series of webinars right from the start, we've been going for a long time now, is to keep the content practical and make sure that the audience leaves with some really useful tips. So let's run around the panel one last time to get some specific advice on how best to obtain and maintain reliable privilege in key legal documents. So keep it short, guys. Michael, over to you.
Michael: Well one of the things we have not talked about today is inadvertent disclosure. In the age of e-discovery we've seen parties inadvertently disclose privilege communications because emails have slipped through the cracks of the e-discovery processing. So to maximize chances this doesn't happen just make sure you properly mark your privileged communications as "privileged". That's going to assist in catching them and filtering them out during the e-discovery process. Another way to avoid unhelpful or comprising legal opinions from being disclosed in litigation, either inadvertently or otherwise, is just simply not put them in writing. If you're the professional giving the advice, especially any negative opinions, consider whether it's preferable to deliver that opinion by phone or in person. Otherwise I'll just come back to what's been said before. Lawyers and agents need to be mindful of what the dominant purpose of their communication is. If it's business advice, beware unless meaningful legal advice is also being provided, the communication may not enjoy the protection of privilege. So if you want to address this, consider proactively including relevant legal advice in the communication itself. For example, references to applicable legal authorities. Also, in my experience where it can be demonstrated that outside legal counsel was being consulted on a topic, the chances of the communication being found to be business advice tend to go down somewhat. So keep that option in mind as well.
Gordon: Thanks very much, Michael. There's an awful lot of very sound advice there. Let's take a client's side look at this. How should a party to litigation control documents internally and stop people from within the company saying things they should not? Hongsun, what is your experience on this?
Hongsun: Several of us have focused on email practices and I think that's particularly crucial in the United States. The things that I focus on that we've talked about, appropriate subject lines to capture what the email is about. Look to see who's on the email. Give thought to whether it's appropriate to add someone new to the email chain or should I start a new email? One of the things that I do is I send out emails that contain legal advice, as I will literally type out at the beginning of the email, "Do not forward." Or I will note to forward the email but to check with me before providing the information in my email to others. I'll echo what Michael said. It's something I learned many years ago as a first year attorney and it is great advice. Which is, write with good news and call with bad news.
Gordon: Right. Deborah, Jon and Ivy, can you give some further comment and in particular what about this perspective of businesses with no civil code countries, where discovery is not part of the legal environment, but may conceivably become embroiled in litigation in a common law jurisdiction. Are those businesses thinking about this sort of issue? Deborah.
Deborah: As you said, discovery is not part of our French procedural court. I don't think people here in France are putting much consideration into this issue. But there is something which may change, maybe quickly, since we now have the International Chambers and the Paris Commercial Court and the Paris Court of Appeal. I don't know whether you are aware of that but we have these two new Chambers and in this Chambers party can decide on the rules to be applied before the court. So they can definitely decide to do some kind of discovery. I don't know exactly how French minds are ready, yet, to fully face discovery to the extent existing in common law countries, but I guess it is processing slowly. Of course I would say that it is definitely up to us, as external advisor, to address the issue with our clients and to train them. To keep it short, I would say that involving a lawyer is the best possible protection from French perspective, but it is then necessary to avoid losing privilege by negligence. So I would definitely go back to Hongsun's explanation as to email training. I think it's a very, very smart tip.
Gordon: Thanks very much indeed. Jon, UAE position.
Jon: Thanks, Gordon. So there are a growing number of local and international companies building up their research and development capabilities in the UAE and so for in-house teams and for companies working with non-legal consultants, IP agencies, then steps must be taken to try and obtain and maintain the confidentiality. For example, using some of the email tips we just heard about. Similarly, companies will need to ensure that their research teams are taking care in relation to documents which may not be protected through confidentiality provisions here in the UAE courts. Let's say innovations from this country start to move out internationally and can't become involved in legal disputes overseas where disclosure is available, without appropriate steps being taken now, internal documentation or guidance from non-law firm IP agents or IP agencies, they may not actually have the benefit for privilege or confidentiality protection. So again, echoing the comments involving a lawyer is one of the easy steps from here in the UAE also.
