No privilege for patent agents and clients

Clients rightly expect communications with their legal advisers to be protected by attorney-client privilege. While privilege is available to lawyers and their clients in India, it does not extend to patent agents, even though their roles overlap in many respects.

Patent law is practised by two sets of professionals, advocates or lawyers, and patent agents. The former are governed by the Advocates Act, 1961 and can appear before the courts and the Indian Patent Office. The latter, trained in science, engineering or technology, fall under the Indian Patents Act, 1970 and can appear before the Controller of Patents, prepare documents, transact business and discharge functions in connection with patent proceedings. Patent agents, however, cannot appear before courts unless accompanied by a lawyer.

The basis of privilege is found in sections 126 to 129 of the Indian Evidence Act, 1872, which protect professional communications between lawyers and clients. Lawyers’ clerks and employees are included. Section 128 allows a client to waive privilege and section 129 protects clients from being compelled to disclose legal professional communications. Exceptions to privilege include communications in connection with an illegal purpose or crime, and those involving in-house counsel. In India, a lawyer who is a full-time salaried employee cannot register as an advocate, and thus cannot practise before the courts. Patent agents are similarly excluded from enjoying privilege in their communications with clients. While patent agents are bound by general principles of confidentiality, the absence of privilege protection means that information they receive may have to be disclosed in court proceedings.

A lack of privilege for patent agents has not gone unnoticed. The Law Commission has twice raised this in its 69th report in 1977 and in its 185th set of recommendations in 2003. The body suggested amending the law of evidence. However, Law Commission reports are non-binding, although they can influence parliamentary debates.

Clients may ask how they can remain protected when dealing with patent agents. Pending legislative changes, prospective patent applicants should ensure that they deal only with patent agents who are also lawyers. Many patent agents hold dual qualifications and almost all patent law firms in India are owned or managed by lawyers. Communications with such patent agents would thus be automatically protected by attorney-client privilege. Such dual-qualified professionals employ patent agents and typically have contracts in place to protect confidentiality. As communications to patent agents are usually directed to the lawyer heading the practice, or lawyers are copied in, such communications would likely be privileged. This admittedly creates an imbalance in favour of dual-qualified professionals, but for now, the best solution is to engage only those in that category.

Patent agents, however, also have access to sensitive information, such as patent portfolios, business objectives and strategic plans. The lack of privilege can hamper the free flow of information between inventors and patent advisers and, by extension compromise patent quality and the whole patent system.

Extending privilege to patent agents would benefit the innovation ecosystem as a whole. As the basis of privilege is public interest, the Law Commission is clear that it is in the public interest to extend privilege to patent agents.

Even if privilege were so extended, one concern would remain. Patent applicants are not obliged to disclose to the patent office all prior art known to them. Where a specification is amended after publication of the patent application and the original specification was not drafted in good faith, the court shall not grant any claimed damages or profits. However, a bad faith defence only becomes available if a defendant can find evidence of it in discovery proceedings.

This vacuum could perhaps be filled by a legislative amendment to impose a duty of disclosure of all known prior art. The distinction between prior art and professional advice on it means that privilege need only extend to the advice and not to the art itself.

The present law, however, is clear that patent agents do not enjoy privilege. Clients should be aware of the extent of their rights, or lack thereof, and proceed accordingly.

Essenese Obhan is the founding partner at Obhan & Associates.