Witness exclusion for patent attorneys in Denmark

In February 2018, the Danish Ministry of Justice introduced a new bill aiming at expanding the rules on witness exclusion to include patent attorneys.

If the bill is passed by the Danish Parliament, patent attorneys will gain witness exclusion in Denmark with the effect that patent attorneys’ advice will be confidential in court proceedings in the same way the advice of attorneys-at-law currently is.

The bill, thereby, closes a legislative gap, which has caused problems for Danish patent advisors and companies operating in Denmark for nearly a century.

Under the current Danish legislation, attorneys-at-law are ensured witness exclusion whereas patent attorneys are not. This means that, under certain circumstances, patent attorneys may be ordered to disclose their written advice to clients (while the advice of attorneys- at-law remains confidential also in court cases).

This is problematic as it creates uncertainty about the extent of the confidentiality of patent attorneys’ advice to clients. However, the main implication of the current legal position is that Danish companies are vulnerable in cases in common law jurisdictions which allows for the civil remedy of discovery, i.e. a pre-trial procedure where a party obtains written evidence from the other party or parties by means of e.g. interrogation or request for production of documents.

For example, in the US, the courts normally extend the attorney-client privilege between lawyers and clients to American patent attorneys meaning that such patent attorneys’ advice is excluded from discovery. However, in a lawsuit between a Danish and an American company, the American court will look to Danish law in deciding whether to exclude the advice of a Danish patent attorney from discovery. As Danish patent attorneys are currently not granted witness exclusion in Denmark, the Danish company may be ordered to submit written advice from its patent attorney, while the American company will not be required to do so.

As a lawsuit for patent infringement can be detrimental to almost any company, this uncertainty and risk of being subject to an unfair disadvantage has prompted companies operating in patent-heavy industries to adapt in order to minimize the risk of having its external patent attorney’s advice exposed.  Today, the advice of external patent attorneys is, thus, often facilitated through attorneys-at-law to ensure that the advice remains confidential.

Our neighbouring countries Sweden and Finland have already adopted rules on witness exclusion for patent attorneys, and the Confederation of Danish Industry, among others, has urged the Danish government to avoid the risk of putting Danish patent attorneys at a competitive disadvantage. With the new bill, the Ministry of Justice proposes to solve the problem by introducing equivalent witness exclusion for European patent attorneys to that of attorneys-at-law and, thereby, ensuring confidentiality in the relationship between a company and its Danish patent attorney.