Section 280: Privilege for communications with patent agents

Section (280-01 280.05) last updated: October 2021.

280.01

This replaced section 104 of the Patents Act 1977. It provides that communications between a person and their patent agent (who may be a registered patent attorney, a person on the European list or a partnership or company entitled to describe itself as one of these) are privileged from disclosure in legal proceedings. The scope of the privilege is extended beyond that conferred under the 1977 Act (which was limited to proceedings under that Act) to cover other industrial property topics. Following amendments to the section on 1 January 2010 by the Legal Services Act 2007, the application of privilege is widened to encompass documents, materials and information as detailed in paragraph 77 of Schedule 21 to the Legal Services Act 2007.

Section 280(1)

This section applies to– (a) communications as to any matter relating to the protection of any invention, design, technical information, or trade mark, or as to any matter involving passing off, and (b) documents, material or information relating to any matter mentioned in paragraph (a).

280.02

Subsection (1) defines the scope of the privilege with regard to the topics and format to which communications may relate. They are the protection of any invention, design, technical information, or trade mark; and passing off. Any matter including documents, materials or information relating to these is covered, with the intention of affording privilege to all advice that patent agents are competent to give, sometimes going beyond the strict boundaries of the listed subjects, eg to include copyright issues relating to the ‘get-up’ of a product.

Section 280(2)

Where a patent attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the patent attorney had at all times been acting as the client’s solicitor.

Section 280(3)

In subsection (2) “patent attorneys” means ­ (a) a registered patent attorney or a person who is on the European list, (b) a partnership entitled to describe itself as a firm of patent attorneys or as a firm carrying on the business of a European patent attorney, or (ba) an unincorporated body (other than a partnership) entitled to describe itself as a patent attorney, or (c) a body corporate entitled to describe itself as a patent attorney or as a company carrying on the business of a European patent attorney.

280.03

Such communications and information are privileged from disclosure in legal proceedings in England, Wales, Scotland and Northern Ireland in the same way as communications with a solicitor. The information is treated as if the patent attorney had been acting as a solicitor.

280.04

In Sonic Tape PLC’s Patent [1987] RPC 251, the hearing officer found the parties to be joint holders of privilege in one letter. This privilege could be claimed vis-a-vis a third party but not against the other joint holder; the letter could therefore be used in evidence. Aldous J in Lubrizol Corpn v Esso Petroleum [1993] FSR 64 found that privilege did not attach to documents in the possession of both parties unless they would indicate either the advice that might be sought or the advice that was given. In the same case Aldous J observed that it was incredible that any distinction concerning privilege could be drawn between an original document and a copy of it.

[Section 280(4) Repealed]

280.05

Section 280(4) extended with equivalent effect the privilege from disclosure in legal proceedings to legal proceedings in Scotland. The section has now been omitted under s.208 and paragraph 77(e) of schedule 21 of the Legal Services Act 2007.