A client who seeks advice from a lawyer has long been entitled to protection against disclosure to others, without the clients authorisation, of what the client disclose to the lawyer and of what advice the client receives. In many countries the practice of law and patent agency are considered separate and distinct. As a result of that separation the "privilege" or "confidentiality" expected in communications between lawyers and clients may not attach to communications between Patent Agents and clients.

Patent Agents must, in order to do their work, provide legal advice, and are fully conscious of the importance of confidentiality in their dealings with clients.

There is statutory precedent in at least the U.K. Australia, New Zealand ensuring non lawyer Patent Agents are privileged. There are however other countries where such privilege does not attach.

The absence of privilege in a country where a communication originates may result in it being denied privilege in another country, even where privilege would attach to that communication if it originated in the other country.

As a result of this lack of uniformity there are trends for clients to select professionals in countries where privilege does exist. In a regional context this may result in a geographical imbalance between the profession within that particular region. In a country with a mixed profession of lawyer and non lawyer Patent Agent there is a similar imbalance created between the two branches of the profession.

This separation of the profession into lawyer and non-lawyer components is inappropriate when the specialisation of patent law and practice increasingly calls for postgraduate studies in science, often making it difficult for entrants to the profession to contemplate a further period of study to qualify as a lawyer. The technical qualification of a Patent Agent is often more important and useful to a client than the general legal training that may be obtained in law school. Therefore in order to meet the client's needs it is important that there is no inhibition to technically qualified individuals entering and advancing in the profession.

Many Member States of the Paris Convention and WTO accord privilege to communications between registered professional representatives and their clients. However, FICPI observes that this is by no means uniform and the privilege accorded in one country may not be respected in another country. This lack of harmonisation complicates many enforcement proceedings and may limit a patentee's ability to enforce his patents on a global basis. The non-uniform effect of privilege also distorts the market for services by encouraging the use of representatives in those countries that accord privilege to the detriment of those who do not. This effect has been recognised in the Revision Act of 29 November 2000 revising the EPC under which1 the Administrative Council has been given the power to adopt provisions relating to privilege from disclosure in proceedings before the EPO of communications between a professional representative and his client or any other person. FICPI recommends that the proposed treaty should include provisions to ensure that there is equal treatment and mutual recognition of the right of privilege between Member States.

The desirability of such a provision has been a FICPI position in discussions on the Community patent proposals and recognised by other bodies, for example, the ABA Intellectual Property Law Committee.

FICPI suggests that the following wording may be adopted in revisions to the Substantive Patent Law Treaty:

Privilege of Communication between Representatives

1. This article applies to communications relating to any matter concerning the protection of any invention.
   
   
2. Where a Member State maintains a list of professional representatives, any such communication
   
   
   
   1. between a person and a professional representative who is entered on the list, or
      
      
   2. for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a professional representative who is entered on the list, is privileged from disclosure in legal proceedings in the Member State.
   
   
   
3. The provisions of paragraph (2) above shall also apply mutatis mutandis to any communications between a person and a professional representative, or for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a professional representative, who is entered on a list of professional representatives maintained by another Member State.
   
   
4. The privilege extended by the Member State by virtue of paragraph 2 above shall apply equally to a Representative of any other Member State who maintains a list of professional representatives.

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See also paper EXCO/GB01/CET/1601 in connection with this subject.