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The Foreign Patent-Agent Privilege in the District of Delaware

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In the late 1990s, a New York district court recognized the foreign “patent-agent privilege,” which provides that “if a communication with a foreign patent agent involves a foreign patent application, then as a matter of comity, the law of that foreign country is considered regarding whether that law provides a privilege comparable to the attorney/client privilege.” Nearly ten years later, the District of Delaware faced a similar question: whether, under French law, the patent-agent privilege is broad enough to extend to a special category of French patent agents.

Answering no, Magistrate Judge Thynge settled one of the rarer privilege disputes in this district.

In the underlying case, Defendant Samsung sought communications between Plaintiff CEA and the French patent agents that assisted CEA in prosecuting several French patents related to the patents-in-suit. Raising the patent-agent privilege, CEA opposed, claiming that its patent agents were entitled to assert privilege under a French professional-association regulation. When Samsung countered that a 2004 statute enacted by the French Parliament mooted the 2002 regulation, and therefore removed the agents’ ability to assert privilege, the Court faced the task of engaging in French statutory interpretation. Ultimately, the Court sided with Samsung: “CEA’s argument requires the court read into the 2004 statute an exception, the effect of which would be to modify the 2004 statute by the prior decree.”

The result? The patent-agent privilege does not apply in this context and the French documents must be produced. The question of whether the foreign patent-agent privilege can be successfully asserted in this district must therefore wait another day.

Commissariat A L’Energie Atomique v. Samsung, C.A. No. 03-484-MPT (D. Del. Oct. 16, 2007) (Thynge, M.J.).

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