Applying Attorney-Client Privilege Beyond the United States

The attorney-client privilege and work product immunity protect a bevy of communications between and among lawyers and clients. How do these doctrines apply when dealing with foreign attorneys and foreign patent agents? The recent decision in Astra Aktiebolag v. Andrx Pharmaceuticals, 208 F.R.D. 92 (S.D.N.Y. 2002), illustrates the complexities of a privilege analysis when communications take place on a global scale. In this case, defendant, Andrx, challenged claims of attorney-client privilege and work product immunity asserted by plaintiff Astra. The disputed documents fell into three categories.

The first category of documents was communications between Astra and the company's outside German counsel. The communications pertained to interpretations of German law and were often written from Astra's offices in Sweden.

The second category of documents involved communications between Astra and its Korean outside counsel pertaining to proceedings in the Korean courts against a third party. The communications often were written from Astra's offices in Sweden.

Finally, the third class of documents involved communications between Astra and the company's U.S. outside counsel and Korean outside counsel relating to U.S. patent applications and U.S. litigation. It is not specified where these communications took place. After establishing these categories, the court set forth the applicable legal principles and then applied them to the three categories of documents.

Choice of Privilege Law

The district court stated that, generally, a communication 'touching base' within the United States was governed by U.S. rules, while the applicable foreign law governed matters dealing solely with a foreign country. The court noted that factors such as whether the client was foreign or domestic helped determine whether a communication 'touched base' in the United States. In the present case, the court indicated that the most important factor was the country in which the patent application was filed. Specifically, it stated that U.S. privilege law would govern a foreign client communicating with a foreign patent agent to obtain a U.S. patent. The court explained that even if such a communication did not physically take place in the United States, the U.S. patent application would serve as a sufficient contact to 'touch base' in the United States and thus U.S. law would apply.

Conversely, the court stated that foreign law would apply if the foreign patent agents were attempting to obtain a patent or receive legal advice for a proceeding in a foreign country.

German Communications

Since the communications at issue centered on the interpretation of German law, the court held the communications did not 'touch base' with the United States. There was no U.S. patent or application and the communications solely concerned foreign law.

Accordingly, since German law was not contrary to the U.S. public policy, the court applied German privilege law. Through expert declarations, the court determined that German privilege law protected all communications rendered during legal services between a German patent agent and his client. Therefore, the court found that the documents were protected by the attorney-client privilege and were not discoverable.

Korean Communications

The court decided Korean law governed communications between Astra and its Korean attorneys about Korean court proceedings with a third party. Since the communications solely concerned Korean litigation and no U.S. patents were involved, there was no 'touching base' in the U.S. The court applied Korean law since it was not contrary to U.S. public policy. While statutes concerning duties of confidentiality and attorney testimonial immunity existed, the court found no attorney-client privilege statute.

However, the court did not end the analysis there. It recognized that Korea had no need for privilege law because the statute governing discovery provided only limited means to compel document production. An attorney-client privilege was not as necessary with such a limited discovery statute. The court reasoned that it would be unfair to rule without taking Korean discovery practices into account, even though Korean discovery rules were procedural and not applicable in U.S. court. Therefore, the court applied U.S. privilege law in order to prevent the unfair result of using Korean law to produce documents that never could have been produced in a Korean litigation. Using U.S. privilege analysis, the court found that these communications were not discoverable because they were protected by attorney-client privilege and work product immunity.

Outside Counsel Communication  Concerning U.S. Patents

Finally, the court decided U.S. privilege law governed communications between Astra and its Korean attorneys and Astra and its U.S. counsel regarding U.S. patent applications and U.S. litigation. The U.S. patent applications gave the communications sufficient contacts to 'touch base' in the United States, as did the U.S. litigation. The court also ruled that U.S. law applied to the foreign priority application of the U.S. patents, highlighting the importance of the U.S. patent application in determining which country's law governed attorney-client privilege. The court reasoned that if a U.S. patent 'touched base,' then the priority applications of a U.S. patent should 'touch base' as well. The court subjected these documents to traditional U.S. privilege law analysis, and most were held privileged either entirely or in redacted form.

For further reading on this topic see: Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 514 (S.D.N.Y. 1992) Bayer AG & Miles, Inc. v. Barr Labs., 1994 U.S. Dist. LEXIS 17988 (S.D.N.Y. Dec. 16, 1994).

Kathlyn Card-Beckles is an associate at Kenyon & Kenyon.

