Emil J. Ali
The Sanctity of Attorney-Client Privilege and OED Investigations
Updated: Aug 1, 2020
As attorneys we often are understood by our non-attorney clients to have absolute power—from the art of persuasion, to the shield of privilege. However, while some attorneys may be expert writers and orators, not all of us know the contours of the attorney-client privilege. So what do you do when the Office of Enrollment and Discipline (OED) seeks communications between you and your client?
The attorney-client privilege is near absolute considering that it acts as a shield and survives most situations. The Supreme Court described privilege as sacred insomuch as it is available to clients to “encourage full and frank communication . . . and thereby promote broader public interests in the observance of law and administration of justice.” United States v. Zolin, 491 U.S. at 562 (1989) quoting Upjohn Co. v. United States, 449 U.S. 383 (1981). It is widely known that it is not only a client’s right to have privilege protected, but it is also the attorney’s duty to protect that privilege. See ABA Formal Ethics Op. 94-385 (July 5, 1994) (“If a governmental agency, or any other entity or person, subpoenas, or obtains a court order for, a lawyer's files and records relating to the lawyer's representation of a current or former client, the lawyer has a professional responsibility to seek to limit the subpoena or court order on any legitimate available grounds so as to protect documents that are deemed to be confidential under Rule 1.6.”); see also Republic Gear Co. v. Borg-Warner Corp., 381 F.2d 551, 556 (2d Cir. 1967) (“Not only may an attorney invoke the privilege in his client's behalf when the client is not a party to the proceeding in which disclosure is sought […] but he should do so, for he is ‘duty-bound to raise the claim in any proceeding in order to protect communications made in confidence.’”) (internal citation omitted, and emphasis added). The Federal Circuit noted, in a patent case, that “[a] party's failure to protect its privilege can result in a loss of that privilege.” See Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1350 (Fed. Cir. 2005).
Of course, OED often requests information that is clearly covered by the attorney-client privilege. For example, under the auspices of verifying a practitioner’s statements, OED will ask for written communications with clients. Often, practitioners are informed by OED that “the USPTO Rules of Professional Conduct impose an obligation to cooperate with OED in an investigation of any matter before it and proscribe knowingly failing to respond to a request from OED.” As courts have noted regarding that obligation, “a practitioner can only be subject to discipline for failing to respond to ‘a lawful demand or request for information’ and discipline cannot stem from refusal to disclose information otherwise protected by privilege.” See Swyers v. United States PTO, No. 1:16-cv-15, 2016 U.S. Dist. LEXIS 71530 (E.D. Va. May 27, 2016) citing 37 CFR § 11.801(b). While clients are free to waive their attorney-client privilege at any time, including through intentional waivers such as the publication of communications or malpractice actions against counsel, many clients mistakenly waive privilege through the advice of counsel defense, or by sharing information with family members. See, e.g., Restat. 3d of the Law Governing Lawyers, §§ 79, 80, and 83.
So how does a practitioner balance the requests of OED with the fiduciary obligations to his or her clients? First, a practitioner must understand the difference between privilege and confidentiality. While not discussed in depth here, confidentiality is a similar but distinct duty that the practitioner has to their client and covers more than mere writings and communications. Notably, confidentiality has its own distinct exceptions. See 37 CFR § 11.106. Second, a practitioner must examine whether the client has implicitly or explicitly waived the privilege. For example, an argument can be made that a client complaining to OED and providing some communications to the USPTO has waived the privilege as to all related communications. Third, a practitioner should analyze the risk of providing the information requested by OED, even if it appears that privilege is waived. That is, would it be possible to obtain the express authority of the client to share the requested documents with OED? In most cases, that may not be possible; however, it is important for a practitioner to balance the risks and understand his or her duties to the USPTO, and to the client. Of course, in situations where OED has sua sponte opened an investigation, and no client has complained, practitioners run a risk of violating the USPTO Rules of Professional Conduct, as well as malpractice risk, by providing OED with information covered by privilege. While it does not appear that any practitioner has been disciplined for such, civil liability may still exist. Therefore, it is important for practitioners to be mindful of the risk of providing privileged information to OED.
For additional information, please contact McCabe & Ali, LLP at 877-OED-4097.
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