The following article appears in the journal JOM, 49 (6) (1997), p. 62. JOM is a publication of The Minerals, Metals & Materials Society

Silence is Golden—The Attorney-Client Privilege

Under certain circumstances, information possessed by an attorney cannot be disclosed to others without the client's consent because of the attorney-client privilege or certain other legal concepts. The attorney-client privilege, which dates back to the reign of Elizabeth I, was originally based on the concept that an attorney should not be required to testify against the client and, thereby, violate a duty of loyalty owed to the client. At that time, it was the lawyer who held the privilege. Today, the privilege is held by the client; while it may be asserted by the lawyer on behalf of the client, only the client can waive the privilege.

Generally, in order for the attorney-client privilege to apply, there must be an attorney-client relationship and the communication must be made by the client in confidence for the purpose of obtaining legal advice. It does not matter whether the information is communicated orally, in writing, or by nonverbal communication, such as nodding the head. The privilege also applies to information provided by the attorney to the client.

Not only must there be an attorney-client relationship, but the communication must be related to the seeking of legal advice. As a result, it might be concluded that communications do not fall within the scope of the attorney-client privilege based on the extent to which the client is seeking business advice or technical advice. Also, because the communications must be in confidence, if a third party not having a common interest is allowed to be present during the communications or if it is intended that the communications be delivered to a third party, the attorney-client privilege will not apply.

Some unusual questions regarding attorney-client privilege have arisen in connection with patent agents. Some courts have concluded that even though patent agents are not lawyers, they are lawfully engaging in conduct that causes them to act like lawyers; they have held that the privilege applies. In other cases, emphasis has been placed on the fact that the patent agent is primarily a conveyor of information intended ultimately to be disclosed to the public, and, as a result, the attorney-client privilege has not been applied.

For cases involving in-house corporate patent lawyers, the courts have looked at the specific nature of the conduct in determining whether the attorney-client privilege applies. It has been held that corporate patent attorneys are engaged in conduct that qualifies for the attorney-client privilege when the matters in which they are engaged apply the law to facts known only to themselves and other employees of their client-company. It has also been held that the privilege applies to a legal opinion on patentability or infringement. Other court cases have determined that assessing the competitive business position of a given patent is not subject to the attorney-client privilege.

Only the client has the power to waive the attorney-client privilege. It is important to bear in mind that a waiver may occur even though the client does not intend to waive the privilege. For example, if the client carelessly allows the information to be disclosed to others, confidentiality will be lost, and a waiver will occur. The waiver may also result from failure to object to the demand for disclosure in litigation. Once the privilege has been waived, it is treated as a waiver for all purposes.

Besides the attorney-client privilege, another way of keeping information away from another is under the "work-product" doctrine. This doctrine is based upon the policy of encouraging attorneys to put forth a full effort in connection with the preparation for potential litigation or work during the litigation. Materials collected, documents created, and the attorney's thoughts may be protected from discovery by the other side under the work-product doctrine. However, this doctrine is not as far reaching as the attorney-client privilege. Counsel for the other side may establish that the prejudice to his or her client, if he or she is not permitted to obtain certain information, will impose an undue hardship on the client. If the client is unable to obtain substantially equivalent material by other means, the court will balance interests and, in appropriate cases, rule that despite the work-product issue, documents or other tangible items must be delivered to the other side.

Another factor that, in many instances, more broadly and more effectively prevents disclosure of information received from a client to others is the ethical obligation by the attorney to maintain client confidences. As a general legal ethics precept, an attorney is not allowed to reveal client confidences to others or use the same to the disadvantage of a client or for the benefit of himself/herself or someone else without obtaining consent from the client. This ethical obligation exists regardless of whether the attorney-client privilege or the work-product doctrine applies. However, there are some exceptions to this obligation that are recognized in many jurisdictions. In some jurisdictions, an attorney has the discretionary right to reveal confidential client information if such disclosure will prevent substantial physical harm to a third person. Other jurisdictions not only recognize the substantial physical harm exception, but also give an attorney the discretionary right to disclose confidential client information if disclosure is necessary to prevent substantial injury to the financial interests or property of third persons. Many jurisdictions have an ethical rule, applicable in litigation matters, that makes it a mandatory requirement for an attorney to disclose confidential client information to a court when it is necessary in order to avoid assisting a criminal or fraudulent act by the client.

It is important that clients be aware that, unlike interactions wherein confidentiality agreements are relied on as a basis for avoiding undesired disclosure of information, the relationship with a lawyer is different. The broad-based ethical requirements regarding confidentiality combined with the attorney-client privilege and work-product doctrine offer substantial benefits to the client. It must be noted, however, that the scope of the confidentiality requirements, whether they are based on precepts of legal ethics, the attorney-client privilege, or the work-product doctrine, can vary from jurisdiction to jurisdiction. It is recommended that clients question attorneys in their respective jurisdictions as to the scope of the confidentiality obligation.

For more information, please contact A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.