Cautious’s patent attorney was rather surprised last week (well, a few weeks ago now) to learn that IPOff’s solicitors are claiming that the instructions IPOff sent to their “independent” design agency are privileged. Apparently they contain legal advice. As readers know, a key element of IPOff’s case that the Robot Octopus does not infringe unregistered design right is that they (or their design agency) designed the Robot Octopus independently and did not copy if from Cautious.
IPOff should have mentioned privileged documents when giving disclosure. Privilege is the right (of the client) to withhold the document from inspection, not to object to listing the document in the first place. This is made clear in the Civil Procedure Rules, CPR31.10(4), which specifically provides for claims to withhold inspection, and Form N265, which allows the person listing documents to state:
“I have control of the documents numbered and listed here, but I object to you inspecting them ...”, and “I object to you inspecting these documents because ...”.
(Form N265 is headed “Standard Disclosure”, but is clearly intended to be used for specific disclosure in the PCC, as provided in the Patents County Court Guide, Annex A (which is still on the Justice website under “Patents Court Guide”!))
CPR31.10(4) (and N265) require the party to list the documents in a convenient order and manner and as concisely as possible. Practice Direction PD31 3.2 requires this to be normally in date order, numbered consecutively with a concise description. Phipson on Evidence (Sweet & Maxwell) 17th edition, (pp 23-68) observes that this appears to require individual listing and identification of privileged documents and the basis for withholding them from inspection; but that there is no reported decision on the position, and the practice is still to list documents generically (for example “Correspondence between the Defendant and their solicitors for the purpose of obtaining advice”). Phipson argues that this may well be in accordance with the overriding objective (ie proportionate) but
"in an exceptional case, where the claim for privilege has been shown to be unsatisfactory, [PD31] appears to give the court power to order privileged documents to be listed individually”.So can Cautious challenge the claim to privilege? Is this case exceptional – Cautious's patent attorney would like to think so. And there seem to be two grounds, one strong, the other less so. The first is that IPOff appears not to have disclosed the relevant document anyway. The instructions to the independent design agency, Fishy Designs at all, are clearly not “correspondence between the defendant and their solicitors for the purpose of obtaining advice”, and it seems most unlikely that they are “in contemplation of litigation”; so they have not made a claim to withhold the document from inspection at all at this stage.
Secondly, it seems implausible ordinarily that instructions to a design agency would be privileged.
Apparently there was copious authority historically to say that “a claim for privilege is conclusive” – so that the claim could not be challenged. But, Phipson (pp 23-69) says that this was not the reality, and in West London Pipeline and Storage v Total UK  EWHC 1729 the court was prepared to investigate a challenge on the basis that it was highly improbable that a particular report would have been prepared for the purpose of litigation rather than for investigatory reasons.
Is it possible that instructions to Fishy Designs could be privileged? Privilege is broadly a non-statutory creature, almost as difficult to get ones hands on as an octopus. Section 190(2) of the Legal Services Act helpfully explains, in the quasi-algebraic way of that Act, that legal professional privilege applies to any communications, in relation to the provision of reserved legal services (in this context to provision of litigation and advocacy services) to non-solicitors (including, for example patent and trade mark attorneys) “in like manner as if P had at all material times been acting as P’s client's solicitor”. The section does not help by saying when it applies in relation to a solicitor, and for this one has mostly to trek through dusty authorities from the last century, or at least one did until the collapse of BCCI. That lead to the Three Rivers litigation, which bounced up and down to the Court of Appeal and House of Lords too many for an octopus to count. More on the octopus’s encounter with fresh water, especially Three Rivers (No 5)  EWCA Civ 474, next week. Nor does section 190 help when it comes to looking at when non-solicitors may claim legal advice privilege. More on that and the subsequent saga of Prudential  EWCA Civ 1094 in the weeks to come.