Statement by India on Agenda Item 6 (iv) on the subject Confidentiality of Communications between Clients & their Patent Advisors, delivered by Dr. Dinesh P. Patil, Assistant Controller of Patents during the 22nd meeting of Standing Committee on the Law of Patents

Madam Chair,

With respect to confidentiality of communications between clients and their patent advisors, the Delegation of India reiterates its views expressed in the last SCP meeting. There is no provision on the client-attorney privilege in India’s Patents Act. We also reiterate that neither the Paris Convention nor the TRIPS agreement provides any such privilege. In our view, the issue is of substantive nature and could be governed by applicable national laws, and thus, it should be discontinued from the work of Committee.

The Delegation of India is of the considered view that harmonizing the client-attorney privilege implied harmonizing the exceptions to the disclosure. In Indian Patent System, persons who graduated in science or engineering are qualified for practicing as patent agents, after qualifying Indian Patent Agents examination, even without having a law degree. The Indian Evidence Act provides protection to the lawyers from such discovery proceedings and a patent agent being a person of scientific background, having qualified the patent agent examination under the Patents Act, does not fall under such protection. Since such disclosure might be helpful to the Court in final determination of substantive issues like novelty, inventive step, patentability and sufficiency of disclosure, such privilege might be detrimental to the patent system. Therefore, any attempt for cross-border harmonization of this issue is not compatible from our perspective and thus, we opposed and continue to opposite it.

Keeping in view the discussion during a seminar on the confidentiality of advice from patent advisors in the last SCP meeting, we would like to express our concern over the manner in which the matter is progressing towards a soft law approach harmonizing the client attorney privilege in this Committee.

Thank you, Madam Chair.