Gordon: Thanks very much indeed. Ivy.
Ivy: Only two points to bear in mind. First, Chinese and foreign companies should be aware that their staff in legal departments in China are not bound by strict statutory confidentiality obligations and then a disclosure agreement between company and employee should be in place. Deborah also touched on this. Also, with what happens in China might not just stop in China. So foreign companies operating in China should be aware that when communications between the company and its lawyers, or the results of the lawyer's work, are forced to be submitted to a Chinese authority during an investigation the company must take special precaution to ensure that the process does not inadvertently or ... in the law of privilege in some foreign jurisdictions at the same time. To that end, I copy Michael's view here that try to deliver confidential opinion in person or try to only involve persons enjoying privilege in the corresponding jurisdictions in sensitive communications.
Gordon: Thanks very much indeed. Right, and the last up then where we started with and let's finish as well, with Huw.
Huw: Thanks, Gordon. I would just pick up on the theme that has come out very strongly that it's important that in house teams are familiar with the rules around privilege and, particularly, in global businesses where the in-house teams need to be thinking about foreign rules as well since they could well end up in those foreign courts. Now all that, of course, is really critical. I would though take that training and education a little bit further and into those individuals within the client who will be the ones seeking the advice and using the advice. It is really important that they understand the risk and rules too since it is these internal communications that may be the least helpful. So when we're undertaking a disclosure or discovery process, no one wants to really come across an email from the head of R&D Company X saying, "Hey. Have you seen this patent of Company Y? We're slap bang within in." So I would suggest that trading familiarization goes beyond just the in-house legal and patent teams.
Gordon: Thanks very much indeed, Huw, and yeah, we finally got on our example there. Thank you very much indeed to all of our panelists today and I hope you, the audience, getting some useful insights and practical tips. For me, there is pretty obvious takeaways. I like the catch-line, write with good news; call with bad news and deliver confidential advice in person, not to a broad class of people. Watch out for email chains that run out of control. Set rules and give training about how to avoid that. In-house lawyers do not enjoy the status in civil law countries. That even in common law jurisdictions their internal advice is more vulnerable so use outside counsel to establish a stronger privilege regime. Watch out for the dominant purpose of communications. Do not mix matter which you want to be privileged with general business advice and, as usual, China is special and what happens in China might not stop in China. Foreign lawyers enjoy very little protection there so take great care. That concludes today's webinar but for those of you who have questions that you would like to ask, we're now going to switch to a breakout room to continue the discussion and to deal with any questions. So you'll soon be invited to join a breakout room where all the speakers will be there, and in that context there'll probably be a reduced number of people from the audience, completely open for further discussion and Q&A. So when you're prompted please click and join and you'll be able to join that breakout room and the speakers from today will be there for you. You might want to ask them about specific issues in their own countries, or maybe just speculate on the possibilities for more harmonization of privilege rules, and also I think the reference to inadvertent leaking, inadvertent disclosure, came up earlier but what if you do one of those dreadful "reply all" things and actually send your data direct to the other side, is there anyway of protecting or recovering that? You might want to ask the panel when you get in there. A full video of this webinar will be posted on our website within the next week, if you want to hear it again, or more likely to share it with colleagues within your organizations. So please look out for that.
We've got more webinars in the Smart Idea series coming up. We'll be looking at AI and copyright and then a special on advertising and IP in the light of peak sport competitions, as the City of Birmingham, one of our home cities in this firm, gets ready to host the Commonwealth Games later this summer. So look out for your invitations to those. Thank you very much indeed for your kind attention today, ladies and gentlemen. Thank you for taking the time to join us as we continue to explore The Life Cycle of a Smart Idea. Thank you very much indeed.