The attorney-client privilege and work product immunity protect a bevy of communications between and among lawyers and clients. How do these doctrines apply when dealing with foreign attorneys and foreign patent agents? The recent decision in Astra Aktiebolag v. Andrx Pharmaceuticals , 208 F.R.D. 92 (S.D.N.Y. 2002), illustrates the complexities of a privilege analysis when communications take place on a global scale. In this case, defendant, Andrx, challenged claims of attorney-client privilege and work product immunity asserted by plaintiff Astra. The disputed documents fell into three categories.

The first category of documents was communications between Astra and the company's outside German counsel. The communications pertained to interpretations of German law and were often written from Astra's offices in Sweden.

The second category of documents involved communications between Astra and its Korean outside counsel pertaining to proceedings in the Korean courts against a third party. The communications often were written from Astra's offices in Sweden.

Finally, the third class of documents involved communications between Astra and the company's U.S. outside counsel and Korean outside counsel relating to U.S. patent applications and U.S. litigation. It is not specified where these communications took place. After establishing these categories, the court set forth the applicable legal principles and then applied them to the three categories of documents.

Choice of Privilege Law

The district court stated that, generally, a communication 'touching base' within the United States was governed by U.S. rules, while the applicable foreign law governed matters dealing solely with a foreign country. The court noted that factors such as whether the client was foreign or domestic helped determine whether a communication 'touched base' in the United States. In the present case, the court indicated that the most important factor was the country in which the patent application was filed. Specifically, it stated that U.S. privilege law would govern a foreign client communicating with a foreign patent agent to obtain a U.S. patent. The court explained that even if such a communication did not physically take place in the United States, the U.S. patent application would serve as a sufficient contact to 'touch base' in the United States and thus U.S. law would apply.

Conversely, the court stated that foreign law would apply if the foreign patent agents were attempting to obtain a patent or receive legal advice for a proceeding in a foreign country.

German Communications

Since the communications at issue centered on the interpretation of German law, the court held the communications did not 'touch base' with the United States. There was no U.S. patent or application and the communications solely concerned foreign law.

Accordingly, since German law was not contrary to the U.S. public policy, the court applied German privilege law. Through expert declarations, the court determined that German privilege law protected all communications rendered during legal services between a German patent agent and his client. Therefore, the court found that the documents were protected by the attorney-client privilege and were not discoverable.

Korean Communications

The court decided Korean law governed communications between Astra and its Korean attorneys about Korean court proceedings with a third party. Since the communications solely concerned Korean litigation and no U.S. patents were involved, there was no 'touching base' in the U.S. The court applied Korean law since it was not contrary to U.S. public policy. While statutes concerning duties of confidentiality and attorney testimonial immunity existed, the court found no attorney-client privilege statute.

However, the court did not end the analysis there. It recognized that Korea had no need for privilege law because the statute governing discovery provided only limited means to compel document production. An attorney-client privilege was not as necessary with such a limited discovery statute. The court reasoned that it would be unfair to rule without taking Korean discovery practices into account, even though Korean discovery rules were procedural and not applicable in U.S. court. Therefore, the court applied U.S. privilege law in order to prevent the unfair result of using Korean law to produce documents that never could have been produced in a Korean litigation. Using U.S. privilege analysis, the court found that these communications were not discoverable because they were protected by attorney-client privilege and work product immunity.

Outside Counsel Communication  Concerning U.S. Patents

Finally, the court decided U.S. privilege law governed communications between Astra and its Korean attorneys and Astra and its U.S. counsel regarding U.S. patent applications and U.S. litigation. The U.S. patent applications gave the communications sufficient contacts to 'touch base' in the United States, as did the U.S. litigation. The court also ruled that U.S. law applied to the foreign priority application of the U.S. patents, highlighting the importance of the U.S. patent application in determining which country's law governed attorney-client privilege. The court reasoned that if a U.S. patent 'touched base,' then the priority applications of a U.S. patent should 'touch base' as well. The court subjected these documents to traditional U.S. privilege law analysis, and most were held privileged either entirely or in redacted form.

For further reading on this topic see: Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 514 (S.D.N.Y. 1992) Bayer AG & Miles, Inc. v. Barr Labs., 1994 U.S. Dist. LEXIS 17988 (S.D.N.Y. Dec. 16, 1994).

Kathlyn Card-Beckles is an associate at Kenyon & Kenyon.