Choice of Law

• Author: International Law Group

McCook Metals L.L.C. sued Alcoa, Inc., in an Illinois federal court on contract and antitrust claims, as well as on a claim that two of Alcoa's patents were invalid. During discovery, McCook asked for production of 2,478 pages of documents which Alcoa refused to disclose on grounds of attorney-client privilege, work product doctrine, or both. The U.S. Magistrate Judge grants in part and denies in part McCook's motion to compel.

According to one school of thought, the attorney-client privilege was historically less protective in the patent area than in other areas of the law. In 1963, however, the Supreme Court found that several aspects of the preparation and prosecution of patent applications constituted the practice of law. Sperry v. Florida, 373 U.S. 379 (1963). Later cases hesitated to grant patent attorneys the full scope of the privilege, typically treating the patent attorney as a mere "conduit" between the inventor and the Patent Office.

The Knogo Corp. v. U.S., 1980 U.S. Ct. Cl. LEXIS 1262 (1980) line of cases, on the other hand, privileges almost all confidential communications between a client and his or her patent attorney because their relationship is a cooperative effort. The Federal Circuit has expressly accepted Knogo. Since the issue is open in the Seventh Circuit, the Magistrate Judge concludes that the Knogo line of cases is more persuasive. Here, Alcoa claims the attorney-client privilege for communications between its in-house counsel and foreign patent attorneys and patent agents pertaining to patent prosecutions in foreign patent offices. The countries include Canada, France, Germany, Japan, and the United Kingdom.

In Burroughs Wellcome Co. v. Barr Laboratories, Inc., 143 F.R.D. 611, 616 (E.D.N.C. 1992), the court declared that generally "no communications from patent agents, whether American or Foreign, are subject to the attorney-client privilege in the United States ... [T]he privilege may extend to communications with foreign patent agents related to the foreign patent...